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Enhancements to Trademark Trial and Appeal Board
Proceedings
Guest blog
by Chief Administrative Trademark Judge Gerard F. Rogers
The
Trademark Trial and Appeal Board (TTAB) announced the culmination of an
in-depth outreach effort to stakeholders focused on enhancing the Board’s appeal
and trial processes. In a Notice of
Final Rule-Making (NFRM), published in the Federal Register on October 7, 2016,
the USPTO said new rule changes will benefit the public by providing more
clarity in the rules, flexibility for parties involved in Board proceedings,
and increased procedural efficiency. At the same time, the rules further a USPTO
strategic objective to increase end-to-end electronic processing of trademark
matters, which reduce costs to the USPTO and the public, and helps avoid errors
that may creep into records during manual entry of data contained in paper
filings.
The last
major set of TTAB rule changes took effect in 2007. Since then, there have been
case law developments, changes in the Federal Rules of Civil Procedure, and the
rollout of the USPTO’s Accelerated Case Resolution (ACR) process. Therefore, it
is an ideal time to update the rules to make the benefits of ACR available to
all parties, as well as to promote electronic filing and communication. The
rule changes, major provisions of which are summarized below, reflect
significant input from the Trademark Public Advisory Committee, individual
stakeholders, and professional associations, and have been well-received since
publication in the Federal Register.
One of the
most overarching rule changes involves the Board assuming responsibility for service
of the complaint filed to initiate an inter partes proceeding. This rule change
shifts responsibility for service of the complaint in an opposition or
cancellation proceeding from the plaintiff to the Board, in an effort to reduce
the responsibilities of litigants during the commencement of a proceeding.
Another
exciting change is the Board moving exclusively to use of electronic filings
and communication. In this new all-electronic environment, instead of mailing hard
copies of institution orders and complaints, the Board forwards an order by
email, with a link to both the proceeding file and the complaint, as displayed
in the Board’s electronic docketing system known as TTABVUE. The rule changes also
mandate that parties file documents through ESTTA, the Board’s electronic
filing system. That requirement results in cost-savings to the USPTO and to
private litigants, and will increase the efficiency with which the Board can
process matters. Finally, filings and papers are now required to be exchanged between
parties by email, with exceptions made for technical problems or extraordinary
circumstances; and to allow the parties flexibility, they may agree to
alternate methods of communication or exchange of documents and information
that work best in their particular circumstances.
Reflecting recent
amendments to the Federal Rules of Civil Procedure, new discovery provisions in
the rule changes help curtail abuse and reduce litigation expense for
stakeholders. The number of requests for production of documents and requests
for admission are now limited to 75, paralleling the current limitation on
interrogatories. To avoid disadvantaging parties that use requests for
admission to authenticate produced documents, the changes provide for one
comprehensive request for admission to the producing party to seek
authentication of identified documents or specification of those documents
which cannot be authenticated. This option facilitates introduction of produced
documents at trial by notice of reliance, rather than through painstaking
witness identification and testimony, thereby providing the parties more
flexibility during trial. Finally, the rule changes afford the parties
substantial flexibility to stipulate to various limitations on discovery in
terms of duration, number of requests, and the elimination of discovery
altogether.
Additionally,
the rule changes establish new deadlines in discovery, paving the way for another
significant change -- a requirement that motions to compel discovery or to
determine the sufficiency of responses to requests for admission be filed prior
to the deadline for plaintiff’s pretrial disclosures. These revisions help
parties avoid the expense and uncertainty that arise when discovery disputes
erupt on the eve of trial and ensure parties make pretrial disclosures and
engage in trial preparation only after all discovery issues have been resolved.
As with the timing of motions relating to discovery disputes, motions for
summary judgment must be filed prior to the deadline for plaintiff’s pretrial
disclosures. This avoids disruption of trial planning and preparation which can
occur by filing such motions late in the process.
ACR
procedures have proven particularly effective at streamlining trial
proceedings. These include agreements to limit discovery and to shorten trial
periods or the time between trial periods, and stipulations to certain facts or
to the admissibility of documents or other evidence. Accordingly, parties are still
able to enter into stipulations regarding proffers of testimony, but the rules
allow any party unilaterally to choose to present trial testimony by affidavit
or declaration, subject to the right of cross-examination by the adverse party
or parties.
Finally, the
rule changes include expanding the parties’ options through which evidence is
submitted during trial. Parties may now make of record, via notice of reliance,
pleaded registrations and registrations owned by any party by submitting a
current copy of information from the USPTO electronic database records showing
current status and title; and the rule changes codify this option. In addition,
parties may now also use the notice of reliance method for submitting internet
materials.
The rule
changes become effective January 14, 2017, and apply to all proceedings pending
at that time or begun thereafter. All employees at the Board, including our 243
information specialists and paralegals, our 245 attorneys, and our judges, have
been involved in identifying these improvements, and we strongly believe that
these changes help streamline our trial proceedings and avoid unnecessary
expense and complications for parties involved in our cases. We continue to welcome any feedback you have
on TTAB trial proceedings in order to increase clarity, efficiency, and
effectiveness of our processes.
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