Section 2.120(h), which concerns requests for admission, is proposed to
be amended to redesignate the present paragraph as (h)(2); delete the
first sentence, which reads "Requests for admissions shall be governed by
Rule 36 of the Federal Rules of Civil Procedure except that the Trademark
Trial and Appeal Board does not have authority to award any expenses to
any party."; add to the beginning a new sentence reading "Any motion by a
party to determine the sufficiency of an answer or objection to a request
made by that party for an admission must be filed within 30 days after the
close of the discovery period, as originally set or as reset."; and revise
the beginning of the second sentence, which now reads, "A motion by a party
to determine the sufficiency of an answer or objection to a request made by
that party for an admission shall...," to read "The motion shall ....,"
The section is proposed to be further amended to add a new paragraph,
designated (h)(1), limiting the number of requests for admission which a
party may serve upon another party, in a proceeding, to 25, counting sub-
parts. Specifically, the proposed new paragraph provides that the total
number of requests for admission which a party may serve upon another
party pursuant to Rule 36 of the Federal Rules of Civil Procedure, in a
proceeding, shall not exceed 25, counting subparts, except upon stipulation
of the parties; that if a party upon which requests for admission have been
served believes that the number of requests served exceeds the limitation
specified in the paragraph, and is not willing to waive this basis for
objection, the party shall, within the time for (and instead of) serving
answers and specific objections to the requests, serve a general objection
on the ground of their excessive number; and that if the inquiring party,
in turn, files a motion to determine the sufficiency of the objection,
the motion must be accompanied by a copy of the set(s) of requests for
admission which together are said to exceed the limitation, and must
otherwise comply with the requirements of paragraph (h)(2) of the section.
The proposed provisions parallel the provisions of 2.120(d)(1), which
limit the number of interrogatories which a party may serve upon another
party in a proceeding. Finally, 2.120(h) is proposed to be amended to
add another new paragraph, designated (h)(3), which provides for the sus-
pension of proceedings when a motion to determine the sufficiency of an
answer or objection to a request for admission is filed. Specifically, the
proposed new paragraph provides that when a party files a motion to deter-
mine the sufficiency of an answer or objection to a request made by that
party for an admission, the case will be suspended by the Board with re-
spect to all matters not germane to the motion, and no party should file
any paper which is not germane to the motion, except as otherwise specified
in the Board's suspension order. The proposed new paragraph also provides
that the filing of a motion to determine the sufficiency of an answer or
objection to a request for admission shall not toll the time for a party
to respond to any outstanding discovery requests or to appear for any
noticed discovery deposition. The provisions of proposed new 2.120(h)(3)
parallel the provisions of proposed new 2.120(e) and 2.127(d), as
proposed to be amended.
Section 2.121(a)(1) is proposed to be amended by revising the third
sentence, which now provides that testimony periods may be rescheduled
"by stipulation of the parties approved by the Board, or upon motion
granted by the Board, or by order of the Board," to provide that testimony
periods may be rescheduled "by stipulation of the parties approved by the
Board, or upon motion showing extraordinary circumstances granted by the
Board." The sentence is proposed to be further amended to specify that
"if such a motion is denied, the testimony periods will remain as set."
In addition, the last sentence of the section, which now reads "The re-
setting of a party's time to respond to an outstanding request for dis-
covery will not result in the automatic rescheduling of the discovery
and/or testimony periods; such dates will be rescheduled only upon stipula-
tion of the parties approved by the Board, or upon motion granted by the
Board, or by order of the Board," is proposed to be deleted. The sentence
is proposed to be added to 2.120(a), with the latter part of the
sentence being modified to read "the discovery period will be rescheduled
only upon stipulation of the parties approved by the Board, and testimony
periods will be rescheduled only upon stipulation of the parties approved
by the Board, or upon motion showing extraordinary circumstances granted
by the Board." The proposed modification is consistent with the third
sentence of 2.121(a)(1), as proposed to be amended.
Section 2.121(c), which governs the length of the testimony periods,
is proposed to be amended to enlarge the rebuttal testimony period from
15 to 30 days, and to enlarge all other testimony periods from 30 to 60
days. In addition, the last sentence of the section, which now provides
that the periods may be extended "by stipulation of the parties approved
by the Trademark Trial and Appeal Board, or upon motion granted by the
Board, or by order of the Board," is proposed to be amended to provide
that the periods may be extended "by stipulation of the parties approved
by the Trademark Trial and Appeal Board, or upon motion showing extraor-
dinary circumstances granted by the Board." The sentence is proposed to be
further amended to specify that "if such a motion is denied, the testimony
periods will remain as set." The proposed amendments to this sentence
parallel the proposed amendment to the third sentence of 2.121(a)(1).
Section 2.121(d) now provides, in pertinent part, that when parties
stipulate to the rescheduling of testimony periods or to the rescheduling
of the closing date for discovery and the rescheduling of testimony
periods, a stipulation "submitted in one original plus as many photocopies
as there are parties" will, if approved, be so stamped, signed, and dated,
and the copies will be promptly returned to the parties. The section is
proposed to be amended by revising the quoted section to read "submitted in
a number of copies equal to the number of parties to the proceeding plus
one copy for the Board."
Section 2.122(b)(1), which now provides, in pertinent part, that each
application or registration file specified in a declaration of interference
forms part of the record of the proceeding without any action by the
parties, is proposed to be amended by substituting the word "notice" for
the word "declaration."
Section 2.122(d)(1), which now includes a cross-reference to
" 2.6(n)," is proposed to be amended to correct the cross-reference to
" 2.6(b)(4)."
Section 2.123(b) now provides, in its second sentence, that by agreement
of the parties, the testimony of any witness or witnesses of any party may
be submitted in the form of an affidavit by such witness or witnesses. The
sentence is proposed to be amended by inserting the word "written" between
the words "by" and "agreement." The third sentence of the section now pro-
vides that the parties may stipulate what a particular witness would
testify to if called, or the facts in the case of any party may be stipula-
ted. The sentence is proposed to be amended by inserting the words "in
writing" after the word "stipulate" and after the word "stipulated."
Section 2.123(f) pertains to the certification and filing of a deposi-
tion by the officer before whom the deposition was taken. The third
sentence of the second paragraph of the section now reads, "Unless waived
on the record by an agreement, he shall then, without delay, securely seal
in an envelope all the evidence, notices, and paper exhibits, inscribe upon
the envelope a certificate giving the number and title of the case, the
name of each witness, and the date of sealing, address the package, and
forward the same to the Commissioner of Patents and Trademarks." The sen-
tence is proposed to be amended to delete the words "without delay," to put
a period after the word "sealing," and to convert the remainder of the
present sentence into a new sentence which reads, "The officer or the party
taking the deposition, or its attorney or other authorized representative,
shall then address the package and forward the same to the Commissioner of
Patents and Trademarks." The fourth sentence of the paragraph now reads,
"If the weight or bulk of an exhibit shall exclude it from the envelope, it
shall, unless waived on the record by agreement of all parties, be authen-
ticated by the officer and transmitted in a separate package marked and
addressed as provided in this section." The sentence is proposed to be
amended to insert, after the word "transmitted," the phrase "by the officer
or the party taking the deposition, or its attorney or other authorized
representative." Finally, in view of the proposed amendments to the third
and fourth sentences, the title of the section, which now reads "Certifi-
cation and filing by officer," is proposed to be amended to read "Certifi-
cation and filing of deposition."
Section 2.125(c), which now provides that one certified transcript (of a
testimony deposition) and exhibits shall be filed "promptly," with the
Board, is proposed to be amended to delete the word "promptly."
Section 2.127(a), which governs the filing of briefs on motions, is pro-
posed to be amended to (1) enlarge the time for filing a brief in response
to a motion from 15 days to 30 days, and preface the time provision with
the phrase "Except as provided in paragraph (e)(1) of this section, a"; (2)
delete, from the second sentence, a provision for extension of this time by
"order of the Board on motion for good cause" and substitute a provision
for an extension by "stipulation of the parties approved by the Board, or
upon motion showing extraordinary circumstances granted by the Board," with
the added provision that, "if such a motion for an extension is denied, the
time for responding to the motion remains as specified under this section";
(3) add a new provision to specify that a reply brief, if filed, shall be
filed within 15 days from the date of service of the brief in response to
the motion, and preface this new provision with the phrase "Except as pro-
vided in paragraph (e)(1) of this section, a"; (4) specify that the time
for filing a reply brief will not be extended, and that no further papers
in support of or in opposition to a motion will be considered by the Board;
(5) add form requirements for briefs, i.e., that they shall be submitted in
typewritten or printed form, double spaced, in at least pica or eleven-
point type, on letter-size paper; (6) add a page limitation for briefs,
namely, 25 pages for a brief in support of or in response to a motion and
10 pages for a reply brief; and (7) specify that exhibits submitted in
support of or in opposition to a motion shall not be deemed to be part of
the brief for purposes of determining the length of the brief.
Section 2.127(b), which now provides, in pertinent part, that any re-
quest for reconsideration or modification of an order or decision issued on
a motion must be filed within thirty days from the date thereof, is pro-
posed to be amended to change the specification of the time period for re-
questing reconsideration or modification from "thirty days" to "one month."
Section 2.127(d) provides, in its first sentence, that when any party
files a motion which is potentially dispositive of a proceeding, the case
will be suspended by the Board with respect to all matters not germane
to the motion, and no party should file any paper which is not germane to
the motion. The sentence is proposed to be amended to add to the end of the
sentence the phrase "except as otherwise specified in the Board's suspen-
sion order." The section is proposed to be further amended to add, immedi-
ately after the first sentence, a new sentence providing that filing a
summary judgment motion shall not toll the time for the moving party to
respond to any outstanding discovery requests or to appear at a noticed
discovery deposition, but it shall toll the time for the nonmoving party to
serve such responses or to appear for such deposition.
Section 2.127(e)(1), which governs the time for filing a motion for sum-
mary judgment, is proposed to be amended to add, at the beginning of the
section, a provision that a motion for summary judgment may not be filed
until notification of the proceeding has been sent to the parties by the
Board. In addition, the section is proposed to be amended to add to the end
thereof provisions specifying that (1) a motion under Rule 56(f) of the
Federal Rules of Civil Procedure, if filed in response to a motion for
summary judgment, shall be filed within 30 days from the date of service of
the summary judgment motion; (2) the time for filing a motion under Rule
56(f) will not be extended; (3) if no motion under Rule 56(f) is filed, a
brief in response to the motion for summary judgment shall be filed within
60 days from the date of service of the motion unless the time is extended
by stipulation of the parties approved by the Board, or upon motion showing
extraordinary circumstances granted by the Board and that, if such a motion
for an extension is denied, the time for responding to the motion for
summary judgment remains as specified under this section; (4) a reply
brief, if filed, shall be filed within 30 days from the date of service of
the brief in response to the motion; (5) the time for filing a reply brief
will not be extended; and (6) no further papers in support of or in opposi-
tion to a motion for summary judgment will be considered by the Board.
Section 2.127(f), which now states that "The Board does not have
authority to hold any person in contempt, or to award attorneys' fees or
other expenses to any party," is proposed to be amended to state instead
that "The Board will not hold any person in contempt, or award attorneys'
fees or other expenses to any party."
Section 2.134(a), which now includes a cross-reference to "section
7(d)" of the Act of 1946, is proposed to be amended to correct the
cross-reference to "section 7(e)."
Section 2.146(e)(1), which now provides for filing a petition to the
Commissioner from the denial of a request for an extension of time to
file a notice of opposition, is proposed to be amended to provide also
for filing a petition from the grant of such a request. Specifically,
the first sentence of the section now provides that a petition from the
denial of a request for an extension of time to file a notice of
opposition shall be filed within fifteen days from the date of mailing
of the denial of the request and shall be served on the attorney or
other authorized representative of the applicant, if any, or on the
applicant. The sentence is proposed to be revised to read, "A petition
from the grant or denial of a request for an extension of time to file a
notice of opposition shall be filed within fifteen days from the date of
mailing of the grant or denial of the request. A petition from the grant
of a request shall be served on the attorney or other authorized
representative of the potential opposer, if any, or on the potential
opposer. A petition from the denial of a request shall be served on the
attorney or other authorized representative of the applicant, if any, or
on the applicant." In addition, the present third sentence of the
section, which provides, in pertinent part, that the applicant may file
a response within fifteen days from the date of service of the petition
and shall serve a copy of the response on the petitioner, is proposed to
be amended by revising the beginning of the sentence to read, "The
potential opposer or the applicant, as the case may be, may file a
response within fifteen days...."
Section 3.41, which now includes a cross-reference to " 2.6(q)," is
proposed to be amended to correct the cross-reference to " 2.6(b)(6)."
Environmental, Energy, and Other Considerations
The proposed rule changes are in conformity with the requirements of
the Regulatory Flexibility Act (5 U.S.C. 601 et seq.), Executive Order
12612, and the Paperwork Reduction Act of 1995 (PRA) (44 U.S.C. 3501 et
seq.). The proposed changes have been determined to be not significant
for purposes of Executive Order 12866.
The Assistant General Counsel for Legislation and Regulation of the
Department of Commerce has certified to the Chief Counsel for Advocacy,
Small Business Administration, that the proposed rule changes will not
have a significant impact on a substantial number of small entities
(Regulatory Flexibility Act, 5 U.S.C. 605(b)). The principal effect of
this rule change is to improve practice and expedite proceedings in
inter partes cases before the Board.
The PTO has determined that the proposed rule changes have no
Federalism implications affecting the relationship between the National
Government and the States as outlined in Executive Order 12612.
This rule involves the Petition to Cancel requirement which has not
been previously approved by the OMB under the PRA. A request to collect
this information has been submitted to OMB for review and approval. The
reporting burden for this collection of information is estimated to be
20 minutes per response, including the time for reviewing instructions,
searching existing data sources, gathering and maintaining the data
needed, and completing and reviewing the collection of information.
Comments are invited on: (a) whether the collection of information is
necessary for proper performance of the functions of the agency; (b) the
accuracy of the agency's estimate of the burden; (c) ways to enhance the
quality, utility, and clarity of the information to be collected; and
(d) ways to minimize the burden of the collection of information to
respondents. This rule also involves information requirements associated
with filing an Opposition to the Registration of a Mark, Amendment to
Allege Use, and dividing an application. These requirements have been
previously approved by the OMB under control number 0651-0009. Send
comments regarding the burden estimate or any other aspects of the
information requirements, including suggestions for reducing the burden,
to the Assistant Commissioner for Trademarks, Box TTAB--No Fee, 2900
Crystal Drive, Arlington, VA 22202-3513, marked to the attention of
Ellen J. Seeherman, and to the Office of Information and Regulatory
Affairs, Office of Management and Budget, Washington, DC 20503
(Attention: PTO Desk Officer).
Notwithstanding any other provision of law, no person is required to
respond to, nor shall a person be subject to a penalty for failure to
comply with, a collection of information, subject to the requirements of
the PRA, unless that collection of information displays a currently
valid Office of Management and Budget (OMB) control number
List of Subjects
37 CFR Part 2
Administrative practice and procedure, Courts, Lawyers, Trademarks.
37 Part 3
Administrative practice and procedure, Patents, Trademarks
For the reasons given in the preamble and pursuant to the authority
contained in 41 of the Trademark Act of July 5, 1946, as amended, the
Patent and Trademark Office proposes to amend Part 2 and Part 3 of Title
37 of the Code of Federal Regulations by amending or revising 2.76,
2.85, 2.87, 2.101, 2.102, 2.111, 2.117, 2.119, 2.120, 2.121, 2.122,
2.123, 2.125, 2.127, 2.134, 2.146 and 3.41, as set forth below.
Additions are indicated by arrows and deletions by brackets.
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, unless otherwise noted.
1a. Section 2.76 is proposed to be amended by revising paragraphs
(a), (g), and (h) to read as follows:
2.76 Amendment to allege use.
(a) An application under section 1(b) of the Act may be amended to
allege use of the mark in commerce under section 1(c) of the Act at any
time between the filing of the application and the date the examiner
approves the mark for publication [or the date of expiration of the
six-month response period after issuance of a final action]. Thereafter,
an allegation of use may be submitted only as a statement of use under
2.88 after the issuance of a notice of allowance under section 13(b)(2)
of the Act. If an amendment to allege use is filed outside the time
period specified in this paragraph, it will be returned to the applicant.
*****
(g) If the amendment to allege use is filed within the permitted time
period but does not meet the minimum requirements specified in paragraph
(e) of this section, applicant will be notified of the deficiency. The
deficiency may be corrected provided the mark has not been approved for
publication [or the six-month response period after issuance of a final
action has not expired]. If an acceptable amendment to correct the
deficiency is not filed prior to approval of the mark for publication
[or prior to the expiration of the six-month response period after
issuance of a final action], the amendment will not be examined.
(h) An amendment to allege use may be withdrawn for any reason prior
to approval of a mark for publication [or expiration of the six-month
response period after issuance of a final action].
2. Section 2.85 is proposed to be amended by revising paragraph (e)
to read as follows:
2.85 Classification schedules.
*****
(e) Where the amount of the fee received on filing an appeal in
connection with an application or on an application for renewal [or in
connection with a petition for cancellation] is sufficient for at least
one class of goods or services but is less than the required amount
because multiple classes in an application or registration are involved,
the appeal or renewal application [or petition for cancellation] will
not be refused on the ground that the amount of the fee was insufficient
if the required additional amount of the fee is received in the Patent
and Trademark Office within the time limit set forth in the notification
of this defect by the Office, or if action is sought only for the number
of classes equal to the number of fees submitted.
*****
3. Section 2.87 is proposed to be amended by revising paragraph (c)
to read as follows:
2.87 Dividing an application.
*****
(c) A request to divide an application may be filed at any time
between the filing of the application and the date the Trademark
Examining Attorney approves the mark for publication or the date of
expiration of the six-month response period after issuance of a final
action; or during an opposition >or concurrent use or interference
proceeding<, upon motion granted by the Trademark Trial and Appeal
Board. Additionally, a request to divide an application under section
1(b) of the Act may be filed with a statement of use under symbol 39 f
2.88 or at any time between the filing of a statement of use and the date
the Trademark Examining Attorney approves the mark for registration or the
date of expiration of the six-month response period after issuance of a
final action.
*****
4. Section 2.101 is proposed to be amended by revising paragraph
(d)(1) to read as follows:
2.101 Filing an opposition.
*****
(d)(1) The opposition must be accompanied by the required fee for each
class in the application for which registration is opposed (see >2.6(a)
(17)< [2.6(1)]. If no fee, or a fee insufficient to payfor one person to
oppose the registration of a mark in at least one class, is submitted with-
in thirty days after publication of the mark to be opposed or within an
extension of time for filing an opposition, the opposition will not be
refused if the required fee(s) is submitted to the Patent and Trademark
Office within the time limit set in the notification of this defect by the
Office.