(195) Department of Commerce
Patent and Trademark Office
37 CFR Part 2 and 3
970428100-7100-01
RIN 0651-AA87
Miscellaneous Changes
to Trademark Trial and Appeal Board Rules
Agency: Patent and Trademark Office, Commerce.
Action: Notice of Proposed Rulemaking.
Summary: The Patent and Trademark Office (PTO) proposes to amend its
rules governing practice before the Trademark Trial and Appeal Board
(Board) to expedite inter partes proceedings. These proposed changes
enlarge the time periods for discovery, testimony, and response to
motions, and concomitantly limit the circumstances in which extensions
may be obtained. In addition, they impose strict limitations on the
number of written discovery requests which one party may serve upon
another party in a proceeding. Other proposed inter partes rule
amendments clarify the rules, conform the rules to current practice,
simplify practice, and correct cross-references. Finally the PTO
proposes to amend 37 CFR 2.76(a), 2.76(g), and 2.76(h), which
affect practice in ex parte appeals to the Board, to conform these rules
to current practice.
Dates: Written comments must be received on or before August 4, 1997 to
ensure consideration. An oral hearing will not be conducted.
Addresses: Written comments may be sent by mail addressed to Assistant
Commissioner for Trademarks, Box TTAB--No Fee, 2900 Crystal Drive,
Arlington, Virginia 22202-3513, marked to the attention of Ellen J.
Seeherman. Written comments may also be sent by facsimile transmission
to (703) 308-9333, marked to the attention of Ellen J. Seeherman.
Written comments will be available for public inspection in Suite 900,
on the 9th Floor of the South Tower Building, 2900 Crystal Drive,
Arlington, Virginia 22202-3513.
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
This notice of proposed rulemaking is designed to improve practice
and expedite proceedings in inter partes cases before the Trademark
Trial and Appeal Board (Board). In addition, the proposed amendments
codify and clarify certain practices of the Board and correct certain
references to citations of the Trademark Act and the Code of Federal
Regulations.
The proposed amendments, and the reasons for the amendments, are
discussed below.
The Board's workload has increased dramatically in the last several
years because of a rapid growth in the number of inter partes and ex
parte proceedings filed with the Board. Along with this increase in the
number of proceedings, there has been a marked increase in the number of
motions and other papers filed in each inter partes case. It appears to
the Board that this proliferation of papers has been due, in large part,
to the fact that in recent years, many attorneys practicing before the
Board in inter partes cases have taken an increasingly aggressive
approach by filing every possible motion that may be filed and by
responding to every paper filed to the point of sur-reply and
sur-sur-reply briefs. It also appears that some of the papers filed are
part of a strategy to bury the adverse party with paper, so that it
becomes too expensive for that party to proceed with the case, and the
party is forced to settle or capitulate. Whatever the reason, in many
cases the number of papers filed goes far beyond what is reasonably
needed for a Board proceeding. The filing of these papers causes
needless work and expense for the parties and the Board. Moreover, the
rapid growth in the number of papers filed has caused substantial delays
in all phases of the Board's work, including the resolution of motions
and the final determination of proceedings.
A number of the rule amendments proposed in this notice, namely, the
proposed amendments to 2.120(a), 2.120(d)(1), 2.120(d)(2),
2.120(e), 2.120(h), 2.121(a)(1), 2.121(c), 2.127(a), 2.127(b), 2.127(d),
and 2.127(e)(1), are designed to address these problems by changing
certain Board practices relating to discovery, testimony periods, and
motions. In addition, 2.120(a) is proposed to be amended to clarify
Board discovery practice in the wake of the December 1, 1993 amendments
to the Federal Rules of Civil Procedure.
Other amendments proposed in this notice serve to clarify the rules,
conform the rules to current Board practice, simplify practice, and
correct certain cross-references in the rules. The rules affected by
these proposed amendments are 2.76(a), 2.76(g), 2.76(h), 2.85(e),
2.87(c), 2.101(d)(1), 2.102(d), 2.111(b), 2.111(c)(1), 2.117(a),
2.117(b), 2.119(d), 2.120(g)(1), 2.121(d), 2.122(b)(1), 2.122(d)(1),
2.123(b), 2.123(f), 2.125(c), 2.127(f), 2.134(a), and 2.146(e)(1).
Proposed Amendments Relating to Discovery
It is the experience of the Board that a large number of motions and
requests are filed in connection with discovery. Many of these filings
relate to repeated requests for extensions of time, specifically,
extensions of the discovery period and the time to respond to discovery
requests.
Moreover, at present, the Board sets the closing date for the taking
of discovery, with the date set being 90 days after the date of the
initial trial order. However, discovery in Board proceedings opens at
the times specified in Rules 30, 33, 34, and 36 of the Federal Rules of
Civil Procedure as they read prior to the December1, 1993 amendments to
those rules. See "Effect of December 1, 1993 Amendments to the Federal
Rules of Civil Procedure on Trademark Trial and Appeal Board Inter
Partes Proceedings," 1159 TMOG 14 (February 1, 1994). Thus,
interrogatories, requests for production of documents and things, and
requests for admission may be served upon the plaintiff after the
proceeding commences (i.e., after the notice of opposition or petition
for cancellation is filed in an opposition proceeding, and after the
mailing by the Board of the notice of institution in an interference or
concurrent use proceeding), and upon the defendant with or after service
of the complaint by the Board. Discovery depositions generally may be
taken by any party after commencement of the proceeding, except that the
Board's permission must be obtained first in certain specified
situations. Further, the Board still follows the practice embodied in
Rules 33(a), 34(b), and 36(a) of the Federal Rules of Civil Procedure,
as they read prior to the December 1, 1993 amendments, that a defendant
may serve responses to interrogatories, requests for production of
documents and things, and requests for admission either within 30 days
after service of a discovery request (35 days if service of the request
for discovery is made by first-class mail, "Express Mail," or overnight
courier--see 2.119(c)), or within 45 days after service of the
complaint upon it by the Board, whichever is later. These practices
relating to the opening of discovery and the time for the service of
discovery responses by the defendant are complicated, and unpopular with
practitioners.
In order to simplify the opening of discovery, and reduce the number
of motions to extend the discovery period and the time to respond to
discovery requests, it is proposed to amend 2.120(a) to provide that
the Board will specify the opening and closing dates for the taking of
discovery, and that the discovery period will be set for a period of 180
days. The section is also proposed to be amended to include a provision
that 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.
Because of the proposed enlargements of the discovery and response
periods, it is also proposed to limit the circumstances in which
extensions will be granted. Specifically, 2.120(a) is proposed to be
amended to provide that extensions of the discovery period will be
granted only upon stipulation of the parties approved by the Board,
while the time to respond to interrogatories, requests for production of
documents and things, and requests for admission may be extended only
upon stipulation of the parties or upon motion showing extraordinary
circumstances granted by the Board. (The Board, of course, retains its
inherent power to sua sponte reset, and thereby extend, the discovery
period and response times.) In addition, the section is proposed to be
amended to include a provision (now found, in somewhat different form,
in 2.121(a)(1)), that 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, and that "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 approved by the Board." The
quoted portion is somewhat different from its counterpart in present
2.121(a), but is consistent with the provisions of 2.121(a)(1) as
proposed to be amended. Because of the proposed amendment of 2.120(a)
to include provisions governing discovery response periods and
extensions thereof, it is believed that 2.120(a), rather than
2.121(a)(1), which governs the scheduling and rescheduling of testimony
periods, is the most logical place for the provision now proposed to be
moved.
The enlargement of the discovery period and of the time to respond to
discovery requests, and the concomitant limitations on the situations in
which extensions of these times will be granted, will reduce the number
of extension requests filed, reduce delays in the service of discovery
responses, and expedite proceedings before the Board.
Another proposed change to 2.120(a) clarifies Board discovery
practice in the wake of the December 1, 1993 amendments to the Federal
Rules of Civil Procedure. Section 2.116(a) provides that, except as
otherwise provided, and wherever applicable and appropriate, procedure
and practice in Board inter partes proceedings shall be governed by the
Federal Rules of Civil Procedure. Section 2.120(a) provides, in part,
that 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
2.120; and that the opening of discovery is governed by the Federal
Rules of Civil Procedure. Thus, where the Board has its own rule
concerning a particular matter of practice or procedure, that rule
governs; if there is no Board rule concerning the matter, the Federal
Rules of Civil Procedure apply, where applicable and appropriate.
The December 1, 1993 amendments to the Federal Rules of Civil
Procedure substantially changed discovery procedures in civil actions.
The amended rules included provisions which, inter alia, mandated
automatic disclosure, scheduling conferences, conferences to discuss
settlement and to develop a plan for discovery, and transmission to the
court of a written report outlining the discovery plan. Moreover, under
the amended Federal Rules, the commencement of discovery hinged upon
completion of the mandated discovery plan conference. The PTO concluded
that the application of these provisions in inter partes proceedings
before the Board would increase the complexity and cost of the
proceedings and be unduly burdensome to the parties and the Board.
Therefore, in a notice published in the Official Gazette, the
Commissioner stated that these provisions were not appropriate for, and
would not be applicable in, Board proceedings. See "Effect of December
1, 1993 Amendments to the Federal Rules of Civil Procedure on Trademark
Trial and Appeal Board Inter Partes Proceedings," 1159 TMOG 14 (February
1, 1994). The Commissioner also stated that the PTO would, in due
course, publish a notice of proposed rulemaking to amend, as might be
necessary, the trademark rules governing practice and procedure in inter
partes proceedings before the Board. Accordingly, 2.120(a) is
proposed to be amended to specify that the provisions of the Federal
Rules 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, do not apply to Board proceedings, and that the Board will specify
the opening and closing dates for the taking of discovery. In addition,
the first sentence of the section, which specifies that the provisions
of the Federal Rules of Civil Procedure shall apply in opposition,
cancellation, interference, and concurrent use registration proceedings,
except as otherwise provided in 2.120, is proposed to be amended to
include the prefatory words "Wherever appropriate." The proposed
amendment is consistent with an analogous provision in 2.116(a), and
makes it clear that even when there is no provision in 2.120 relating
to a particular discovery matter, the provisions of the Federal Rules of
Civil Procedure relating to that matter apply only if they are
appropriate for Board proceedings.
Another of the proposed amendments to 2.120(a) would require that
interrogatories, requests for production of documents and things, and
requests for admission be served in sufficient time for responses to
fall due prior to the close of the discovery period, and that discovery
depositions be noticed and taken prior to the close of the discovery
period. It is believed that the proposed 180-day discovery period will
allow more than sufficient time for the service of discovery requests to
be made early enough in the discovery period so that responses to such
requests will fall due prior to the close of discovery. Moreover, as
indicated hereafter, 2.120(e) is proposed to be amended to provide
that a motion to compel discovery must be filed within 30 days after the
close of the discovery period, as originally set or as reset. The
proposed requirement that discovery requests be served in sufficient
time for responses to fall due prior to the close of discovery will
enable the propounding party to file a motion to compel, if such a
motion is deemed necessary, within 30 days after the close of the
discovery period. Litigants should note that if they agree to an
extension of time to respond to discovery requests, such that the
responses would be due shortly before or after the due date for any
motion to compel, then they should also stipulate to reschedule the
closing date of the discovery period, if the propounding party wishes to
preserve its time to file a motion to compel.
The Board has observed that parties misuse the discovery process for
purposes of harassing their adversaries, resulting in numerous motions
to compel and motions for protective orders. Section 2.120(d) was
amended effective November 16, 1989, to restrict to 75 (counting
subparts) the total number of interrogatories a party may serve, in a
proceeding, upon another party. The final rule notice was published in
the Federal Register on August 22, 1989, at 54 FR 34886 and in the
Patent and Trademark Office Official Gazette of September 12, 1989, at
1106 TMOG 26. It is the Board's experience that, despite that
limitation, parties continue to serve interrogatories, as well as other
written discovery requests, which are irrelevant, unnecessary, and/or
harassing. In view thereof, and given the restricted scope of Board
proceedings, and the availability of the discovery deposition as an
alternate and/or additional discovery device, it is the Board's belief
that the total number of discovery requests which one party may serve
upon another party in a proceeding should be limited to 25
interrogatories (counting subparts), 15 requests for production of
documents and things (counting subparts), and 25 requests for admission
(counting subparts). Sections 2.120(d)(1), 2.120(d)(2), and 2.120(h) are
proposed to be amended to state such limitations. Moreover, because it
is believed that 25 interrogatories are an adequate number for a
proceeding before the Board, the motion procedure for obtaining leave to
serve interrogatories in excess of the limit set forth in 2.120(d)(1)
is proposed to be deleted. Similarly, no such procedure is proposed to
be provided for requests for production of documents and things and
requests for admission. The provisions proposed to be added to
2.120(d)(2) and 2.120(f), including provisions governing the action
which may be taken by a party served with discovery requests which it
believes to be excessive in number, parallel those of 2.120(d)(1), as
proposed to be amended. It is believed that the proposed limitations on
the number of interrogatories, document production requests, and
requests for admission that may be served will reduce the number of
motions to compel filed, since the parties presumably will use the more
limited number of discovery requests for only relevant and appropriate
inquiries, and not for purposes of harassment. A reduction in the number
of motions to compel filed will serve to expedite proceedings.
The first sentence of 2.120(h), which provides that requests for
admission shall be governed by Rule 36 of the Federal Rules of Civil
Procedure, except that the Board does not have authority to award any
expenses to any party, is proposed to be deleted. The sentence suggests
that the only provision in Federal Rule 36 which does not apply in Board
proceedings is that pertaining to the awarding of expenses. However,
there are also other provisions in Rule 36 which do not apply in Board
proceedings. For example, the provision of Rule 36(a), that without
leave of court or written stipulation, requests for admission may not be
served before the time specified in Rule 26(d) of the Federal Rules of
Civil Procedure, is not applicable in Board proceedings. See "Effect of
December 1, 1993 Amendments to the Federal Rules of Civil Procedure in
Trademark Trial and Appeal Board Inter Partes Proceedings," supra.
Moreover, 2.120(a), as proposed to be amended, specifies that
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 2.120. Further, 2.120(g)(1) and 2.127(f),
as proposed to be amended, provide that the Board will not hold any
person in contempt or award any expenses to any party. Accordingly, the
first sentence of 2.120(h) is proposed to be deleted because it is
redundant and confusing.
Section 2.120(h) is also proposed to be amended to provide that a
motion to test the sufficiency of an answer or objection to a request
for admission must be filed within 30 days after the close of the
discovery period, as originally set or as reset. In addition, the
section is proposed to be amended to specify that when a party files a
motion to test the sufficiency of an answer or objection to a request
for admission, 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, except as otherwise specified
in the Board's suspension order. These proposed provisions correspond to
similar provisions proposed to be added to 2.120(e), which governs
motions to compel discovery. It is the intention of the Board, when
setting trial dates in cases arising under these rules as proposed to be
amended, to schedule an interval of 60 days between the closing date of
the discovery period and the opening date of the first testimony period.
The motion to compel and the motion to test the sufficiency of an answer
or objection to a request for admission deal with pre-trial matters and
should, therefore, be filed and determined prior to trial. The proposed
provisions governing the time for filing these motions and the
suspension of proceedings pending the determination thereof, coupled
with the Board's intention to schedule an interval of 60 days between
the close of the discovery period and the opening of the first testimony
period, will provide for a more orderly administration of the proceeding
and allow parties more certainty in scheduling testimony. Moreover, the
proposed amendment to 2 120(a) to set the discovery period for 180
days, and to require that discovery requests be served in sufficient
time for responses to the requests to fall due prior to the close of the
discovery period, will enable the propounding party to file a motion to
compel or a motion to test the sufficiency of an answer or objection to
a request for admission, if such a motion is deemed necessary, within 30
days after the close of the discovery period.
Section 2.120(h) is proposed to be further amended to provide 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 deposition. The proposed provision corresponds to similar
provisions proposed to be added to 2.120(e), with respect to motions
to compel, and to 2.127(d), with respect to motions for summary
judgment, and is explained in greater detail in our discussion of the
proposed amendments to the latter rule.
Finally, because of the length and complexity of 2.120(h), as
proposed to be amended, the present paragraph is proposed to be
redesignated as (h)(2) and revised; the provisions governing the
proposed limitation on the number of requests for admission which may be
served by one party upon another are proposed to be included in a new
paragraph designated (h)(1); and the proposed provisions relating to the
suspension of proceedings when a motion to test the sufficiency of an
answer or objection to a request for admission is filed are proposed to
be included in a new paragraph designated (h)(3).
Section 2.120(e) is proposed to be amended to provide that a motion
to compel discovery must be filed within 30 days after the close of the
discovery period, as originally set or as reset; that when a party files
a motion to compel discovery, 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, except as
otherwise specified in the Board's suspension order; and that 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. These proposed provisions correspond to similar
provisions proposed to be added to 2.120(h). The latter proposed
provision also corresponds to a similar provision proposed to be added
to 2.127(d) and is explained in greater detail in our discussion of
the proposed amendments to that rule.
Proposed Amendments Relating to Testimony Periods
It has come to the attention of the Board that trial is sometimes
delayed because an adverse party feels compelled to stipulate to
reschedule or extend testimony periods, knowing that to oppose such a
request and await the Board's decision on the contested motion will
create a greater delay than if the party were to consent to the
rescheduling or extension. In order to remedy this problem, the third
sentences in 2.121(a)(1) and 2.121(c) are proposed to be amended to
provide that testimony periods may be rescheduled ( 2.121(a)(1)), or
extended ( 2.121(c)), only 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 is denied, the testimony periods
will remain as set. At the same time, 2.121(c) is proposed to be
amended to lengthen the testimony period for the plaintiff and defendant
to present their cases in chief from 30 to 60 days, and to lengthen the
period for the plaintiff to present evidence in rebuttal from 15 to 30
days. The enlargement of testimony periods should, in general, eliminate
the number of extension requests filed by parties and expedite the
disposition of proceedings. Moreover, the enlargement of the testimony
periods should lessen any inconvenience to the parties from the
elimination of the "good cause" standard for obtaining extensions of
time.
Those portions of 2.121(a)(1) and 2.121(c) which refer to the
rescheduling or extension of testimony periods "by order of the Board"
are proposed to be deleted to clarify that a party may not simply make a
motion that the Board order the resetting of testimony periods. That is,
parties may move to reschedule or extend testimony periods only upon
consent, or upon motion showing extraordinary circumstances. The Board
still retains its authority to sua sponte reschedule or extend testimony
periods.
As indicated above, under the heading "Proposed Amendments Relating
to Discovery," the last sentence of 2.121(a)(1), which now provides
that 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, and that 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, is
proposed to be moved to the end of 2.120(a), as proposed to be
amended. It is believed that 2.120(a), as proposed to be amended, is
the most logical place for this sentence. In addition, the latter part
of the sentence is proposed to be revised 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 revision
of the latter part of the sentence is consistent with the third sentence
of 2.121(a)(1), as proposed to be amended.
Proposed Amendments Relating to Motion Practice
Section 2.127(a) is proposed to be amended to clarify Board practice
with respect to the filing of reply briefs and additional papers in
support of or in opposition to motions. The rule as now written makes no
reference to such papers. As a result, parties often file reply briefs
on motions, sur-reply briefs, responses to sur-reply briefs, and motions
for leave to file, as well as motions to strike, such papers. It has
been the Board's experience that reply briefs may be helpful in deciding
a motion, but that additional papers generally consist of reargument.
Moreover, the filing of such additional papers often escalates as each
party wishes to have the last word. The result is needless expense to
the parties, additional work for the Board, and delays in rendering
decisions. Accordingly, the rule is proposed to be amended to provide
for the filing of a reply brief, if desired, within 15 days from the
date of service of the brief in response to the motion; and to specify
that the time for filing a reply brief will not be extended, and that
additional papers in support of or in opposition to a motion will be
given no consideration. The proposed time limit for the filing of a
reply brief on a motion applies to all types of motions except motions
for summary judgment. Section 2.127(e)(1), which governs the time for
filing a motion for summary judgment, is proposed to be amended, as
indicated hereafter, to allow 30 days for this purpose in the case of a
reply brief on a motion for summary judgment.
Section 2.127(a) is also proposed to be amended to enlarge the time
for responding to a motion from 15 to 30 days. The proposed time limit
applies to all types of motions except motions for summary judgment.
Section 2.127(e)(1) is proposed to be amended to allow 60 days for the
filing of a brief in response to a motion for summary judgment.
Concomitantly, 2.127(a) is proposed to be amended to provide that
extensions of time for filing a brief in opposition to a motion will be
granted only upon 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 remains as specified under this section." A
similar provision is proposed to be included in 2.127(e)(1) regarding
extensions of time for filing a brief in opposition to a motion for
summary judgment. It is believed that 30 days (or 60 days in the case of
a summary judgment motion) is a sufficient time to respond to a motion.
Moreover, this enlargement of the response time, coupled with the
requirement that extension requests be made with consent or show
extraordinary circumstances, and the accompanying provision leaving the
time for responding to a motion unchanged if a motion to extend is
denied, will reduce the number of extension requests filed, expedite the
disposition of proceedings, and prevent parties from using the delays
inherent in the filing and deciding of motions to enlarge their time to
respond to motions.
Section 2.127(a) is proposed to be further amended to impose a page
limit for briefs and reply briefs on motions, namely, 25 pages for
briefs in support of and in opposition to motions, and 10 pages for
reply briefs, and to specify form requirements for such briefs. It is
believed that the proposed page limitations are more than sufficient for
parties to adequately argue motions in proceedings before the Board.
Section 2.127(b) is proposed to be amended to change the
specification of the time period for filing a request for
reconsideration or modification of an order or decision on a motion from
"thirty days" to "one month." The proposed amendment conforms the time
period with that specified in 2.129(c), which governs requests for
reconsideration or modification of a decision after final hearing.
Certain modifications are proposed to be made to the rules governing
summary judgment motions. It appears that in some cases, parties that
have been served with discovery requests, and know that it is Board
policy to suspend proceedings once a summary judgment motion has been
filed, move for summary judgment in an effort to avoid having to make
timely response to the discovery requests. Accordingly, the PTO proposes
to amend 2.127(d), which concerns suspension of proceedings when a
potentially dispositive motion has been filed, to specify that 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 at a noticed discovery deposition, but that it shall toll the
time for the nonmoving party to respond to outstanding discovery
requests or to appear at a noticed deposition. The nonmoving party's
time to respond is proposed to be tolled because a party which files a
motion for summary judgment is, by its motion, asserting that it needs
no further evidence to demonstrate that it is entitled to judgment. The
proposed amendment will eliminate the noted abuse of the summary
judgment procedure. Moreover, it may also reduce the number of motions
for discovery filed pursuant to Rule 56(f) of the Federal Rules of Civil
Procedure because parties opposing motions for summary judgment will be
able to receive responses to outstanding discovery requests prior to the
time for responding to the summary judgment motion.
The first sentence of 2.127(d), which provides, in essence, that
when any party files a potentially dispositive motion, 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 thereto,
is proposed to be amended by adding to the end thereof the phrase
"except as otherwise specified in the Board's suspension order." The
proposed amendment clarifies the rule.
Section 2.127(e)(1), which governs the time for filing a motion for
summary judgment, is proposed to be amended to specify that a motion for
summary judgment may not be filed until notification of the proceeding
has been sent to the parties by the Board. This proposed amendment
codifies current Board practice, as set forth in Nabisco Brands Inc. v.
Keebler Co., 28 USPQ2d 1237 (TTAB 1993). In Board opposition and
cancellation proceedings, as under the Federal Rules, the proceeding
commences with the filing of the complaint, i.e., the notice of
opposition or the petition for cancellation. See 2.101(a) and
2.111(a). However, in Board proceedings, formal service of the complaint
upon the defendant is made by the Board, not by the plaintiff. Further,
the Board does not serve the complaint upon the defendant until after
the Board has first examined the complaint to determine whether it has
been filed in proper form, with the required fee, and, then, if so, has
(1) obtained the application or registration file which is the subject
of the proceeding, (2) set up a proceeding file with an assigned
proceeding number, and (3) entered information concerning the proceeding
in the electronic records of the PTO. Thus, there is a time gap between
the filing of a notice of opposition or petition for cancellation and
the issuance of the Board's action notifying the defendant of the filing
of the proceeding, notifying both parties of the institution of the
proceeding, and forwarding a copy of the complaint to defendant.
Although a plaintiff may send a courtesy copy of the complaint to the
defendant, the defendant does not know that the complaint has been filed
in proper form, and that the proceeding has been instituted by the
Board, unless and until it receives from the Board the notice of
institution along with a copy of the complaint. Accordingly, the Board
considers a motion for summary judgment filed prior to the issuance of
the notice of institution to be premature. Moreover, the filing of a
motion for summary judgment prior to the Board's formal institution of
the proceeding may cause administrative difficulties for the Board,
particularly where the Board has not yet assigned a proceeding number to
the case.
Section 2.127(e)(1) is proposed to be further amended to add new
provisions governing the time for filing papers in response to a motion
for summary judgment, as well as the time for filing a reply brief
thereon. Specifically, the section is proposed to be amended to provide
that a motion under Rule 56(f) of the Federal Rules of Civil Procedure
(that is, a motion by the nonmoving party for discovery necessary to
enable it to respond to the motion for summary judgment), if filed,
shall be filed within 30 days from the date of service of the motion for
summary judgment; that the time for filing a Rule 56(f) motion will not
be extended; that if no Rule 56(f) motion 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; that, if such a motion
for an extension is denied, the time for responding to the motion for
summary judgment will remain as specified in the section; that a reply
brief, if filed, shall be filed within 30 days from the date of service
of the brief in response to the motion; 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 for summary judgment will be considered by the
Board. With two exceptions, these proposed provisions parallel certain
of the provisions of 2.127(a), as proposed to be amended. The first
exception is the provision relating to a Rule 56(f) motion. No parallel
provision is proposed to be included in 2.127(a) because a Rule 56(f)
motion may be filed only in response to a motion for summary judgment,
and 2.127(a) contains provisions relating to the filing of motions in
general. The second exception is the length of time proposed to be
allowed for filing a brief in response to a motion for summary judgment,
and for filing a reply brief. These proposed times are 60 days and 30
days, respectively. In the case of other types of motions, the times
proposed in 2.127(a) are 30 days and 15 days. The additional time is
proposed to be allowed in the case of summary judgment motions because
the gathering of evidence to respond to such a motion, or to support a
reply brief, is time-consuming, and because the summary judgment motion
is potentially dispositive in nature. It is believed that 60 days is a
sufficient time to respond to a motion for summary judgment, and that
this enlargement of the response time, coupled with the requirement that
extension requests be made with consent or show extraordinary
circumstances, and the accompanying provision leaving the time for
responding to the summary judgment motion unchanged if a motion to
extend is denied, will reduce the number of extension requests filed,
and expedite the disposition of proceedings.
Corrections of Cross-References
Sections 2.101(d)(1), 2.111(c)(1), 2.122(d)(1) and 3.41, as now
written, all contain cross-references to subsections of 2.6.
Subsections of 2.6 were renumbered by a notice of final rulemaking
published in the Federal Register on December 24, 1991, at 56 FR 66670
(amended at 57 FR 38196, August 21, 1992) and in the Official Gazette on
December 24, 1991, at 1133 TMOG 61 (amended at 1141 TMOG 40, August 18,
1992). Accordingly, these sections are proposed to be amended to correct
the cross-references to subsections of 2.6.
Section 2.111(b) is proposed to be amended to correct
cross-references to subsections of Section 14 of the Trademark Act, 15
U.S.C. 1064. The subsections were renumbered by the Trademark Law
Revision Act of 1988 (Title 1 of Pub. L. 100-667, 102 Stat. 3935 (15
U.S.C. 1051)).
Section 2.119(d), which governs the appointment of domestic
representatives by foreign parties involved in inter partes proceedings
before the Board, provides, in pertinent part, that 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 and authorized under
2.17(b)." The section is proposed to be amended to delete the reference
to domestic representatives who are qualified under 10.14(c). As
indicated in 2.119(d), a domestic representative must be a person
"resident in the United States." Persons who are qualified under
10.14(c) are not residents of the United States and therefore cannot be
domestic representatives.
Section 2.134(a) is proposed to be amended to correct the
cross-reference to Section 7(d) of the Act of 1946. That section of the
Act was renumbered as "7(e)" by the Trademark Law Revision Act of 1988.
Other Proposed Amendments
Section 2.76(a) now provides, in pertinent part, that an application
under 1(b) of the Act (i.e., an intent-to-use application) may be
amended to allege use of the mark in commerce under 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 period after issuance of a final action; and that
thereafter, an allegation of use may be submitted only as a statement of
use after issuance of a notice of allowance. The section is proposed to
be amended to eliminate the time limit for filing an amendment to allege
use after issuance of a final action.
The purpose of the time limit for filing an amendment to allege use
after issuance of a final action was to avoid the submission of
extraneous papers which would disrupt the appeal process. However, the
time limit had a detrimental effect not foreseen by the PTO. In many
instances, where an intent-to-use application was on appeal from a final
refusal on the ground of mere descriptiveness, for example, and no
acceptable amendment to allege use had yet been filed, the owner of the
application would seek, after the expiration of the six-month period
following issuance of the final refusal, to overcome the refusal to
register by amending its application to the Supplemental Register.
However, an intent-to-use application cannot be amended to the
Supplemental Register until an acceptable amendment to allege use or a
statement of use has been filed. See 37 CFR 2.75(b). Thus, although
an amendment to the Supplemental Register might have obviated the
refusal of registration, such an amendment could not be approved because
the intent-to-use applicant was prohibited by the time limit of
2.76(a) from contemporaneously filing an amendment to allege use.
In order to remedy the situation, the Assistant Commissioner for
Trademarks, by notice published in the Official Gazette, waived the
portion of 2.76(a) which prohibited the filing of an amendment to
allege use more than six months after issuance of a final refusal. See
"Waiver of Trademark Rule 2.76(a)," 1156 TMOG 12 (November 2, 1993). The
proposed rule change merely incorporates in the rule the more liberal
practice set forth in the Official Gazette notice.
Similarly, 2.76(g), which concerns the correction of an amendment
to allege use which does not meet the minimum requirements for such an
amendment, and 2.76(h), which concerns withdrawal of an amendment to
allege use, are proposed to be amended to delete the "expiration of the
six-month response period after issuance of a final action" time limit.
Section 2.85(e) specifies the consequences for the payment of an
insufficient fee, with respect to an application or registration having
multiple classes, for certain types of filings, including a petition for
cancellation. The section is proposed to be amended to delete the
reference to an insufficient fee for a petition for cancellation,
because this situation is covered, in greater detail, by 2.111(c)(1).
Further, in view of this proposed amendment, 2.111(c)(1) is proposed
to be amended to delete the cross-reference to 2.85(e).
Section 2.87(c), which now provides, in pertinent part, that a
request to divide an application may be filed during an opposition, upon
motion granted by the Board, is proposed to be amended to also specify
that a request to divide may be filed during a concurrent use or an
interference proceeding, upon motion granted by the Board. The proposed
change corrects an oversight in the rule and codifies current Office
practice.
Section 2.102(d) now provides that a party filing a request for an
extension of time to oppose must submit an original plus two copies. The
section is proposed to be amended to eliminate the requirement for the
filing of the "original" and two copies, and substitute a requirement
that the request be submitted in triplicate. The Board has no need for
an original, and the proposed change codifies current Office practice.
Section 2.117(a), as now written, provides that, when parties to a
case pending before the Board are engaged in a civil action which may be
dispositive of the case, proceedings before the Board may be suspended
until termination of the civil action. The section is proposed to be
amended to codify the Board's current policy of suspending proceedings
whenever either or both of the parties are involved in a civil action or
Board proceeding which may have a bearing on the proceeding.
Section 2.117(b) now provides that when there is pending, at the time
when the question of suspension of proceedings is raised, a motion which
is potentially dispositive of the case, the motion may be decided before
the question of suspension is considered. The section is proposed to be
amended to clarify that the Board may decide the potentially dispositive
motion before the question of suspension is considered, regardless of
the order in which they were raised. The proposed change codifies
current Office practice.
Section 2.120(g)(1), which governs the imposition of sanctions when a
party fails to comply with an order of the Board relating to discovery,
now includes the phrase "the Board does not have authority to hold any
person in contempt or to award any expenses to any party." The phrase is
proposed to be amended to read "the Board will not hold any person in
contempt or award any expenses to any party." The Board has long taken
the position that it does not have authority to award expenses or
attorney fees. See MacMillan Bloedel Ltd. v. Arrow-M Corp., 203 USPQ
952, 954 (TTAB 1979); Fisons Ltd. v. Capability Brown Ltd., 209 USPQ
167, 171 (TTAB 1980); Anheuser-Busch, Inc. v. Major Mud & Chemical Co.,
221 USPQ 1191, 1195 n. 9 (TTAB 1984); Luehrmann v. Kwik Kopy Corp., 2
USPQ2d 1303, 1305 n.4 (TTAB 1987); Fort Howard Paper Co. v. G.V. Gambina
Inc., 4 USPQ2d 1552, 1554 (TTAB 1987); Nabisco Brands Inc. v. Keebler
Co., 28 USPQ2d 1237, 1238 (TTAB 1993). Cf. Driscoll v. Cebalo, 5 USPQ2d
1477, 1481 (Bd. Pat. Int. 1982), aff'd in part, rev'd in part, 731 F.2d
878, 221 USPQ 745 (Fed. Cir. 1984); Clevenger v. Martin, 1 USPQ2d 1793,
1797 (Bd. Pat. App. & Int. 1986). However, in 1995 the PTO, by final
rule notice published in the Federal Register of March 17, 1995, at 60
FR 14488, and in the Official Gazette of April 11, 1995, at 1173 TMOG
36, amended Patent Rule 1.616, 37 CFR 1.616, which concerns the
imposition of sanctions in proceedings before the Board of Patent
Appeals and Interferences (Patent Board), to provide for the imposition
of a sanction in the form of compensatory expenses and/or compensatory
attorney fees. 37 CFR 1.616(a)(5) and 1.616(b). The notice of final
rulemaking acknowledged the foregoing decisions but concluded, based on
a detailed analysis of the Commissioner's authority to issue regulations
imposing sanctions, that the Commissioner has the authority to
promulgate a rule authorizing imposition of compensatory monetary
sanctions. It is believed that the adoption of a rule authorizing the
Board to impose a sanction in the form of compensatory expenses and/or
compensatory attorney fees would result in an increase in the number of
papers and motions filed in proceedings before the Board. In view
thereof, and in order to harmonize 2.120(g)(1) with 1.616,
2.120(g)(1) is proposed to be amended to substitute a statement that the
Board "will not" hold any person in contempt or award any expenses to
any party, for the statement that the Board "does not have authority" to
hold any person in contempt or award any expenses to any party. Section
2.127(f), which now states in pertinent part 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 in the
same manner.
Section 2.121(d), which now requires that a stipulation or consented
motion for the rescheduling of testimony periods or of the closing date
for discovery be submitted in one original and as many photocopies as
there are parties, is proposed to be amended to eliminate the
requirement that parties file the "original" as well as copies of
stipulations and consented motions. Instead, the proposed rule requires
that the stipulation or consented motion be submitted in a number of
copies equal to the number of parties to the proceeding plus one copy
for the Board. The Board has no need for an original, and the proposed
change codifies current Office practice.
Section 2.122(b)(1), which now provides, in pertinent part, that the
file of each application or registration 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 to clarify the rule by
substituting the word "notice" for the word "declaration." A declaration
of an interference is issued by the Commissioner upon the granting of a
petition filed pursuant to 2.91. An interference proceeding declared
by the Commissioner does not commence until the Examining Attorney has
determined that all of the subject marks are registrable; all of the
marks have been published in the Official Gazette for opposition; and
the Board mails a "notice of interference" notifying the parties that
the interference proceeding is thereby instituted. In the interim
between the Commissioner's declaration of an interference and the
institution of the proceeding by the Board, some of the applications
mentioned in the declaration of interference may become abandoned for
one reason or another. When the Board institutes the proceeding, it is
only the surviving applications which are specified in the notice of
interference, and it is only those application files which form part of
the record of the proceeding without any action by the parties.
Section 2.123(b) now provides, in pertinent part, that by agreement
of the parties, the testimony of any witness may be submitted in the
form of an affidavit by that witness, and that the parties may stipulate
what a particular witness would testify to if called, or may stipulate
the facts in the case. The section is proposed to be amended to clarify
that such agreement or stipulation must be in writing.
Section 2.123(f) now provides, in pertinent part, that the officer
certifying a testimony deposition shall, without delay, forward the
evidence, notices, and paper exhibits to the Commissioner of Patents and
Trademarks. This section is proposed to be amended to state that either
the officer or the party taking the testimony deposition, or its
attorney or other authorized representative, should forward this
material to the Commissioner. The proposed amendment makes it clear that
once the officer has certified the deposition, sealed the evidence in an
envelope or package, and inscribed thereon a certificate giving the
number and title of the case, the name of each witness, and the date of
sealing, either the officer or the party taking the deposition, or its
attorney or other authorized representative, may file the deposition.
That is, if the officer sends the envelope or package to the party
taking the deposition, or to its attorney or other authorized
representative, the party, or its attorney or other authorized
representative, need not return the envelope or package to the officer
for filing with the PTO, but rather may send it directly to the PTO.
Concomitant with this proposed amendment, the title of 123(f), which
now reads "Certification and filing by officer," is proposed to be
amended to read "Certification and filing of deposition."
Section 2.123(f) is proposed to be further amended to eliminate the
present requirement that the material be forwarded to the Commissioner
of Patents and Trademarks "without delay." The proposed amendment
conforms the section to current Board practice. While the Board prefers
that testimony depositions be submitted promptly, and such depositions
are normally filed with the Board at the same time that they are served
on the adverse party or parties to the proceeding, it is Board practice
to accept transcripts of testimony depositions at any time prior to the
rendering of a final decision on the case. The proposed amendment does
not affect the requirement of 2.125(a) that one copy of the testimony
transcript, together with copies of documentary exhibits and duplicates
or photographs of physical exhibits, be served on each adverse party
within thirty days after completion of the taking of that testimony.
Similarly, 2.125(c), which now provides that certified transcripts
of testimony depositions, and exhibits thereto, are to be filed promptly
with the Board, is proposed to be amended to delete the requirement for
prompt filing with the Board. The proposed amendment conforms the
section to current Board practice.
Section 2.127(f) now provides, in part, that the Board "does not have
authority" to hold any person in contempt, or to award attorneys' fees
or other expenses to any party. The rule is proposed to be amended to
provide instead that the Board "will not" hold any person in contempt,
or award attorneys' fees or other expenses to any party. This proposed
provision corresponds to a similar provision in 2.120(g)(1), as
proposed to be amended, and is explained in more detail in our
discussion of 2.120(g)(1) above, under this same heading.
Section 2.146(e)(1), as now written, provides for the filing of a
petition to the Commissioner from the denial of a request for an
extension of time to file a notice of opposition. This section is
proposed to be amended to provide also that an applicant may petition
the Commissioner from a decision granting such a request. The proposed
amendment codifies current practice and clarifies the rule.
Discussion of Specific Rules
Section 2.76(a) now provides, in relevant part, that an amendment to
allege use may be filed in an application under Section 1(b) 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." The
section is proposed to be amended to delete the phrase "or the date of
expiration of the six-month response period after issuance of a final
action." The proposed amendment reflects current practice, as stated in
"Waiver of Trademark Rule 2.76(a)," 1156 TMOG 12 (November 2, 1993).
Section 2.76(g) provides, in relevant part, that if an amendment to
allege use does not meet the minimum requirements specified in
2.76(e), 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; and that if an acceptable amendment
to correct the deficiency is not filed prior to approval of the mark for
publication or prior to expiration of the six-month response period
after issuance of a final action, the amendment will not be examined.
The section is proposed to be amended to delete the phrases "or the
six-month response period after issuance of a final action has not
expired" and "or prior to the expiration of the six-month response
period after issuance of a final action." The proposed amendment
reflects current practice.
Section 2.76(h), which provides that 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, is proposed to be amended to delete the phrase "or expiration of
the six-month response period after issuance of a final action." The
proposed amendment reflects current practice.
Section 2.85(e) pertains to the filing of certain specified papers,
including a petition for cancellation, with a fee which is insufficient
because multiple classes in an application or registration are involved.
The section is proposed to be amended to delete the references to a
petition for cancellation, because the matter of an insufficient fee for
a petition to cancel a registration having multiple classes is covered,
in greater detail, in 2.111(c)(1).
Section 2.87(c), which specifies that a request to divide an
application may be filed, inter alia, "during an opposition, upon motion
granted by the Trademark Trial and Appeal Board," is proposed to be
amended to insert, after the words "during an opposition," the
additional words "or concurrent use or interference proceeding." The
proposed amendment codifies current practice and corrects an oversight
in the rule.
Section 2.101(d)(1), which now includes a cross-reference to "
2.6(1)," is proposed to be amended to correct the cross-reference to "
2.6(a)(17)."
Section 2.102(d), which now provides that every request to extend the
time for filing a notice of opposition should be submitted "in
triplicate (original plus two copies)," is proposed to be amended to
delete the words "(original plus two copies)." The proposed amendment
eliminates the requirement to file "original" extension of time
requests. The Board has no need for the original.
Section 2.111(b), which now includes a cross-reference to "section
14(c) or (e)" of the Act, is proposed to be amended to correct the
cross-reference to "section 14(3) or (5). The subsections of Section 14
of the Act were renumbered by the Trademark Law Revision Act of 1988.
Section 2.111(c)(1), which now includes a cross-reference to "
2.6(1) and 2.85(e)," is proposed to be amended to correct the first
cross-reference to 2.6(a)(16) and to delete the cross-reference to
2.85(e).
Section 2.117(a) now provides that whenever it shall come to the
attention of the Board "that parties to a pending case are engaged in a
civil action which may be dispositive of the case, proceedings before
the Board may be suspended until termination of the civil action." The
section is proposed to be amended to insert the words "a party or"
before the word "parties," insert the words "or a Board proceeding"
after the first appearance of the words "civil action," and substitute
the words "have a bearing on" for the words "be dispositive of." The
proposed amendments clarify the rule and codify current practice.
Section 2.117(b) now provides that "Whenever there is pending, at the
time when the question of the suspension of proceedings is raised, a
motion which is potentially dispositive of the case, the motion may be
decided before the question of suspension is considered." The section is
proposed to be amended to read "Whenever there is pending before the
Board both a motion to suspend and 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." The proposed amendment
clarifies the rule and codifies current practice.
Section 2.119 (d) provides, in pertinent part, that 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 paragraphs (b) or (c) of 10.14(c) and
authorized under 2.17(b). The section is proposed to be amended to
delete the reference to 10.14(c). That section refers to
nonresidents, who cannot be domestic representatives. The proposed
amendment corrects an inadvertent error in the rule.
Section 2.120(a) now provides that 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 2.120; that the Board
will specify the closing date for the taking of discovery; and that the
opening of discovery is governed by the Federal Rules of Civil
Procedure. The section is proposed to be amended to (1) preface the
first sentence with the qualifying words "Wherever appropriate, the";
(2) include a new sentence stating that 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;
(3) state that the Board will specify the opening (as well as the
closing) date for the taking of discovery; (4) delete the provision that
the opening of discovery is governed by the Federal Rules of Civil
Procedure; (5) specify that the discovery period will be set for a
period of 180 days; (6) provide that 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, and that discovery depositions must be
noticed and taken prior to the close of the discovery period; (7)
specify that extensions of the discovery period will be granted only
upon stipulation of the parties approved by the Board, and that the
parties may stipulate to a shortening of the discovery period; (8)
provide that 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; (9) specify
that the time to respond may be extended upon stipulation of the
parties, or upon motion showing extraordinary circumstances approved by
the Board; and (10) provide that 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, and
that 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.
Section 2.120(d)(1) now provides, in pertinent part, that 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 75, counting subparts, except that the
Board, in its discretion, may allow additional interrogatories upon
motion showing good cause, or upon stipulation of the parties; and that
a motion for leave to file 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. The section is proposed to be
amended to lower the interrogatory number limit from 75, counting
subparts, to 25, counting subparts, and to delete the references to a
motion for leave to serve additional interrogatories. However, the
provision allowing additional interrogatories upon stipulation of the
parties is proposed to be retained.
Section 2.120(d)(2), which now includes only a provision concerning
the place for production of documents and things, is proposed to be
amended to limit the number of requests for production of documents and
things which a party may serve upon another party, in a proceeding, to
15, counting subparts. Specifically, the section is proposed to be
amended to include new sentences providing that 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; that 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 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 compel discovery, 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 2.120(e). These 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.
Section 2.120(e), which governs motions to compel discovery, is
proposed to be amended by redesignating the present paragraph as (e)(1),
and amending that paragraph to insert, after the first sentence, a new
sentence specifying that a motion to compel must be filed within 30 days
after the close of the discovery period, as originally set or as reset.
In addition, 2.120(e) is proposed to be amended to include a new
paragraph, designated (e)(2), specifying that when a party files a
motion for an order to compel discovery, 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, except
as otherwise specified in the Board's suspension letter. The proposed
new paragraph also provides that 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.
Section 2.120(g)(1), which now states, in pertinent part, that "the
Board does not have authority to hold any person in contempt or to award
any expenses to any party," is proposed to be amended to state that "the
Board will not hold any person in contempt or award any expenses to any
party."
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.
*****
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
[1199 TMOG 88]