Changes to the Trademark Trial and Appeal Board’s Rules of Procedure Take Effect January 14, 2017

Starting January 14, 2017 new rules for proceedings before the Trademark Trial and Appeal Board (the “Board”) will take effect. These changes will affect pending proceedings as well as those filed after January 14. It is important to be familiar with these changes as there are some significant alterations to the Board’s rules which may affect your litigation strategy in proceedings before the Board. We have outlined some of the most significant changes in this article.

Filing and early stage proceedings.

First, the new rules require all pleadings and other submissions to be filed electronically, using the Board’s ESTTA system. This includes motions for extensions of time to file oppositions. Paper filing will only be allowed if the ESTTA system incurs technical problems or there are other extenuating circumstances.
In keeping with the trend towards digital, service of all papers must be made by e-mail unless otherwise stipulated. Further, a plaintiff is no longer required to serve a copy of the complaint and provide proof of service. The Board’s automatically generated “notice of institution” will constitute service on the defendant. Additionally, the Board will no longer provide five extra days to respond to documents served through the mail.

Discovery.

The discovery process is subject to some of the most significant changes. First, it will no longer be permissible to serve discovery on an opposing party if the deadline to respond does not fall within the discovery cut-off date. Thus, all discovery requests must be served with enough time for the responding party to respond before the close of discovery. Next, requests for production, requests for admissions, and interrogatories are each limited to seventy-five. Therefore, while drafting discovery it will be more important than ever to make sure that requests are targeted and effective.
Finally, consistent with the recent amendments to the Federal Rules of Civil Procedure, discovery in Board proceedings will also be governed by a “proportionality” requirement. The scope of discovery under the Federal Rules—previously governed more or less by the “reasonably calculated to lead to the discovery of admissible evidence” standard that all litigators knew so well—was altered to reflect that a party “may obtain discovery regarding any nonprivileged matter that is relevant to any party’s claim or defense and proportional to the needs of the case[.]” Fed. R. Civ. P. 26(b)(1) (emphasis added). The proportionality analysis takes into consideration, among other things, the importance of the issues at stake in the action, the importance of the discovery in resolving those issues, and whether the burden or expense outweighs the likely benefit. This same concept of proportionality in discovery process and procedure will be implemented by the Board as part of the January rule changes.

Trial.
One of the most notable changes to trial procedure is that in addition to taking the testimony of witnesses by oral or written deposition, testimony in the form of written affidavits or declarations will be accepted. If testimony is submitted via written affidavits or declarations, a party will still be permitted to conduct cross examination in person if it chooses to do so. Alternatively, written cross examination is also acceptable.

Conclusion.
These are just a few of the major changes taking effect this month; but rest assured, our litigation team is on top of all of the rule changes and we are happy to answer any questions you may have at any time. If you are interested in reviewing any of these changes, the United States Patent and Trademark Office released various helpful documents; see below.

Overview of Rule Changes:
https://www.uspto.gov/sites/default/files/documents/2017Rulechangehighlights.pdf

Table of Changes
https://www.uspto.gov/sites/default/files/documents/Chart%20Summarizing%20Rule%20Changes%2012-9-16.pdf

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