On October 2, 2016, the U.S. Patent and Trademark Office (“USPTO”) published a Final rulemaking amendment that significantly amends the rules for practicing before the Trademark Trial and Appeal Board (the “Board”). The amended rules are effective January 14, 2017.
These amendments apply to both pending and new proceedings before the Board. Any transition issue for cases pending as of the effective date of the rules will be addressed by both the Board and the parties involved on a case-by-case basis.
The amendments are intended to provide more efficiency and clarity in inter partes and ex parte proceedings before the Board, and largely reflect technological changes and conform to parties’ current practices. To this end, many of the amendments concern electronic filing and email communications. In addition, the amended rules address the Board’s standard protective order, streamline discovery and pretrial procedure, and codify recent case law.
Board Will Serve Defendant in Inter Partes Proceedings
The amended rules shift the responsibility of serving defendants in inter partes proceedings from the plaintiff to the Board. Currently a party initiating an opposition or cancellation proceeding is required to mail a hard copy of its complaint to the defendant (or its attorney, if known). Under the amended rule, the TTAB will serve the complaint on the defendant in the form of a link to the Trademark Trial and Appeal Board Inquiry System (TTABVUE), which acts a repository for Board filings, in its notice of institution. This rule will reduce the burden on aggrieved parties on locating and serving defendants.
Electronic Service Between Parties Will Become the Default and End of “Five-Day Mailing Rule”
Email will be the default method of serving documents between parties. Currently when parties serve discovery requests or make motions with the Board, the default means of service is U.S. mail or courier service. Parties have the option to agree to electronic service, either in addition to or in lieu of serving documents by mail, and this is often done during the Rule 26(f) discovery conference. The new rule makes email the default means of service, although the USPTO contemplates that parties may agree to other methods of communication that would promote convenience and expediency, such as producing documents via an extranet or a cloud storage service.
The most significant effect of this amendment is that it puts an end to the “five-day mailing rule” that was previously added to all deadlines and intended to account for mail delays. The current rule allows parties to take advantage of this five-day extension rule, even when the parties have agreed to email service. Parties will have 20 days total to respond to a motion or discovery request (30 days for summary judgment).
Streamlining Discovery and Pretrial Procedure
The amendments include modifications to discovery practice before the Board to align more closely with the Federal Rules of Civil Procedure. The new rules provide parties more control over how they want to conduct discovery, including options for stipulating to shortened discovery periods, limitations on the scope, timing and sequence of discovery and even elimination of discovery altogether.
In addition, the amendments require parties to serve all discovery requests at least 20 days before the close of the discovery period. Currently parties can serve discovery until the very last day, resulting in discovery disputes lingering beyond the close of the discovery. The purpose of moving these deadlines up is to avoid the costs and uncertainty that arise when a discovery dispute erupts immediately before trial.
Finally, the number of requests for production of documents and requests for admission will be limited to 75 each, which is the same current limit for interrogatories. Parties may move for additional requests for good cause.
Efficient Trial Procedures
The amendments modify Board trial procedure by adding guidance on the accelerated case resolution (ACR) process and codifying recent decisions on the admission of internet evidence and trademark registrations. The new rules also include provisions that empower the Board to make judgments sua sponte in inter partes cases.
The ACR procedure has been available for some time; however, it is not popular among parties, perhaps because parties are not sure how amending the trial procedure could affect the outcome of their case. The amendments provide options for parties considering ACR, including suggestions about agreements that parties can make to limit discovery, shorten trial periods or the time between trial periods, and stipulations to facts or to the admissibility of documents or other evidence. Parties will also be allowed to unilaterally submit affidavits or declarations in lieu of testimony through written or oral deposition subject to the other sides’s right of oral cross examination of the witness.
In addition, the new rules permit parties, examining attorneys and Board judges to participate in hearings remotely through video conference. The parties will also be able to submit Internet materials under a notice of reliance.
Electronic Filing Will Become Mandatory
Under the USPTO’s new rules, all filings in a Board proceeding are required to be made electronically through the USPTO’s Electronic System for Trademark Trials and Appeals (ESTTA).
Electronic filing has been available since 2002, and currently more than 95% of all filings are submitted electronically. In rare circumstances that filing through ESTTA is not possible, the Board will accept paper filings to initiate an opposition or cancellation action provided the submitting party files a Petition to the Director demonstrating that ESTTA was unavailable due to technical problems or that extraordinary circumstances were present at the time of the attempted electronic filing.
No Paper Copies of Board Notices
Currently the Board notifies parties via email regarding new notices, orders and decisions in Board proceedings, and paper copies of Board communications are sent to the correspondent’s address of record. Under the new rules, all Board communications will be issued via email only.
The new amended rules contain a number of important changes in TTAB practice. For those engaged in TTAB proceedings, please familiarize yourself with the amendments since they will come into force on January 14, 2017.