"Changes to the Trademark Rules of Practice"

Jonathan Hudis is a partner with Quarles & Brady LLP in its Washington, D.C. office. He helps clients of all sizes establish, grow and enforce trademark and copyright portfolios, design and implement procedures to protect their intellectual capital, litigate foreign and domestic disputes, preserve trade secrets, and formulate company-wide IP strategies and policies. Jordan Downham is an associate in the firm's Indianapolis office. 

The Trademark Trial and Appeal Board of the Patent and Trademark Office is introducing a breadth of changes to the Trademark Rules of Practice, effective Jan. 14, meant to condense time frames, expedite filing procedures, and simplify the process for registrability proceedings. These changes include a near-complete switch to electronic filing. They also streamline the discovery process and trial by capping written discovery and allowing for the introduction of affidavits and declarations in the place of deposition testimony. The amended rules also introduce new requirements—for example, certain materials made of record through notices of reliance must be submitted with specific supporting information. 

We highlight the more significant changes below. 

Electronic Filings Now Required 

Once the changes to the rules go into effect, nearly all filings with the board will be required to be done electronically through the Electronic System for Trademark Trials and Appeals (ESTTA). There are a few exceptions: Paper filings may be allowed if technical problems with ESTTA or extraordinary circumstances make electronic filing impossible, but even these paper filings require a petition to the director of the PTO and a fee. In light of the sweeping electronic submission requirements, the board also eliminated the five-day extension for responding to pleadings and discovery previously served by mail. 

Additionally, service of the “complaint” (either a notice of opposition or petition for cancellation) will now be done by the board, by sending to the defending party a link to, or the online location of, the document in TTABVue, the TTAB's searchable database of proceeding dockets and documents. (Thus, plaintiffs no longer need to include a certificate of service when filing a “complaint.”) Until the PTO's online systems are updated, the board will continue to serve notices of cancellation by mail. 

All other papers must be served by the parties via e-mail—again, unless there are technical problems or extraordinary circumstances (in which case the parties must explain the circumstances and the manner of service in the certificate of service), or the parties stipulate otherwise (such as for the transfer discovery documents that either are too large to send via e-mail or are incompatible with electronic communications). 

There also are new requirements for formatting and the content of certain filings. Combined opposition and cancellations proceedings initially must be filed separately. Then, a request for consolidation can be filed with the petition for cancellation. Oppositions filed during extension periods must be filed in the name of the party who received the extension (or in the name of the entity in privity with that party). Petitions for cancellation must include the current registrant's name, address, and e-mail address. (Petitioners are encouraged to include the names of the registrant's attorneys, although this is not required.) 

Deadlines for Filings 

After an application is published, an opposer still has up to 180 days (initial 30-day opposition period plus up to 150 days of extensions) to file a notice of opposition. The amended rules now clarify that the first request of extension of time to oppose is either 30 days (granted upon request) or 90 days (only granted if good cause is shown)—there is no option for a 60-day first extension. The amended rules also clarify that only a 60-day period is allowed for a final extension. 

Deadlines for filing response papers also have been changed: 

Also, if no answer to a “complaint” is filed, all other deadlines are tolled—although the technical default of missing the answer deadline is considered waived if parties continue to litigate even after a late-filed answer. 

Amending the Notice of Opposition 

There are new limits on what may be amended in a notice of opposition. All opposers must be included in the ESTTA cover sheet for the notice of opposition, and once the window for filing the opposition is closed, no joint opposers can be added (although successors and assignees can still be joined to or substituted into the proceedings). 

The board also will require that the grounds for opposition be included in the ESTTA cover sheet for all complaints (along with an accompanying “statement” supporting and explaining those grounds). For oppositions against applications filed under Section 1 or Section 44 of the Lanham Trademark Act of 1946, 15 U.S.C. §§1051 and 1126 (intent-to-use, use, and foreign registration bases), the grounds, goods, and services are not limited to what is listed in the ESTTA cover sheet, and they can later be amended (pursuant to Federal Rule of Civil Procedure 15). However, in oppositions against applications filed under the Madrid Protocol, Section 66(a) of the Trademark Act, 15 U.S.C. §1141f(a), the goods, grounds, and services are limited to what appears in the ESTTA cover sheet, and no amendments are allowed. 

Discovery Limits 

The new proportionality requirement added to the Federal Rules of Civil Procedure in 2015 is now incorporated into the board's Rules of Practice as well. This is part of the larger goal of streamlining and expediting discovery in TTAB proceedings. 

Requests for production, requests for admission, and interrogatories are now each capped at 75—and subparts and compound questions will count toward that total. (Each party also is permitted one set of requests for admissions in order to authenticate the adverse party's produced documents. See also “Notices of Reliance,” below.) The “official” method for how to count these discovery requests has yet to be revised. For now, parties should attempt to follow the board's current method of counting Interrogatories, found at the Trademark Trial and Appeal Board's Manual of Procedure §405.03(d). If a party exceeds this limit, the responding party can merely serve a general objection to the excessive number, reserving its more specific objections for when complying discovery requests are served at a later time. 

Also, the board can, on its own initiative or on notice from a party, issue an order regarding expert discovery—and can do so before or after the deadline for disclosing expert testimony. 

Discovery, and Discovery Motion, Deadlines 

The new rules require that parties serve motions to compel initial disclosures within 30 days after those disclosures were due. Motions to compel discovery are due before the deadline for pre-trial disclosures, and the moving party must show pre-filing good-faith efforts to resolve the dispute. Similarly, if re-scheduled from the board's trial order, the deadline for expert disclosures must occur before the close of discovery. 

Gone is the ability to serve discovery requests on the final day of discovery. Now, discovery requests must be served with enough time left in the discovery period for the other party to respond. Moreover, if a discovery motion is filed after the close of discovery, all pre-trial disclosure filing deadlines are tolled pending further direction from the board. As a matter of good practice, parties should serve written discovery early, and in any event at least 30 days before the close of the discovery period. 

Confidentiality 

The board's standard protective order automatically applies to all inter partes proceedings, although the parties can stipulate to a different protective order with the board's approval. Even though the protective order is automatic, it is still good practice to sign it, because the order will then continue to apply after the proceedings have concluded. 

A party submitting confidential materials under seal must simultaneously file redacted, non-confidential versions of the same materials. However, the board may treat a party's “confidential” materials as public if the materials do not qualify for confidential status. 

Motion Practice and Suspensions 

Discovery motions and motions for summary judgment must be served before the deadline for pre-trial disclosures for the first testimony period. However, while proceedings are automatically suspended upon the filing of a motion for summary judgment, proceedings are only suspended for a discovery motion when the board issues its suspension order. 

Trial Evidence 

Testifying witnesses must be identified specifically in a party's notice of testimony deposition—the option to identify a witness merely by categorical description is no longer available. Transcripts from testimony depositions must (a) be filed electronically through ESTTA, (b) be in full-sized format, and (c) contain a word index. 

The amended rules will now allow parties to submit trial testimony through affidavit or declaration (rather than by deposition), although this “testimony” is still subject to cross-examination and the proffering party must make the witness available. The adverse party has 20 days from service of the affidavit or declaration to submit a notice of election of cross-examination, and the oral cross-examination must be completed within the next 30 days after that notice. The cross-examining party still bears the cost of the court reporter. 

The board will not consider exhibits to affidavits or declarations unless the exhibits are referred to therein. Exhibits that are bulky or unsuitable for electronic submission (such as three-dimensional objects which are difficult to photograph, or an external hard drive) can still be filed by mail. 

A party's motion to use a discovery deposition of its own client, or of a third party witness, must be filed with its pre-trial disclosures. If the party fails to do so, the adverse party may either (a) move to quash the party's notice of testimony deposition, or (b) move to strike the party's testimony affidavit or declaration. 

In proceedings before the board, the parties can stipulate to rules of evidence and any relevant facts. 

Notices of Reliance 

In order for certain self-authenticating materials to be made of record, they now must be submitted with a notice of reliance that (a) explains the materials’ relevance, and (b) associates the materials with particular issues in the proceeding. Certain materials require special support when being submitted with a Notice of Reliance: 

• Electronic records of pleaded trademark registrations must be submitted with the summary information showing the registrations’ status and title (available from the PTO's Trademark Status & Document Retrieval system). 

• Relevant internet evidence must be submitted as captured web pages showing the date of capture and the URL of the source material. 

• As before, documents produced by an adverse party (admitted as to their authenticity) can be made of record through a notice of reliance. 

While the application or registration's prosecution file history is automatically of record, any statements in affidavits or declarations in that file history are not automatically of record. Thus, if a party wishes to enter such statements into the record, they will have to be introduced in other ways. 

Testimony Periods 

The board only accepts a party's proffered evidence during its testimony period. However, these periods may be shortened or extended by stipulation of the parties (if approved by the board), or on motion by one party (if it gives good cause for the change). Such stipulations to re-schedule the close of discovery, pre-trial disclosures, or testimony periods must (a) be filed through ESTTA, (b) include the relevant dates being changed, and (c) include an express statement that the parties have agreed to these date changes. If the board orders a change to or reset of a party's testimony period, all subsequent deadlines for pre-trial disclosures and testimony periods will also be reset. 

Objections 

Curable procedural defects should be raised early, in a motion to strike. Substantive evidentiary objections are reserved until the final hearing, so long as they are timely and properly reserved (that is, both at the time of submission and in the brief on final hearing or accompanying appendix). Parties may set out evidentiary objections in an appendix or separate statement, neither of which will count toward the page limit of the party's brief on final hearing. 

Plaintiff's Failure to File a Brief or Submit Evidence 

The board can sua sponte grant judgment for the defendant if the plaintiff fails to file a brief on final hearing or submit evidence in the following situations: 

• The plaintiff does not submit a brief on final hearing, and does not respond to the board's show cause order to explain why the failure should be excused. 

• The plaintiff does not submit any evidence, and either does not move to reopen its testimony period or its motion to reopen is denied. This triggers adverse judgment even if the plaintiff responds to the board's show cause order regarding its failure to file a brief on final hearing. 

• The plaintiff does not submit any evidence besides the status and title copy of its pleaded registration. 

Ex parte Appeals from Refusals to Register 

In ex parte appeals from refusals to register, evidence may not be added to the record once an applicant files its notice of appeal. However, the applicant can add further evidence to the record by a timely request for reconsideration (prior to appeal) or a request for remand back to the trademark examining attorney (and then the examining attorney has 30 days to further examine the application). 

Ex parte appeal briefs are limited to 25 pages. Although an index of cases is no longer required for ex parte appeal briefs, an index can still be included—but it will count toward the 25-page limit. The applicant's reply brief is limited to 10 pages. 

In the statement of issues, the applicant must note whether it has complied with all other requirements of the examining attorney. Briefs must cite to evidence by (1) date and docket entry in the electronic application record, and (2) page number. 

Appeals from an Adverse Judgment 

To initiate an appeal or review of an adverse judgment from the board, an applicant must file the required documents in all the locations noted in the accompanying table. 

Requests for reconsideration are not required before appealing to the U.S. Court of Appeals for the Federal Circuit or seeking review from a federal district court. If a party wishes to request reconsideration, however, it must do so before filing a notice of appeal or initiating the civil action. 

The deadline to file a notice of appeal is now 63 days from the date of the board's final decision (which matches the same deadline used by the Patent Trial and Appeal Board). 

Changes to Fee Structure 

Finally, the PTO has adjusted filing fees to accompany the rule changes: either to offset the cost of board proceedings, or to encourage electronic filings by making paper filings more expensive. 

For More Information 

To see the full details of the rules changes, please refer to 81 Fed. Reg. 69,950–69,988 (Oct. 7, 2016), corrections at 81 Fed. Reg. 89,382–89,383 (Dec. 12, 2016), and Trademark Rules 2.101–2.146.

Reproduced with permission from Copyright 2017 The Bureau of National Affairs, Inc. (800-372-1033) www.bna.com

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