The TTAB to Change Discovery, Trial, and Service Procedures | Practical Law

The TTAB to Change Discovery, Trial, and Service Procedures | Practical Law

The Trademark Trial and Appeal Board (TTAB) has proposed an overhaul of the rules governing TTAB procedure that will affect all stages of TTAB opposition and cancellation proceedings. The TTAB will implement the new rules by the end of the calendar year, and is currently accepting comments before it finalizes the revisions. All attorneys practicing before the TTAB should know the proposed rules so that they may submit their concerns and anticipate how they will need to adjust their practices.

The TTAB to Change Discovery, Trial, and Service Procedures

Practical Law Legal Update w-001-8825 (Approx. 5 pages)

The TTAB to Change Discovery, Trial, and Service Procedures

by Practical Law Intellectual Property & Technology
Published on 19 Apr 2016 • USA (National/Federal)
The Trademark Trial and Appeal Board (TTAB) has proposed an overhaul of the rules governing TTAB procedure that will affect all stages of TTAB opposition and cancellation proceedings. The TTAB will implement the new rules by the end of the calendar year, and is currently accepting comments before it finalizes the revisions. All attorneys practicing before the TTAB should know the proposed rules so that they may submit their concerns and anticipate how they will need to adjust their practices.
On April 4, 2016, the Trademark Trial and Appeal Board (TTAB) published a Notice of Proposed Rulemaking in the Federal Register, proposing numerous substantial amendments to the Trademark Rules of Practice (Rules). The TTAB intends to implement the changes before the end of the calendar year (with a possible transition period for certain Rules), and intends to apply them to all prospective and pending cases.
The TTAB's aim with the proposed amendments is to simplify and streamline filing and service, discovery, and trial procedure by:
  • Establishing new TTAB practices and procedures.
  • Clarifying and codifying existing case law and TTAB practices.
The TTAB is actively soliciting feedback, and invites attorneys to submit comments regarding the proposed changes by June 3, 2016 to [email protected]. Set out below is a list of the more significant changes and clarifications that the TTAB has proposed.

Filing and Service

  • Parties must file all documents electronically through the Electronic System for Trademark Trials and Appeals (ESTTA) unless the TTAB grants a petition for exception based on technical problems or other extraordinary circumstances.
  • Returning to pre-2007 procedure, the challenging party no longer needs to serve the complaint on the defending party. The TTAB will notify the defending party by email with a link to the complaint.
  • Parties must serve all papers on adverse parties by email unless the parties stipulate otherwise. The TTAB will eliminate the five-day extension of response deadlines for service by mail.

Discovery

  • The Rules will incorporate the discovery "proportionality" principle set forth in the current Federal Rules of Civil Procedure.
  • Motions to compel initial disclosures are due within 30 days after the initial disclosure deadline.
  • The parties may only serve 75 document requests and 75 requests for admission (the 75 interrogatory limit will remain). Each party may serve one comprehensive request for admission asking the opposing party to:
    • admit the authenticity of all documents that it produced; or
    • specify which documents it cannot authenticate.
  • The interlocutory attorney may decide to participate in any discovery conference.
  • Discovery must be served early enough that responses are due by the close of discovery.
  • Parties must inform adverse parties when prospective witnesses outside the US will be present in the US.

Motions

  • Any motions to compel and summary judgment motions are due before the deadline for the plaintiff's pretrial disclosures.
  • All 15-day response deadlines on motions (deadlines for oppositions to motions other than summary judgment motions and all reply brief deadlines) are extended to 20 days from service of the preceding brief.

Evidence Submission and Trials

  • Parties may submit direct examination trial testimony by affidavit, subject to the adverse party's right to conduct a live cross-examination deposition at its own expense. Notice of election of cross-examination must be filed and served within 10 days of service of the affidavit and the cross-examination deposition must be completed within 20 days of service of the affidavit.
  • All notices of reliance must indicate generally the relevance of the evidence submitted to one or more issues in the proceeding.
  • Parties may submit an adverse party's documents by notice of reliance if the adverse party authenticated them in response to a request for admission.
  • Parties must submit testimony deposition transcripts in full-sized format with a word index.
  • All evidentiary objections may be set out in a separate appendix to the trial brief that will not count against the brief page limit.
  • Parties and their counsel will be permitted to attend live hearings remotely by video conference.
  • Notwithstanding the parties' confidentiality designations, the TTAB may treat as not confidential material that cannot reasonably be considered confidential.
Learning and adapting to comprehensive rule revisions such as those proposed by the TTAB can be a daunting challenge for practitioners. Practical Law will keep users apprised of the status of the amendments as the TTAB releases information. We offer many resources that provide information and forms for attorneys practicing before the TTAB, all of which will be updated to incorporate the revised Rules on their effective date. These include the following: