5. Section 2.102 is proposed to be amended by revising paragraph (d) to read as follows: 2.102 Extension of time for filing an opposition. ***** (d) Every request to extend the time for filing a notice of opposition should be submitted in triplicate [(original plus two copies)]. 6. Section 2.111 is proposed to be amended by revising paragraphs (b) and (c)(1) to read as follows: 2.111 Filing petition for cancellation. ***** (b) Any entity which believes that it is or will be damaged by a registration may file a petition, which should be addressed to the Trademark Trial and Appeal Board, to cancel the registration in whole or in part. The petition need not be verified, and may be signed by the petitioner or the petitioner's attorney or other authorized representative. The petition may be filed at any time in the case of registrations on the Supplemental Register or under the Act of 1920, or registrations under the Act of 1881 or the Act of 1905 which have not been published under section 12(c) of the Act, or on any ground specified in section 14>(3)< [(c)] or >(5)< [(e)] of the Act. In all other cases the petition and the required fee must e filed within five years from the date of registration of the mark under the Act or from the date of publication under section 12(c) of the Act. (c)(1) The petition must be accompanied by the required fee for each class in the registration for which cancellation is sought (see [ ] >2.6(a)(16)< [2.6(1) and 2.85(e)]). If the fees submitted are insufficient for a cancellation against all of the classes in the registration, and the particular class or classes against which the cancellation is filed are not specified, the Office will issue a written notice allowing petitioner until a set time in which to submit the required fees(s) (provided that the five-year period, if applicable, has not expired) or to specify the class or classes sought to be cancelled. If the required fee(s) is not submitted, or the specification made, within the time set in the notice, the cancellation will be presumed to be against the class or classes in ascending order, beginning with the lowest numbered class, and including the number of classes in the registration for which the fees submitted are sufficient to pay the fee due for each class. ***** 7. Section 2.117 is proposed to be amended by revising paragraphs (a) and (b) to read as follows: 2.117 Suspension of proceedings. (a) Whenever it shall come to the attention of the Trademark Trial and Appeal Board that >a party or< parties to a pending case are engaged in a civil action >or a Board proceeding< which may >have a bearing on< [be dispositive of] the case, proceedings before the Board may be suspended until termination of the civil action. (b) Whenever there is pending >before the Board both a motion to suspend and< [, at the time when the question of the suspension of proceedings is raised,] a motion which is potentially dispositive of the case, the >potentially dispositive< motion may be decided before the question of suspension is considered >regardless of the order in which the motions were filed<. ***** 8. Section 2.119 is proposed to be amended by revising paragraph (d) to read as follows: 2.119 Service and signing of papers. ***** (d) If a party to an inter partes proceeding is not domiciled in the United States and is not represented by an attorney or other authorized representative located in the United States, the party must designate by written document filed in the Patent and Trademark Office the name and address of a person resident in the United States on whom may be served notices or process in the proceeding. In such cases, official communications of the Patent and Trademark Office will be addressed to the domestic representative unless the proceeding is being prosecuted by an attorney at law or other qualified person duly authorized under 10.14(c) of this subchapter. The mere designation of a domestic representative does not authorize the person designated to prosecute the proceeding unless qualified under 10.14(a), or qualified under [paragraph (b) or (c) of] 10.14>(b)< and authorized under 2.17(b). ***** 9. Section 2.120 is proposed to be amended by redesignating current paragraphs (e) and (h) as (e)(1) and (h)(2), respectively; adding new paragraphs (e)(2), (h)(1), and (h)(3); and revising paragraphs (a), (d), and (g)(1) and redesignated paragraphs (e)(1) and (h)(2) to read as follows: 2.120 Discovery. (a) In general. >Wherever appropriate, the< [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 date>s< for the taking of discovery. >The discovery period will be set for a period of 180 days. Interrogatories, requests for production of documents and things, and requests for admission must be served in sufficient time that responses will fall due prior to the close of the discovery period. Discovery depositions must be noticed and taken prior to the close of the discovery period. Extensions of the discovery period will be granted only upon stipulation of the parties approved by the Board. The parties may stipulate to a shortening of the discovery period. Responses to interrogatories, requests for production of documents and things, and requests for admission must be served within 40 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 showing extraordinary circumstances granted by 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; 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 opening of discovery is governed by the Federal Rules of Civil Procedure.] ***** (d) Interrogatories; request for production. (1) The total number of written interrogatories which a party may serve upon another party pursuant to Rule 33 of the Federal Rules of Civil Procedure, in a proceeding, shall not exceed >25< [seventy-five], counting subparts, except [that the Trademark Trial and Appeal Board, in its discretion, may allow additional interrogatories upon motion therefor showing good cause, or] upon stipulation of the parties. [A motion for leave to serve additional interrogatories must be filed and granted prior to the service of the proposed additional interrogatories; and must be accompanied by a copy of the interrogatories, if any, which have already been served by the moving party, and by a copy of the interrogatories proposed to be served.] If a party upon which interrogatories have been served believes that the number of interrogatories served exceed>s< the limitation specified in this 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 interrogatories, serve a general objection on the ground of their excessive number. If the inquiring party, in turn, files a motion to compel discovery, the motion must be accompanied by a copy of the set(s) of interrogatories which together are said to exceed the limitation, and must otherwise comply with the requirements of paragraph (e) of this section. (2) >The total number of requests for production of documents and things which a party may serve upon another party pursuant to Rule 34 of the Federal Rules of Civil Procedure, in a proceeding, shall not exceed 15, counting subparts, except upon stipulation of the parties. If a party upon which requests for production of documents and things have been served believes that the number of requests served exceeds the limitation specified in this 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. If the inquiring party, in turn, files a motion to compeldiscovery, the motion must be accompanied by a copy of the set(s) of requests which together are said to exceed the limitation, and must otherwise comply with the requirements of paragraph (e) of this section. <The production of documents and things under the provisions of Rule 34 of the Federal Rules of Civil Procedure will be made at the place where the documents and things are usually kept, or where the parties agree, or where and in the manner which the Trademark Trial and Appeal Board, upon motion, orders. (e) Motion for an order to compel discovery. >(1)< If a party fails to designate a person pursuant to Rule 30(b)(6) or Rule 31(a) of the Federal Rules of Civil Procedure, or if a party or such designated person, or an officer, director or managing agent of a party fails to attend a deposition or fails to answer any question propounded in a discovery deposition, or any interrogatory, or fails to produce and permit the inspection and copying of any document or thing, the party seeking discovery may file a motion before the Trade mark Trial and Appeal Board for an order to compel a designation, or attendance at a deposition, or an answer, or production and an opportunity to inspect and copy. >The motion must be filed within 30 days after the close of the discovery period, as originally set or as reset.< The motion shall include a copy of the request for designation or of the relevant portion of the discovery deposition; or a copy of the interrogatory with any answer or objection that was made; or a copy of the request for production, any proffer of production or objection to production in response to the request, and a list and brief description of the documents or things that were not produced for inspection and the documents or things that were not produced for inspection and copying. The motion must be supported by a written statement from the moving party that such party or the attorney therefor has made a good faith effort, by conference or correspondence, to resolve with the other party or the attorney therefor the issues presented in the motion and has been unable to reach agreement. If issues raised in the motion are subsequently resolved by agreement of the parties, the moving party should inform the Board in writing of the issues in the motion which no longer require adjudication. >(2) When a party files a motion for an order to compel discovery, the case will be suspended by the Trademark Trial and Appeal 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, except as otherwise specified in the Board's suspension order. The filing of a motion to compel shall not toll the time for a party to respond to any outstanding discovery requests or to appear for any noticed discovery deposition.< ***** (g) Sanctions. (1) If a party fails to comply with an order of the Trademark Trial and Appeal Board relating to discovery, including a protective order, the Board may make any appropriate order, including any of the orders provided in Rule 37(b)(2) of the Federal Rules of Civil Procedure, except that the Board [does not have authority to] >will not< hold any person in contempt or [to] award any expenses to any party. The Board may impose against a party any of the sanctions provided by this subsection in the event that said party or any attorney, agent, or designated witness of that party fails to comply with a protective order made pursuant to Rule 26(c) of the Federal Rules of Civil Procedure. ***** (h) Request>s< for admission[s]. >(1)< [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.] >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. If a party upon which requests for admission have been served believes that the number of requests served exceeds the limitation specified in this 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. 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 this section. (2) Any < [A] 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. The motion< shall include a copy of the request for admission and any exhibits thereto and of the answer or objection. The motion must be supported by a written statement from the moving party that such party or the attorney therefor has made a good faith effort, by conference or correspondence, to resolve with the other party or the attorney therefor the issues presented in the motion and has been unable to reach agreement. If issues raised in the motion are subsequently resolved by agreement of the parties, the moving party should inform the Board in writing of the issues in the motion which no longer require adjudication. >(3) When a party files a motion to determine the sufficiency of an answer or objection to a request made by that party for an admission, the case will be suspended by the Trademark Trial and Appeal 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, except as otherwise specified in the Board's suspension order. 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.< ***** 10. Section 2.121 is proposed to be amended by revising paragraphs (a)(1), (c) and (d) to read as follows: 2.121 Assignment of times for taking testimony. (a)(1) The Trademark Trial and Appeal Board will issue a trial order assigning to each party the time for taking testimony. No testimony shall be taken except during the times assigned, unless by stipulation of the parties approved by the Board, or, upon motion, by order of the Board. Testimony periods may be rescheduled by stipulation of the parties approved by the Board, or upon motion >showing extraordinary circumstances< granted by the Board; >if such a motion is denied, the testimony periods will remain as set< [, or by order of the Board]. The resetting of the closing date for discovery will result in the rescheduling of the testimony periods without action by any party. [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.] ***** (c) A testimony period which is solely for rebuttal will be set for >30< [fifteen] days. All other testimony periods will be set for >60< [thirty] days. The periods may be extended by stipulation of the parties approved by the Trademark Trial and Appeal Board, or upon motion >showing extraordinary circumstances< granted by the Board; >if such a motion is denied, the testimony periods will remain as set< [, or by order of the Board]. (d) 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 presented in the form used in a trial order, signed by the parties, or a motion in said form signed by one party and including a statement that every other party has agreed thereto, and submitted >in a number of copies equal to the number of parties to the proceeding plus one copy for the Board< [in one original plus as many photocopies as there are parties], will, if approved, be so stamped, signed, and dated, and >a copy< [the copies] will be promptly returned to >each of< the parties. 11. Section 2.122 is proposed to be amended by revising paragraphs (b)(1) and (d)(1) to read as follows: 2.122 Matters in evidence. ***** (b) Application files. (1) The file of each application or registration specified in a >notice< [declaration] of interference, of each application or registration specified in the notice of a concurrent use registration proceeding, of the application against which a notice of opposition is filed, or of each registration against which a petition or counterclaim for cancellation is filed forms part of the record of the proceeding without any action by the parties and reference may be made to the file for any relevant and competent purpose. ***** (d) Registrations. (1) A registration of the opposer or petitioner pleaded in an opposition or petition to cancel will be received in evidence and made part of the record if the opposition or petition is accompanied by two copies of the registration prepared and issued by the Patent and Trademark Office showing both the current status of and current title to the registration. For the cost of a copy of a registration showing status and title, see > 2.6(b)(4)< [ 2.6(n)]. ***** 12. Section 2.123 is proposed to be amended by revising paragraphs (b) and (f) as follows: 2.123 Trial testimony in inter partes cases. ***** (b) Stipulations. If the parties so stipulate in writing, depositions may be taken before any person authorized to administer oaths, at any place, upon any notice, and in any manner, and when so taken may be used like other depositions. By >written< 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 parties may stipulate >in writing< what a particular witness would testify to if called, or the facts in the case of any party may be stipulated >in writing<. ***** (f) Certification and filing >of deposition< [by officer]. The officer shall annex to the deposition his certificate showing: (1) Due administration of the oath by the officer to the witness before the commencement of his deposition; (2) The name of the person by whom the deposition was taken down, and whether, if not taken down by the officer, it was taken down in his presence; (3) The presence or absence of the adverse party; (4) The place, day, and hour of commencing and taking the deposition; (5) The fact that the officer was not disqualified as specified in Rule 28 of the Federal Rules of Civil Procedure. If any of the foregoing requirements are waived, the certificate shall so state. The officer shall sign the certificate and affix thereto his seal of office, if he has such a seal. 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>. 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. 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 authenticated by the officer and transmitted >by the officer or the party taking the deposition, or its attorney or other authorized representative< in a separate package marked and addressed as provided in this section. ***** 13. Section 2.125 is proposed to be amended by revising paragraph (c) to read as follows: 2.125 Filing and service of testimony. ***** (c) One certified transcript and exhibits shall be filed [promptly] with the Trademark Trial and Appeal Board. Notice of such filing shall be served on each adverse party and a copy of each notice shall be filed with the Board. ***** 14. Section 2.127 is proposed to be amended by revising paragraphs (a), (b), (d), (e)(1) and (f) to read as follows: 2.127 Motions. (a) Every motion shall be made in writing, shall contain a 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< [A] brief in response to a motion shall be filed within >30< [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 showing extraordinary circumstances granted by the Board; if such a motion for an extension is denied, the time for responding to the motion remains as specified under this section< [order of the Board on motion for good cause]. >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. (b) Any request for reconsideration or modification of an order or decision issued on a motion must be filed within >one month< [thirty days] from the date thereof. A brief in response must be filed within >15< [fifteen] days from the date of service of the request. ***** (d) When any party files a motion to dismiss, or a motion for judgment on the pleadings, or a motion for summary judgment, or any other motion which is potentially dispositive of a proceeding, the case will be suspended by the Trademark Trial and Appeal 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 >except as otherwise specified in the Board's suspension order. The filing of a summary judgment motion shall not toll the time for the moving party to respond to any outstanding discovery requests or to appear for any noticed discovery deposition, but it shall toll the time for the nonmoving party to serve such responses or to appear for such deposition<. If the case is not disposed of as a result of the motion, proceedings will be resumed pursuant to an order of the Board when the motion is decided. (e)(1) >A motion for summary judgment may not be filed until notification of the proceeding has been sent to the parties by the Trademark Trial and Appeal Board.< A motion for summary judgment>, if filed,< should be filed prior to the commencement of the first testimony period, as originally set or as reset, and the Board, in its discretion, may deny as untimely any motion for summary judgment filed thereafter. >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. The time for filing a motion under Rule 56(f) will not be extended. 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; 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. A reply brief, if filed, shall be filed within 30 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 for summary judgment will be considered by the Board.< ***** (f) The Board [does not have authority to] >will not< hold any person in contempt, or [to] award attorneys' fees or other expenses to any party. 15. Section 2.134 is proposed to be amended by revising paragraph (a) to read as follows: 2.134 Surrender or voluntary cancellation of registration. (a) After the commencement of a cancellation proceeding, if the respondent applies for cancellation of the involved registration under section >7(e)< [7(d)] of the Act of 1946 without the written consent of every adverse party to the proceeding, judgment shall be entered against the respondent. The written consent of an adverse party may be signed by the adverse party or by the adverse party's attorney or other authorized representative. ***** 16. Section 2.146 is proposed to be amended by revising paragraph (e)(1) to read as follows: 2.146 Petitions to the Commissioner. ***** (e)(1) 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< [and] 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. Proof of service of the petition shall be made as provided by 2.119(a). The >potential opposer or< the applicant>, as the case may be,< 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, with proof of service as provided by 2.119(a). No further paper relating to the petition shall be filed. ***** Part 3--Assignment, Recording And Rights Of Assignee 17. The authority citation for Part 3 continues to read as follows: Authority: 15 U.S.C. 1123; 35 U.S.C. 6.17a.Section 3.41 is proposed to be revised to read as follows: 3.41 Recording fees. All requests to record documents must be accompanied by the appropriate fee. 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)< [ 2.6(q)] of this chapter for trademarks. May 30, 1997 BRUCE A. LEHMAN Assistant Secretary of Commerce and Commissioner of Patents and Trademarks