Ushering in the 2017 Changes to the TTAB Rules of Practice
On January 14, 2017, the Trademark Rules of Practice were amended. The 2017 amendments are the first major set of changes since 2007. Many of the changes emphasize electronic filing and service, discovery limitations, and simpler introduction of evidence by way of declarations.
Follow Along in the Redline
I’ve summarized the important changes below by section and topic. If you want to follow along, you can use this redline of the rule changes. In addition, Christopher Schulte of Merchant & Gould has put together a handy pdf poster with a timeline entitled TTAB Rule Changes You Need to Know.
Filing & Serving a Notice of Opposition | 37 C.F.R. § 2.101
The biggest change when it comes to a notice of opposition is that the opposer no longer needs to serve the notice of opposition. Instead, the TTAB will go back to serving a notice of opposition on the applicant. The rule changes also require that filings be made through the Electronic System for Trademark Trials and Appeals (“ESTTA”), but who’s still filing by paper anyway?
Extensions of Time to File a Notice of Opposition | 37 C.F.R. § 2.102
Nothing too important here. Extensions have to be filed through ESTTA, and there’s some clarifying language about when extensions can be taken and for how long.
Contents of a Notice of Opposition | 37 C.F.R. § 2.104
If you’re filing a notice of opposition against an application that was filed through the Madrid Protocol, be aware that you are limited to the goods, services, and grounds listed in the ESTTA cover sheet. So don’t rely just on the content of your pleading. Make sure the cover sheet contains everything.
Notification of Opposition Proceeding | 37 C.F.R. § 2.105
Basically, the TTAB set out how it’s going to notify parties of the opposition, which is by sending a notice with a web link to the email or correspondence address of record for the party, its attorney, or its domestic representative. Just make sure the information in the application is accurate and current.
Answer to Notice of Opposition | 37 C.F.R. § 2.106
Answers have to be filed through ESTTA (noticing a theme?). Also, the failure to file a timely answer tolls all dates. And a default can occur after the time to answer is reset.
Amendment of Pleadings | 37 C.F.R. § 2.107
This section was amended to add language that a pleading cannot be amended to add a joint opposer after the expiration of the time for filing an opposition. In addition, the amendments to pleadings are more limited when a Madrid Protocol application is being opposed; in such cases, a pleading cannot be amended to add new grounds, goods and/or services, or a joint opposer. This rule has also been rewritten to emphasize that, for opposition of Madrid Protocol application, the ESTTA cover sheet controls.
Filing & Serving a Petition for Cancellation | 37 C.F.R. § 2.111
Like opposition, the petitioner does not need to serve a petition for cancellation anymore, but the petition for cancellation must be filed through ESTTA. There’s some language allowing for paper filings if ESTTA isn’t working.
Contents of a Petition for Cancellation | 37 C.F.R. § 2.112
A petition for cancellation must now indicate, to the best of the petitioner’s knowledge, a current email address of the current owner of the registration. Language has also been added to make it clear that ESTTA requires the petitioner to select relevant grounds for a petition to cancel and that the accompanying statement supports and explains the grounds.
Notification of Cancellation Proceeding | 37 C.F.R. § 2.113
Like the notification of oppositions, this section as been amended to remove the requirement for petitioners to serve the petition for cancellation and specifies that the TTAB will serve by sending a notice with a web link to the email or correspondence address of record for the party, its attorney, or its domestic representative.
Answer to Petition for Cancellation | 37 C.F.R. § 2.114
Answers have to be filed through ESTTA. Also, the failure to file a timely answer tolls all dates. And a default can occur after the time to answer is reset. The definition of a pleaded registration has been slightly changed. There’s also some language about the Board being able to reset dates sua sponte.
Procedure in Opposition & Cancellation Proceedings
Federal Rules of Civil Procedure | 37 C.F.R. § 2.116
The changes to this section are just tweaks. The section has been made clearer that the submission of notices of reliance, declarations and affidavits, and depositions during the testimony period correspond to a trial in court proceedings. It has also re-worked the language to make it clear that the TTAB’s standard protective order automatically applies. But the TTAB may still treat information that cannot reasonably be considered confidential as non-confidential despite how the parties have designated it.
Suspension of Proceedings | 37 C.F.R. § 2.117
This section has been amended to provide that the TTAB may sua sponte suspend proceedings. It also now states that, even though most consented and stipulated motions to suspend are granted automatically, the TTAB can condition approval of the suspension on information about the status of settlement talks, discovery, or trial activities.
Undelivered Office Notices | 37 C.F.R. § 2.118
This section has been amended to clarify that it applies not just to notices returned to the Office, but also to notifications of non-delivery in paper or electronic form.
Service and Signing of Papers | 37 C.F.R. § 2.119
This section has been revised to remove the requirement to serve notices of opposition and petitions for cancellation. It also provides that all papers will be served by email unless the parties stipulate to a different method or there are technical difficulties with email. And five days are no longer added to service dates, as all 15 day response times have been amended to 20 days.
Discovery | 37 C.F.R. § 2.120
Some big changes here:
- as in federal court, discovery requests must be served early enough that the responses are due before the close of discovery
- requests for production are limited to 75
- requests for admission are limited to 75
- motions to compel initial disclosures must be filed within 30 days after the deadline
- a motion to compel/test the sufficiency of any objection must be filed prior to the deadline for pretrial disclosures for the first testimony period
- a party can serve a single comprehensive request for admission authenticating specific documents produced by the other party
- a motion to use a discovery deposition must be filed when a party makes its pretrial disclosures
- a party may make documents produced by the other party of record by notice of reliance if authenticated through a stipulation or admission
And some small ones:
- the new proportionality scope of discovery is referenced
- an interlocutory attorney can participate in the discovery conference when the TTAB think it would be useful
- the TTAB may issue an order regarding expert discovery on its own or after notice from a party
- an expert disclosure deadline must be scheduled prior to the close of discovery
- extensions of the discovery period granted by the Board will be limited (this might be a big change if it actually changes current practice but there are no indications that it is intended to do so)
- an agreement as to the location of a deposition must be made in writing
- clarification that various provisions also apply to electronically stored information (“ESI”)
- if a motion to compel/test the sufficiency of any objection is filed after the close of discovery, the parties do not need to make their pretrial disclosures until the TTAB tells them to
- the TTAB may schedule a telephone conference whenever a stipulation or motion is filed if it believes it would be beneficial
Assignment of Times for Taking Testimony & Presenting Evidence | 37 C.F.R. § 2.121
Changes to this section include: (i) a clarification that evidence must be presented during a party’s testimony period; (ii) the resetting of a party’s testimony period will automatically reschedule the remaining pretrial disclosure deadlines; (iii) the parties may stipulate to shorten or extend testimony periods, but must be approved by the TTAB; (iv) stipulations to reschedule deadlines must be submitted through ESTTA with relevant dates set forth and an express statement that all parties agree; (v) testimony may be presented by affidavit or declaration; (vi) a party may move to quash a noticed deposition testimony of a witness who was not properly identified; and (vii) a party can move to strike the testimony presented by affidavit ord declaration of a witness who was not disclosed in pretrial disclosures.
Matters in Evidence | 37 C.F.R. § 2.122
The parties may stipulate to rules of evidence. Evidence of record made by one party can be referred to by the other party for any permitted purpose. Statements made in an affidavit or declaration in the file of an application are not testimony. There’s a couple tweaks to the language in the section about making registrations part of the evidentiary record. There’s an added section about admitting Internet materials into evidence by way of a notice of reliance. The last amendment to this section concerns the notice of reliance and specifies that the relevancy of the evidence must be set forth and associated with one of the issues in the proceeding.
Trial Testimony | 37 C.F.R. § 2.123
The big thing to know here is that testimony can now be submitted by way of an affidavit or declaration, subject to the right of the other party to cross-examine the witness. In addition, there is an addition clarifying that a testimonial deposition in a foreign country shall be taken by a deposition upon written questions unless the TTAB orders otherwise. There’s a few other minor revisions to note, including (i) the parties may stipulate to facts; (ii) you can’t identify a witness by description in a notice of examination; (iii) depositions must be recorded rather than taken in longhand, typewriting, or stenographically; (iv) deposition transcripts and exhibits must be filed electronically using ESTTA; and (v) depositions must be in full-sized format with a word index.
Depositions Upon Written Questions | 37 C.F.R. § 2.124
The amendment to this section clarifies that you can use depositions upon written questions to cross-examine a witness who has given testimony by way of a declaration. In such situations, the party must serve a notice on the adverse party and the Board.
Filing & Service of Testimony | 37 C.F.R. § 2.125
A copy of a declaration prepared in accordance with § 2.123 must be served on the adverse party when it is filed with the TTAB during the testimony period. It can also be filed under seal if appropriate.
Form of Submissions | 37 C.F.R. § 2.126
Surprise, surprise! Filing must be made electronically through ESTTA. But if there is a problem with ESTTA, you can file by paper. Submissions have to be in 11-point type and double spaced. Exhibits should be filed electronically as an attachment to the submission. Confidential submissions need to be filed using the Confidential selection in ESTTA.
Motions | 37 C.F.R. § 2.127
There’s a couple of important things to note here. Most importantly, summary judgment motions must be filed prior to the deadline for pretrial disclosures for the first testimony period. And the time for filing summary judgment motions and reply briefs will not be reopened. If a summary judgment motion is denied, the parties can stipulate to the materials submitted with the briefs being considered at trial as evidence.
Also, response dates are 20 days instead of 15. Paralegals can decide conceded and non-dispositive matters. And as we already knew, a case is suspended when a potentially dispositive motion is filed.
Briefs at Final Hearing | 37 C.F.R. § 2.128
The amendments to this section just codify existing legal practice: (i) if a plaintiff doesn’t file its main brief, responds to an order to show cause but has no evidence and doesn’t move to reopen its testimony period, the TTAB can enter judgment against the plaintiff; (ii) evidentiary objections can be raised in an appendix or separate statement that doesn’t count against the brief page limit; and (iii) briefs that exceed the applicable page limits may not be considered by the TTAB.
Oral Argument; Reconsideration | 37 C.F.R. § 2.129
Nothing important here: (i) statutory members of the Board can hear oral argument; (ii) attendance of the oral argument can be remote at the discretion of the TTAB; (iii) the TTAB can deny requests to reset a hearing date for lack of good cause or multiple requests; and (iv) response briefs are due within 20 days instead of 15.
New Matter Suggested by Examining Attorney | 37 C.F.R. § 2.130
The changes here probably constitute a distinction without a difference. Basically, if the examining attorney believes the mark is unregistrable, the examining attorney needs to request remand instead of just notifying the TTAB.
Involuntary Dismissal for Failure to Take Testimony | 37 C.F.R. § 2.132
I’ve filed motions under this section quite a bit. The changes here are mainly cosmetic. The section now states that the TTAB can grant judgment sua sponte, increases the response time from 15 to 20 days, and allows the TTAB to wait until the testimony periods have passed before deciding the motion.
Surrender or Voluntary Cancellation of Registration | 37 C.F.R. § 2.134
Nothing substantive here. Just a revision to make it clear that this section applies to situations in which extension of protection under the Madrid Protocol has expired after a cancellation proceeding has begun.
Status of Application or Registration on Termination | 37 C.F.R. § 2.136
The amendments to this section do not substantively change anything. They simply clarify or add a little more detail to when a proceeding will be terminated and the effect on the status of an application or registration after termination.
The revisions to the appeals rules are minor in nature. The summary below gives you a flavor for the changes—just so you have some measure of comfort that the changes don’t really change how you will need to prosecute an application or litigate a proceeding prior to appeal.
Time & Manner of Ex Parte Appeals | 37 C.F.R. § 2.142
Nothing earth shattering here: (i) examining attorneys don’t have to file their briefs through ESTTA; (ii) briefs don’t have to have an alphabetical index of cases; (iii) reply briefs are limited to 10 pages; (iv) no additional briefs are permitted without permission; (v) § 2.143(b) sets forth how to cite to evidence; (vi) an applicant has to say it has complied with all requirements in its statement of issues; (vii) evidence should not be filed after a notice of appeal; and (viii) attendance at the oral hearing may be made remotely at the discretion of the TTAB.
Appeal to Court & Civil Action | 37 C.F.R. § 2.145
If you look at the redline for 37 C.F.R. § 2.145, it looks pretty busy. But most of the changes are not substantive, consisting mostly of reorganization and cosmetic changes. There are a few substantive changes, namely, requiring notices of appeal to be filed through ESTTA; clarifying that requests for reconsiderations are not necessary before appealing but, if filed, must be filed prior to a notice of appeal; setting forth provisions for serving the Director with a complaint; requiring notices of a civil complaint to be filed with the TTAB within 5 business days; and changing the deadline for appeal from two months to 63 days.
General Information & Correspondence
For thoroughness, I have included these sections, but the amendments to these sections are basically inconsequential.
Addresses for Correspondence | 37 C.F.R. § 2.190
Language has been added to require that documents in TTAB proceedings be filed through ESTTA. In addition, the “Assignment Services Division” is now the “Assignment Recordation Branch.”
Business to be Transacted in Writing | 37 C.F.R. § 2.191
Language has been added to require that documents in TTAB proceedings be filed through ESTTA.
Receipt of Correspondence | 37 C.F.R. § 2.195
By now, you’ve noticed an emphasis on filing through ESTTA. This section has been amended to simply delete the ability to file a notice of an ex parte appeal by fax.