DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 2 and 3
RIN 0651-AA87
Miscellaneous Changes to
Trademark Trial and Appeal Board Rules;
Correction
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Correcting amendment.
SUMMARY: This document contains corrections to the rules relating to
discovery, motions, and the fee for recording documents, and to the
title of Part 3 of Volume 37 of the Code of Federal Regulations.
EFFECTIVE DATE: September 30, 1998.
FOR FURTHER INFORMATION CONTACT: Ellen J. Seeherman, Administrative
Trademark Judge, Trademark Trial and Appeal Board, by telephone at (703)
308-9300, extension 206; or by mail marked to her attention and
addressed to Assistant Commissioner for Trademarks, Box TTAB-No Fee,
2900 Crystal Drive, Arlington, Virginia 22202-3513; or by facsimile
transmission marked to her attention and sent to (703) 308-9333.
SUPPLEMENTARY INFORMATION: On September 9, 1998, the Patent and
Trademark Office published a final rule entitled "Miscellaneous Changes
to Trademark Trial and Appeal Board Rules" in the Federal Register (63
FR 48081).
There is an error on page 48093, column 2, in the discussion of the
amendment of Section 2.127(a), which states that "if a motion for an
extension of time to file a brief in response to a motion is denied, the
time for responding to the motion for summary judgment may remain as
specified under this section." The words "for summary judgment" should
be deleted.
Section 2.120(a) was amended to clarify certain Board practices and to
change certain provisions relating to discovery. When the final rule was
printed, this section was incorrectly published as two paragraphs
instead of one. Section 2.120(a) should appear as a single paragraph.
Section 2.127(a) was amended to, inter alia, provide that the Board may,
in its discretion, consider a reply brief. As published, however, a
comma was erroneously placed after the word "Board" rather than after
the word "may."
Section 3.41 was amended in order to correct a cross-reference to the
section relating to the fee for recording a trademark document. However,
an earlier version of 3.41 was inadvertently inserted. The version of
3.41 as published in the Federal Register on October 10, 1997, 62 FR
53132, 1203 TMOG 63 (October 21, 1997), which became effective December
1, 1997, should be reinserted with the corrected cross-reference.
Finally, the title of Part 3 of Volume 37 of the Code of Federal
Regulations was erroneously listed as "Rules of Practice in Trademark
Cases." It should remain as "Assignment, Recording and Rights of
Assignee."
List of Subjects
37 CFR Part 2
Administrative practice and procedure, Patents, Trademarks.
37 CFR Part 3
Administrative practice and procedure, Patents, Trademarks.
Accordingly, 37 CFR Parts 2 and 3 are corrected as follows:
PART 2--RULES OF PRACTICE IN TRADEMARK CASES
1. The authority citation for part 2 continues to read as follows:
Authority: 15 U.S.C. 1123; 35 U.S.C. 6.
2. Section 2.120(a) is correctly revised to read as follows:
2.120 Discovery.
(a) In general. Wherever appropriate, the provisions of the Federal
Rules of Civil Procedure relating to discovery shall apply in
opposition, cancellation, interference and concurrent use registration
proceedings except as otherwise provided in this section. The provisions
of the Federal Rules of Civil Procedure relating to automatic
disclosure, scheduling conferences, conferences to discuss settlement
and to develop a discovery plan, and transmission to the court of a
written report outlining the discovery plan, are not applicable to Board
proceedings. The Trademark Trial and Appeal Board will specify the
opening and closing dates for the taking of discovery. The trial order
setting these dates will be mailed with the notice of institution of the
proceeding. The discovery period will be set for a period of 180 days.
The parties may stipulate to a shortening of the discovery period. The
discovery period may be extended upon stipulation of the parties
approved by the Board, or upon motion granted by the Board, or by order
of the Board. If a motion for an extension is denied, the discovery
period may remain as originally set or as reset. Discovery depositions
must be taken, and interrogatories, requests for production of documents
and things, and requests for admission must be served, on or before the
closing date of the discovery period as originally set or as reset.
Responses to interrogatories, requests for production of documents and
things, and requests for admission must be served within 30 days from
the date of service of such discovery requests. The time to respond may
be extended upon stipulation of the parties, or upon motion granted by
the Board, or by order of the Board. The resetting of a party's time to
respond to an outstanding request for discovery will not result in the
automatic rescheduling of the discovery and/or testimony periods; such
dates will be rescheduled only upon stipulation of the parties approved
by the Board, or upon motion granted by the Board, or by order of the
Board.
*****
3. Section 2.127(a) is correctly revised to read as follows:
2.127 Motions.
(a) Every motion shall be made in writing, shall contain full
statement of the grounds, and shall embody or be accompanied by a brief.
Except as provided in paragraph (e)(1) of this section, a brief in
response to a motion shall be filed within fifteen days from the date of
service of the motion unless another time is specified by the Trademark
Trial and Appeal Board or the time is extended by stipulation of the
parties approved by the Board, or upon motion granted by the Board, or
upon order of the Board. If a motion for an extension is denied, the
time for responding to the motion may remain as specified under this
section. The Board may, in its discretion, consider a reply brief.
Except as provided in paragraph (e)(1) of this section, a reply brief,
if filed, shall be filed within 15 days from the date of service of the
brief in response to the motion. The time for filing a reply brief will
not be extended. No further papers in support of or in opposition to a
motion will be considered by the Board. Briefs shall be submitted in
typewritten or printed form, double spaced, in at least pica or
eleven-point type, on letter-size paper. The brief in support of the
motion and the brief in response to the motion shall not exceed 25 pages
in length; and a reply brief shall not exceed 10 pages in length.
Exhibits submitted in support of or in opposition to the motion shall
not be deemed to be part of the brief for purposes of determining the
length of the brief. When a party fails to file a brief in response to a
motion, the Board may treat the motion as conceded. An oral hearing will
not be held on a motion except on order by the Board.
*****
PART 3--ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE
4. The authority citation for Part 3 continues to read as follows:
Authority: 15 U.S.C. 1123; 35 U.S.C. 6.
5. The title of Part 3 is correctly revised to read as follows:
Part 3--ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE
6. Section 3.41 is correctly revised to read as follows:
3.41 Recording fees.
(a) All requests to record documents must be accompanied by the
appropriate fee. Except as provided in paragraph (b) of this section, a
fee is required for each application, patent and registration against
which the document is recorded as identified in the cover sheet. The
recording fee is set in 1.21(h) of this chapter for patents and in
2.6(b)(6) of this chapter for trademarks.
(b) No fee is required for each patent application and patent against
which a document required by Executive Order 9424 is to be filed if:
(1) The document does not affect title and is so identified in the cover
sheet (see 3.31(c)(2)); and
(2) The document and cover sheet are mailed to the Office in compliance
with 3.27(b).
September 24, 1998 ALBIN F. DROST
Deputy Solicitor