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Thursday Nov 03, 2016

Enhancements to Trademark Trial and Appeal Board Proceedings

Guest blog by Chief Administrative Trademark Judge Gerard F. Rogers

The Trademark Trial and Appeal Board (TTAB) announced the culmination of an in-depth outreach effort to stakeholders focused on enhancing the Board’s appeal and trial processes. In a Notice of Final Rule-Making (NFRM), published in the Federal Register on October 7, 2016, the USPTO said new rule changes will benefit the public by providing more clarity in the rules, flexibility for parties involved in Board proceedings, and increased procedural efficiency. At the same time, the rules further a USPTO strategic objective to increase end-to-end electronic processing of trademark matters, which reduce costs to the USPTO and the public, and helps avoid errors that may creep into records during manual entry of data contained in paper filings.

The last major set of TTAB rule changes took effect in 2007. Since then, there have been case law developments, changes in the Federal Rules of Civil Procedure, and the rollout of the USPTO’s Accelerated Case Resolution (ACR) process. Therefore, it is an ideal time to update the rules to make the benefits of ACR available to all parties, as well as to promote electronic filing and communication. The rule changes, major provisions of which are summarized below, reflect significant input from the Trademark Public Advisory Committee, individual stakeholders, and professional associations, and have been well-received since publication in the Federal Register.

One of the most overarching rule changes involves the Board assuming responsibility for service of the complaint filed to initiate an inter partes proceeding. This rule change shifts responsibility for service of the complaint in an opposition or cancellation proceeding from the plaintiff to the Board, in an effort to reduce the responsibilities of litigants during the commencement of a proceeding.

Another exciting change is the Board moving exclusively to use of electronic filings and communication. In this new all-electronic environment, instead of mailing hard copies of institution orders and complaints, the Board forwards an order by email, with a link to both the proceeding file and the complaint, as displayed in the Board’s electronic docketing system known as TTABVUE. The rule changes also mandate that parties file documents through ESTTA, the Board’s electronic filing system. That requirement results in cost-savings to the USPTO and to private litigants, and will increase the efficiency with which the Board can process matters. Finally, filings and papers are now required to be exchanged between parties by email, with exceptions made for technical problems or extraordinary circumstances; and to allow the parties flexibility, they may agree to alternate methods of communication or exchange of documents and information that work best in their particular circumstances.

Reflecting recent amendments to the Federal Rules of Civil Procedure, new discovery provisions in the rule changes help curtail abuse and reduce litigation expense for stakeholders. The number of requests for production of documents and requests for admission are now limited to 75, paralleling the current limitation on interrogatories. To avoid disadvantaging parties that use requests for admission to authenticate produced documents, the changes provide for one comprehensive request for admission to the producing party to seek authentication of identified documents or specification of those documents which cannot be authenticated. This option facilitates introduction of produced documents at trial by notice of reliance, rather than through painstaking witness identification and testimony, thereby providing the parties more flexibility during trial. Finally, the rule changes afford the parties substantial flexibility to stipulate to various limitations on discovery in terms of duration, number of requests, and the elimination of discovery altogether.

Additionally, the rule changes establish new deadlines in discovery, paving the way for another significant change -- a requirement that motions to compel discovery or to determine the sufficiency of responses to requests for admission be filed prior to the deadline for plaintiff’s pretrial disclosures. These revisions help parties avoid the expense and uncertainty that arise when discovery disputes erupt on the eve of trial and ensure parties make pretrial disclosures and engage in trial preparation only after all discovery issues have been resolved. As with the timing of motions relating to discovery disputes, motions for summary judgment must be filed prior to the deadline for plaintiff’s pretrial disclosures. This avoids disruption of trial planning and preparation which can occur by filing such motions late in the process.

ACR procedures have proven particularly effective at streamlining trial proceedings. These include agreements to limit discovery and to shorten trial periods or the time between trial periods, and stipulations to certain facts or to the admissibility of documents or other evidence. Accordingly, parties are still able to enter into stipulations regarding proffers of testimony, but the rules allow any party unilaterally to choose to present trial testimony by affidavit or declaration, subject to the right of cross-examination by the adverse party or parties.
Finally, the rule changes include expanding the parties’ options through which evidence is submitted during trial. Parties may now make of record, via notice of reliance, pleaded registrations and registrations owned by any party by submitting a current copy of information from the USPTO electronic database records showing current status and title; and the rule changes codify this option. In addition, parties may now also use the notice of reliance method for submitting internet materials.

The rule changes become effective January 14, 2017, and apply to all proceedings pending at that time or begun thereafter. All employees at the Board, including our 243 information specialists and paralegals, our 245 attorneys, and our judges, have been involved in identifying these improvements, and we strongly believe that these changes help streamline our trial proceedings and avoid unnecessary expense and complications for parties involved in our cases.  We continue to welcome any feedback you have on TTAB trial proceedings in order to increase clarity, efficiency, and effectiveness of our processes.

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