Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 42242-42264 [E7-14702]

Agencies

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office

[Federal Register Volume 72, Number 147 (Wednesday, August 1, 2007)]
[Rules and Regulations]
[Pages 42242-42264]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: E7-14702]



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Part III





Department of Commerce





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Patent and Trademark Office



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37 CFR Part 2



 Miscellaneous Changes to Trademark Trial and Appeal Board Rules; Final 
Rule

Federal Register / Vol. 72, No. 147 / Wednesday, August 1, 2007 / 
Rules and Regulations

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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 2

[Docket No.: PTO-T-2005-014]
RIN 0651-AB56


Miscellaneous Changes to Trademark Trial and Appeal Board Rules

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The United States Patent and Trademark Office (Office) is 
amending the Trademark Rules of Practice (trademark rules) to require 
plaintiffs in Trademark Trial and Appeal Board (Board) inter partes 
proceedings to serve on defendants their complaints or claims; to 
utilize in Board inter partes proceedings a modified form of the 
disclosure practices included in the Federal Rules of Civil Procedure; 
and to delete the option of making submissions to the Board in CD-ROM 
form. In addition, certain amendments are being made to clarify rules, 
conform the rules to current practice, and correct typographical errors 
or deviations from standard terminology.

DATES: Effective Date: This rule is effective November 1, 2007 except 
the amendments for the following rules are effective August 31, 2007: 
2.105(a); 2.113(a), and removal of (e); 2.116(g); 2.118; 2.119(b)(6); 
2.120(d)(1); 2.122(d)(1); 2.126(a)(6), removal of (b) and redesignation 
of (c) and (d) as (b) and (c); 2.127(a) and (c); 2.129(a); 2.133(a) and 
(b); 2.142(e)(1); 2.173(a); and 2.176.
    Applicability to pending cases: The amendment to rule 2.116(g), 
which makes the Board standard protective order applicable in all inter 
partes cases applies to all cases pending before the Board as of the 
effective date of that amendment, except for cases in which the Board's 
standard protective order, or some other protective order, has already 
been applied or approved by the Board. The following amendments also 
apply to all cases pending before the Board as of their effective date: 
2.105(a); 2.113(a), and removal of (e); 2.118; 2.119(b)(6); 
2.120(d)(1); 2.126(a)(6), removal of (b) and redesignation of (c) and 
(d) as (b) and (c); 2.127(a) and (c); 2.133(a) and (b); 2.173(a); and 
2.176. All other amendments to the rules apply in cases commenced on or 
after the effective dates of the respective amendments.

FOR FURTHER INFORMATION CONTACT: Gerard F. Rogers, Trademark Trial and 
Appeal Board, by telephone at (571) 272-4299, by mail addressed to 
Trademark Trial and Appeal Board, P.O. Box 1451, Alexandria, VA, 22313-
1451, attention Gerard F. Rogers, or by facsimile to (571) 273-0059, 
marked to the attention of Gerard F. Rogers.
    Information may also be obtained via the Federal eRulemaking 
Portal. See the Federal eRulemaking Portal Web site (https://
www.regulations.gov) for the full text of the notice of proposed rule 
making that preceded this final rule, and the full text of comments 
received in response to the notice of proposed rule making.

SUPPLEMENTARY INFORMATION: The amended rules will increase the 
efficiency of the processes for commencing inter partes cases, and take 
account of the Board's deployment in recent years of electronic filing 
options and the increased availability and use of facsimile and e-mail 
as methods of communication between parties involved in inter partes 
cases. Also, the amended rules will increase the efficiency by which 
discovery and pretrial information is exchanged between parties to 
inter partes cases, by adopting a modified form of the disclosure 
practice that is uniformly followed in the federal district courts. 
These practices have been found in the courts to enhance settlement 
prospects and to lead to earlier settlement of cases; and for cases 
that do not settle, disclosure has been found to promote greater 
exchange of information, leading to increased procedural fairness and a 
greater likelihood that cases eventually determined on their merits are 
determined on a fairly created record. The amendments also include 
minor modifications necessary to make corrections or updates to certain 
rules and conform those rules to current practice.
    As of November 1, 2007, the following notice originally published 
in the USPTO Official Gazette on January 15, 1994, at 1159 TMOG 14, 
will no longer have effect: ``Notice Regarding Inapplicability of 
December 1, 1993 Changes in Federal Rules of Civil Procedure to TTAB 
Cases.''

I. Commencement of Proceedings

    Plaintiffs in Board proceedings include an opposer that files a 
notice of opposition against an application, a petitioner that files a 
petition for cancellation of a registration, and a concurrent use 
applicant whose concurrent use application sets forth details about the 
concurrent use applicant's claim of entitlement to a concurrent use 
registration. The former process by which a plaintiff in a Board 
proceeding filed notice of its complaint (or claim of right to a 
concurrent use registration) required the plaintiff to prepare as many 
copies of its complaint (or claim of right, i.e., concurrent use 
application) as there would be defendants in the action. The plaintiff 
would then file the requisite copies with the original, for subsequent 
forwarding by the Board to the defendant or defendants. Occasionally, 
before the Board could forward the copies to the defendant or 
defendants, the plaintiff would engage in additional correspondence 
with the Board, to provide the Board with updated correspondence 
address information the plaintiff had uncovered in its investigation of 
the adverse applications, registrations or marks, particularly in 
cancellation and concurrent use proceedings.
    Under the amended trademark rules, the initiation of a Board 
proceeding will be more efficient, because a plaintiff will serve 
copies directly on defendants. Use of a direct service approach 
recognizes that plaintiffs and defendants often are in contact before 
the plaintiff files its complaint or claim, and also recognizes that 
continuation of direct communication is vital both for promoting 
possible settlement of claims and for ensuring cooperation and 
procedural efficiency in the early stages of a proceeding.
    In recent years, the Board has deployed its ESTTA system, the 
Electronic System for Trademark Trials and Appeals, so that virtually 
all filings can be submitted electronically. In addition, more and more 
parties to Board proceedings are choosing to utilize fax or e-mail 
options for communicating with each other during an inter partes 
proceeding, either in lieu of using the mail or in combination with use 
of the mail.
    Under the amended trademark rules, an opposer or petitioner will 
file its complaint with the Board and is required to concurrently serve 
a copy of its complaint (notice of opposition or petition for 
cancellation), including any exhibits, on the owner of record, or when 
applicable the attorney or domestic representative designated in the 
defending application or registration, or in assignment records 
regarding the application or registration. A concurrent use applicant, 
however, will not have to serve copies of its application on any 
defending applicant, registrant or common law mark owner until 
notification of commencement of the concurrent use proceeding is issued 
by the Board, as discussed below.
    A plaintiff filing a notice of opposition must serve the owner of 
the application, according to Office records,

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or the attorney or domestic representative of the owner, if Office 
records designate that an attorney or domestic representative should 
receive correspondence for the owner of the application. A plaintiff 
filing a petition for cancellation must serve the owner of the 
registration, according to Office records, or the domestic 
representative of the owner, if Office records designate that a 
domestic representative should receive correspondence for the owner of 
the registration. A plaintiff filing a petition for cancellation is not 
expected to serve any attorney who may have represented the registrant 
before the Office in the prosecution of the application that resulted 
in issuance of the registration. (It is noted, however, that an 
attorney who was designated as a domestic representative during 
prosecution of an application is considered by the Office to continue 
in such role unless the appointment as domestic representative was 
revoked or a different domestic representative was subsequently 
appointed.) Whether a plaintiff should serve the owner directly, an 
attorney, or a domestic representative depends on what Office records 
provide as the correspondence address.
    To determine the correspondence address of record for an applicant 
or registrant, the plaintiff must check the Trademark Applications and 
Registrations Retrieval (TARR) system at the following web address: 
https://tarr.uspto.gov. (This system also is accessible via links from 
the Office's main Web site.) A plaintiff in an opposition or 
cancellation proceeding need only serve a copy of its notice of 
opposition or petition for cancellation to the correspondence address 
of record. The TARR display of information about a particular 
application or registration also includes an active link to assignment 
(including changes of name) information, if any exists in the Office's 
assignments database. For questions about correspondence address 
information in TARR, or about assignment records and determining the 
current owner of an application or registration, plaintiffs may contact 
the Board's customer service representatives at the main telephone 
number for the Board, listed on the Web site https://www.uspto.gov/main/
contacts.htm.
    A plaintiff in an opposition or cancellation is not required to 
serve a copy of its notice of opposition or petition for cancellation 
to any address other than the address listed in the TARR system. A 
plaintiff may wish to serve a courtesy copy on any party at any address 
the plaintiff may have reason to believe is more current than the 
address for that party listed in Office records. A plaintiff may wish 
to serve a courtesy copy on any party the plaintiff believes has an 
ownership interest in the relevant application or registration (e.g., 
an assignee or survivor of merger that had not recorded the document of 
transfer in the Office but was known to the plaintiff) at the 
correspondence address known to the plaintiff. It is generally in a 
plaintiff's interest to have the real party in interest apprised of the 
existence of the Board opposition or cancellation proceeding, so that 
any judgment eventually obtained will be binding on the correct party.
    As for service obligations of a concurrent use applicant (i.e., the 
plaintiff in a concurrent use proceeding), current practice requires 
such party to provide, for forwarding by the Board, as many copies of 
its application as are necessary to forward one to each person or 
entity listed in the concurrent use application as an exception to the 
concurrent use applicant's rights (i.e., excepted parties, the 
defendants in the concurrent use proceeding). Existing practice 
requires the concurrent use applicant to provide correspondence address 
information for excepted parties, even if the excepted parties do not 
own applications or registrations for marks listed in the TARR system. 
The amended trademark rules continue the requirement that the 
concurrent use applicant provide correspondence address information for 
excepted parties. The new rules dispense with the requirement that the 
concurrent use applicant file copies of its claim of right to a 
concurrent use registration, i.e., copies of its concurrent use 
application, for service by the Board on each excepted party. Under the 
amended trademark rules, the concurrent use applicant must promptly 
serve a copy of its application on each of the excepted parties 
following its receipt of a notice from the Board that the concurrent 
use proceeding has been instituted.
    All plaintiffs, including concurrent use applicants, bear the same 
service obligations. Specifically, they must serve copies by one of the 
methods provided in Trademark Rule 2.119, 37 CFR 2.119. Plaintiffs are 
neither required nor expected to follow the provisions of Rules 4, 4.1 
or 5 of the Federal Rules of Civil Procedure or, for defendants located 
outside the United States, any international convention regarding 
service of process. The parties may agree to use e-mail to communicate 
with each other and for forwarding of service copies. A plaintiff, 
however, may not serve its complaint or concurrent use application on a 
defendant by e-mail unless the defendant has agreed with the plaintiff 
to accept such service, notwithstanding that the defendant may have 
authorized the Office to communicate with it by e-mail.
    If a service copy is returned to plaintiff as undeliverable, 
plaintiff must notify the Board within ten (10) days of receipt of the 
returned service copy, or of any notice indicating that the service 
copy could not be delivered. Notification to the Board of failure of 
service may be provided by any means available for filing pleadings, 
motions, etc., keeping in mind that business with the Office is 
generally to be conducted in writing. Therefore, notice of failure of 
service may be provided, for example, by written notice mailed to the 
Board, or by appropriate filing through ESTTA. A plaintiff is under no 
obligation to search for current correspondence address information 
for, or investigate the whereabouts of, any defendant the plaintiff is 
unable to serve. However, notice to the Board of failure of service 
must include, if known, any new address information for the defendant 
whose service copy was returned to the plaintiff or reported to be 
undeliverable. For example, if a service copy returned by the United 
States Postal Service because of an expired forwarding order 
nonetheless lists the addressee's new address, then that must be 
reported to the Board. Similarly, if the plaintiff whose attempt at 
service has been unsuccessful discovers a new address for a defendant 
through independent means or voluntary investigation, then it must 
report the results of its investigation in its notice to the Board of 
the failure of service. In any case in which a plaintiff notifies the 
Board that a service copy sent to a defendant was returned or not 
delivered, including any case in which the notification includes a new 
address for the defendant discovered by or reported to the plaintiff, 
the Board will effect service.
    The Board will, after a notice of opposition or petition for 
cancellation is filed, or after a concurrent use application is 
published for opposition and found free of any opposition, send notice 
to all parties to the proceeding, noting the filing of the complaint, 
or publication of the concurrent use application. The notice will set 
the due date for an answer, and the discovery and trial schedule. 
Notification from the Board may be sent by e-mail when a party has 
provided an e-mail address. A party providing an e-mail address 
includes a plaintiff providing an e-mail address when filing any paper 
by ESTTA or with a complaint delivered by other means, an applicant 
that

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authorized the Office to communicate with it by e-mail when it filed 
its application, and any registrant whose registration file record 
includes such authorization. In any proceeding, an undelivered notice 
from the Board of the commencement of a proceeding may result in notice 
by publication in the Official Gazette, available via the Office's Web 
site (https://www.uspto.gov).

II. Adoption of a Disclosure Model

    In 1993, significant amendments to the Federal Rules of Civil 
Procedure (federal rules) implemented a system requiring parties 
litigating in the federal courts to, among other things, disclose 
certain information and/or documents and things without waiting for 
discovery requests, and to meet and confer to discuss settlement 
options and plans for disclosure and discovery if settlement were not 
possible (disclosure regime). Individual district courts were permitted 
to opt out of this disclosure regime.
    In 2000, the federal rules were further amended, eliminating the 
option for individual courts to opt out of the most significant changes 
of the disclosure regime.
    By notice issued January 15, 1994 (and published in the Official 
Gazette at 1159 TMOG 14), the Office announced the Board would not 
follow many of the 1993 changes to the federal rules, including the 
disclosure regime established by the amended rules. This notice 
specifically stated, ``the Office's Public Advisory Committee for 
Trademark Affairs has recommended that incorporation of the [1993] 
amendments [related to conferencing and disclosure] in Board practice 
be deferred until the Office can evaluate the effects of the amendments 
on civil actions.''
    The Office subsequently amended the Trademark Rules of Practice in 
1998. The original notice of amendment issued September 29, 1998 (and 
was published at 1214 TMOG 145); and a correction notice issued October 
20, 1998 (and was published at 1215 TMOG 64). While the Office did not 
adopt a disclosure regime for Board inter partes cases as an element of 
these amendments, the Office noted that the Board would continue to 
monitor recurring procedural issues in Board cases and that in the 
future the Office might propose and adopt additional changes to 
practice.
    In accordance with the recommendation of the Public Advisory 
Committee for Trademark Affairs, and to evaluate the effects of the 
1993 and 2000 amendments on civil actions, the Office reviewed an 
empirical study and numerous other available articles and reports on 
the subject of the disclosure regime followed in the courts. The 
empirical study reported that the new disclosure regime has been 
successful in the courts:

    In general, initial disclosure appears to be having its intended 
effects. Among those attorneys who believed there was an impact, the 
effects were most often of the type intended by the drafters of the 
1993 amendments. Far more attorneys reported that initial disclosure 
decreased litigation expense, time from filing to disposition, the 
amount of discovery, and the number of discovery disputes than said 
it increased them. At the same time, many more attorneys said 
initial disclosure increased overall procedural fairness, the 
fairness of the case outcome, and the prospects of settlement than 
said it decreased them.

    Thomas E. Willging, Donna Stienstra, John Shapard & Dean Miletich, 
An Empirical Study of Discovery and Disclosure Practice Under the 1993 
Federal Rule Amendments, 39 B.C.L. Rev. 525, 534-35 (May 1998).
    The Office concluded from its review of the empirical study and 
other materials that use of a modified disclosure regime in Board 
proceedings, will increase the possibility of parties settling a Board 
proceeding and doing so sooner. In addition, even if parties do not 
settle the case, disclosure will promote more efficient discovery and 
trial, reduce incidents of unfair surprise, and increase the likelihood 
of fair disposition of the parties' claims and defenses. In large part, 
disclosure will serve as a substitute for a certain amount of 
traditional discovery and will provide a more efficient means for 
exchange of information that otherwise would require the parties to 
serve traditional discovery requests and responses thereto.
    Following many consultations with the Trademark Public Advisory 
Committee (successor to the Public Advisory Committee for Trademark 
Affairs) or subcommittees thereof, the Office proposed adoption of a 
disclosure regime for Board inter partes proceedings, in a Notice of 
Proposed Rule Making (NPRM) at 71 Fed. Reg. 2498 (January 17, 2006). 
The NPRM and comments received in response thereto are available for 
viewing at the https://www.regulations.gov web portal.
    One subject related to the adoption of a disclosure regime and 
covered in the NPRM is the applicability of the Board's standard order 
for protecting confidential or otherwise sensitive information and 
documents. By notice published in the Office's Official Gazette (O.G.) 
on June 20, 2000 (1235 TMOG 70), the Office noted the Board's adoption 
of that standard order. The O.G. notice explained that the standard 
order was promulgated in response to many public requests for such an 
order and explained that the standard order could be adopted by parties 
as published or with modifications. The O.G. notice also noted that the 
Board could impose the order in appropriate cases. In fact, since 
publication of the O.G. notice, it has become quite routine for the 
Board to impose the order in any inter partes proceeding in which the 
efficient conduct of discovery is hampered by the parties' inability to 
agree on a protective order.
    In the disclosure regime established by this final rule, the 
Board's standard protective order is applicable in all cases. The 
Board's notice of the institution of a proceeding will advise parties 
that the standard protective order applies and that it is available on 
the Office's Web site or, by request made to the Board, in hard copy 
form. The applicability of this standard protective order does not make 
all submissions confidential. Parties must utilize its provisions to 
protect confidential information. Neither does the applicability of the 
standard order preclude a party, when appropriate, from moving for a 
protective order under applicable trademark or federal rules, when the 
standard order does not cover the extant circumstances or is viewed by 
the moving party as providing insufficient protection. As under current 
practice, parties are free to agree to modify the standard protective 
order. It should be routine for parties to discuss possible 
modification in the disclosure/discovery/settlement conference 
(discovery conference) that is a part of the disclosure regime 
established by this final rule. Absent a stipulation to vary the terms 
of the standard protective order, approved by the Board, or an order by 
the Board granting a party's motion to use an alternative order, the 
parties must abide by the standard order.

A. The Schedule for Cases Under the Disclosure Model

    The Board's notice of the commencement of the proceeding (commonly 
referred to as the institution order) will set forth disclosure, 
discovery and trial-related deadlines, as illustrated below.
    The institution order will set forth specific dates for the various 
phases in a case. Since each deadline or phase is measured from the 
date of the institution order, the parentheticals explain the total 
number of days, as

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measured from that date, until each deadline:
    Due date for an answer--40 days from the date of the institution 
order.
    (Institution date plus 40 days.)
    Deadline for a disclosure/discovery/settlement conference--30 days 
from the date the answer is due.
    (Institution date plus 70 days.)
    Discovery opens--30 days after the date the answer is due.
    (Institution date plus 70 days.)
    Deadline for making initial disclosures--30 days from the opening 
of the discovery period.
    (Institution date plus 100 days.)
    Deadline for disclosure of expert testimony--30 days prior to close 
of discovery.
    (Institution date plus 220 days.)
    Discovery closes--180 days from the opening date of the discovery 
period.
    (Institution date plus 250 days.)
    Deadline for plaintiff's pretrial disclosures--15 days prior to the 
opening of plaintiff's testimony period.
    (Institution date plus 295 days.)
    Plaintiff's 30-day testimony period--closes 90 days after the close 
of discovery.
    (Institution date plus 340 days.)
    Deadline for defendant's pretrial disclosures--15 days prior to the 
opening of defendant's testimony period.
    (Institution date plus 355 days.)
    Defendant's 30-day testimony period--closes 60 days after the close 
of plaintiff's testimony period.
    (Institution date plus 400 days.)
    Deadline for plaintiff's rebuttal pretrial disclosures--15 days 
prior to the opening of plaintiff's rebuttal testimony period.
    (Institution date plus 415 days.)
    Plaintiff's 15-day rebuttal testimony period--closes 45 days from 
close of defendant's testimony period.
    (Institution date plus 445 days.)
    Under this schedule, discovery typically will open after the 
discovery conference, unless the parties defer their discovery 
conference to the deadline date, in which case discovery will open 
concurrently with the conference.
    The deadline for making initial disclosures is similar to that of 
Federal Rule 26(a)(1), except that disclosure under the federal rule is 
measured from the actual date of, not the deadline for, the discovery 
conference. Because the Board approach measures the due date for 
disclosures from the opening of discovery, which typically will occur 
after the discovery conference, the Board approach typically will 
provide a longer period for making disclosures than is provided under 
the federal rule. This will accommodate the possibility of motions to 
suspend for settlement talks, which are quite common in Board 
proceedings. The Board anticipates that such motions may frequently 
result from settlement discussions begun during the required 
disclosure/discovery/settlement conference.
    The length of the discovery period is the same as under current 
Board practice, i.e., 180 days. Disclosures will be made no later than 
thirty (30) days into that period, and the parties will have another 
150 days for any necessary additional discovery. The trial schedule, 
with its sixty-day break between discovery and trial and thirty-day 
breaks between the respective testimony periods, is also the same as 
under current Board practice.
    Because disclosure is tied to claims and defenses, in general, a 
defendant's default or the filing of various pleading motions under 
Federal Rule 12 will effectively stay the parties' obligations to 
conference and, subsequently, make initial disclosures. An answer must 
be filed and issues related to the pleadings resolved before the 
parties can know the extent of claims and defenses and, therefore, be 
able to discuss the extent of their initial disclosure obligations, 
plans for discovery, and the possibility of settlement.
    The Board anticipates it will be liberal in granting extensions or 
suspensions of time to answer, when requested to accommodate settlement 
talks or submission of the dispute to an arbitrator or mediator. 
However, if a motion to extend or suspend for settlement talks, 
arbitration or mediation is not filed prior to answer, then the parties 
will have to proceed, after the answer is filed, to their discovery 
conference, one point of which is to discuss settlement. It is unlikely 
the Board will find good cause for a motion to extend or suspend for 
settlement if the motion is filed after answer but prior to the 
discovery conference, precisely because the discovery conference itself 
provides an opportunity to discuss settlement.
    The parties' discovery conference may be in person or by other 
means. A Board professional, i.e., an Interlocutory Attorney or an 
Administrative Trademark Judge, will participate in the conference upon 
the request of any party. If the parties propose to meet in person, 
participation by a Board professional will be by telephone, and be 
arranged by the parties. A request for the participation of a Board 
professional may only be made with or after the answer is filed but in 
no event later than ten (10) days prior to the deadline for conducting 
the discovery conference. The request may be made by phone or via 
ESTTA. If neither party requests participation of a Board professional 
in the discovery conference, the parties must meet on their own, in 
person or by other means, no later than the prescribed deadline, and 
the Board will operate on the assumption that the conference was held 
by the deadline. The parties do not have to file a disclosure/discovery 
plan with the Board, following their discovery conference, unless they 
are seeking leave by motion or stipulation to alter standard deadlines/
obligations, or unless they were directed to make a particular filing 
by a participating Board professional.
    There is no Federal Rule 16(b) scheduling conference/order. The 
Board's institution order will already have set a schedule for the 
case.
    Disclosure deadlines and obligations may be modified upon 
stipulation of the parties approved by the Board, or upon motion 
granted by the Board, or by order of the Board. If a stipulation or 
motion is denied, dates may remain as set. Because dates may remain as 
set if the Board denies a stipulation or motion to alter dates, it is 
in the interests of the parties to file stipulations or motions 
promptly after the conference.

B. The Interplay of Disclosure and Discovery

    A party may not seek discovery through traditional devices until 
after it has made its initial disclosures. A party may not move for 
summary judgment until after it has made its initial disclosures, 
except on grounds of claim or issue preclusion or lack of jurisdiction 
by the Board.
    Initial disclosure obligations should be easier to meet in Board 
cases than in civil actions. One reason is that the Board's 
jurisdiction is limited to determining the right of a party to obtain, 
or retain, a registration. Moreover, the extent of available claims and 
defenses that may be advanced is not nearly as broad as in the district 
courts. In addition, the Board recognizes the impact of other issues 
relatively unique to Board proceedings. For example, a high percentage 
of applications involved in oppositions are not based on use of the 
applied-for mark in commerce but, rather, on intent to use, on a 
foreign registration or on an international registration. Further, 
certain precepts that govern analysis of issues raised by claims or 
defenses in typical Board cases effectively limit the Board's focus. 
For example, in a case under Section 2(d) of the Trademark Act, 15 
U.S.C. 1052(d), the Board focuses only on goods or services recited in 
identifications, and on the

[[Page 42246]]

mark as registered or applied-for, irrespective of many actual 
marketplace issues.
    Federal Rule 26(a)(1) requires initial disclosures to obviate the 
need to use traditional discovery to obtain ``basic information'' about 
a party's claims or defenses. (``A major purpose of the [1993] revision 
is to accelerate the exchange of basic information about the case and 
to eliminate the paper work involved in requesting such information, 
and the rule should be applied in a manner to achieve those 
objectives.'' Fed. R. Civ. P. 26(a)(1) advisory committee's note, 1993 
amendments.) However, in Board cases, subsections (C) and (D) of 
Federal Rule 26(a)(1) are not relevant and will not apply. Further, in 
complying with subsections (A) and (B), the range of individuals with 
discoverable information that the disclosing party may use to support a 
claim or defense, and the number of documents, data compilations, and 
tangible things that a party may use to support a claim or defense, 
will be more limited than in district court cases, because of the more 
limited claims and defenses available in Board cases.
    Under Federal Rule 26(a)(1), a party is not obligated to disclose 
the name of every witness, document or thing that may have or contain 
discoverable information about its claim or defense, but merely the 
witnesses, documents and things having or containing discoverable 
``information that the disclosing party may use to support its claims 
or defenses.'' Further, initial disclosures focus on exchange of 
``basic information'' about witnesses and documents and do not 
substitute for taking comprehensive discovery, when necessary. (For 
reasons already noted in relation to initial disclosures, discovery 
also should be more limited in scope in Board proceedings than in 
district court cases.)
    The specificity of information parties will provide to comply with 
initial disclosure obligations is one of the issues that must be 
anticipated and discussed by the parties during their discovery 
conference. Further, although this final rule requires fewer, and less 
extensive, initial disclosures than those proposed by the NPRM, the 
parties are free to discuss the option of making more extensive 
disclosure than is required by the rule. For example, parties could 
choose to rely on specified, reciprocal disclosures in lieu of formal 
discovery, if they find such an approach more efficient and less 
costly. Similarly, parties could choose to forgo disclosures and agree 
to utilize only traditional discovery devices. (Either approach, as a 
deviation from the regime prescribed by this final rule, would be 
subject to Board approval.)
    To emphasize, initial disclosures are not intended to substitute 
for all discovery but, rather, to prompt routine disclosure of names of 
potential witnesses and basic information about documents and things 
that a party may use to support a claim or defense. Any adverse party 
is free to take discovery on subjects that will undermine a claim or 
defense.
    Written initial disclosures of facts known by witnesses, if 
provided by a party, for example, pursuant to an approved agreement to 
utilize more extensive disclosure than required by this final rule, may 
be used in support of or in opposition to a motion for summary judgment 
and may, at trial, be introduced by notice of reliance. Disclosed 
documents, if provided in lieu of descriptions of documents, may also 
be used to support or contest a motion for summary judgment but at 
trial they may be introduced by notice of reliance only if otherwise 
appropriate for such filing. In essence, initial written disclosures 
and initial disclosures of documents will be treated like responses to 
written discovery requests.

C. Expert Disclosure and Pretrial Disclosure

    A party's planned use of expert witnesses is largely governed by 
Federal Rule 26(a)(2). This rule governs testifying witnesses, not 
consulting experts who are not expected to testify.
    A plaintiff's plan to use any expert at trial must be disclosed no 
later than thirty (30) days prior to the close of discovery (i.e., 
ninety (90) days prior to the opening of plaintiff's testimony period). 
In any case in which a defendant plans to use an expert at trial 
irrespective of whether the plaintiff plans to do so, the defendant 
must also make its disclosure no later than thirty (30) days prior to 
the close of discovery. A party planning to use an expert solely to 
contradict or rebut an adverse party's expert must disclose such plans 
within thirty (30) days of the adverse party's prior disclosure (i.e., 
no later than close of discovery). Federal Rule 26(a)(2) also details 
what information and materials must be provided for a party to satisfy 
its disclosure obligation with respect to experts.
    Federal Rule 26(a)(2) allows the Board by order, or the parties by 
stipulation approved by the Board, to alter the sequence and timing of 
expert disclosures and the extent of the information or material that 
must be disclosed to satisfy the disclosure obligation. The parties are 
expected to engage in at least preliminary discussions on these 
subjects in their discovery conference. If any party retains an expert 
earlier in the Board proceeding than the applicable disclosure 
deadline, and any adverse party has inquired about experts through 
traditional discovery requests, the party retaining the expert may not 
rely on the disclosure deadline to delay revealing the expert to such 
adverse party.
    Any party disclosing plans to use an expert must notify the Board 
that it has made the required disclosure. The Board may then suspend 
proceedings to allow for discovery limited to experts. The suspension 
order may anticipate and also provide for discovery regarding any 
expert that may subsequently be retained for rebuttal purposes.
    The Office recognizes that there may be cases in which a party may 
not decide that it needs to present an expert witness at trial until 
after the deadline for expert disclosure. In such cases, disclosure 
must be made promptly when the expert is retained and a motion for 
leave to present testimony by the expert must be filed. Prompt 
disclosure after the deadline, however, does not necessarily ensure 
that the expert's testimony or evidence will be allowed into the record 
at trial. The Board will decide on a case-by-case basis how to handle a 
party's late identification of experts.
    Pretrial disclosures are governed by Federal Rule 26(a)(3), but the 
Board does not require pretrial disclosure of each document or other 
exhibit that a party plans to introduce at trial under Rule 
26(a)(3)(C). Further, because the trial schedule in a Board proceeding 
employs alternating testimony periods with gaps between them, the due 
dates for pretrial disclosure of witnesses expected to testify, or who 
may testify if the need arises, will be different for each party and 
will be specified in the Board's institution order. In essence, each 
party will make its pretrial disclosures under Federal Rules 
26(a)(3)(A) and 26(a)(3)(B) fifteen (15) days prior to its testimony 
period. Witnesses who are expected to or may testify by affidavit, in 
accordance with a written stipulation of the parties under Trademark 
Rule 2.123(b), 37 CFR 2.123(b), must be disclosed under Federal Rule 
26(a)(3)(A) along with disclosure of witnesses who are expected to or 
may testify by giving oral testimony.
    A party may object to improper or inadequate pretrial disclosures 
and may move to strike the testimony of a witness for lack of proper 
pretrial disclosure.

[[Page 42247]]

    Pretrial disclosure of plans to file notices of reliance is not 
required. The notice of reliance is a device for introduction of 
evidence that is unique to Board proceedings. There are established 
practices covering what can be introduced by notice of reliance, how it 
must be introduced, and for objecting to, or moving to strike, notices 
or material attached thereto. There is less opportunity for surprise or 
trial by ambush with notices of reliance because they are most often 
used to introduce discovery responses obtained from an adversary, 
printed publications in general circulation, or government documents 
generally available to all parties. A party planning to introduce an 
adverse party's discovery deposition, or part thereof, need not 
disclose such plans in order to comply with Federal Rule 26(a)(3)(B), 
which covers introduction of depositions in lieu of testimony under 
Federal Rule 32(a).

III. Removal of Option To Make Submissions on CD-ROM

    The Office has removed from Trademark Rule 2.126, 37 CFR 2.126, the 
option to file submissions in CD-ROM form. CD-ROMs have rarely been 
utilized by parties and have presented technical problems for the 
ESTTA/TTABIS systems.

IV. Clarification of Rule on Briefing of Motions

    The Office has amended Trademark Rule 2.127, 37 CFR 2.127, to 
clarify that a table of contents, index of cases, description of 
record, statement of the issues, recitation of facts, argument and 
summary all count against the limit of twenty-five (25) pages for a 
brief in support of a motion or in response to a motion and the limit 
of ten (10) pages for a reply brief.

Discussion of Specific Rules

    Title 37 of the Code of Federal Regulations, Part 2, is amended as 
follows:
[2.99(b) to (d)]
    Sections 2.99(b) to (d) currently set forth certain procedures for 
processing an application for registration as a lawful concurrent user, 
and for institution of a concurrent use proceeding at the Board. 
Sections 2.99(b), (c) and (d)(1) are amended to shift applicant's time 
to furnish copies of applicant's application, specimens and drawing 
until after the Board's notification of the proceeding; and to indicate 
that the Office may transmit the notification of proceedings via e-mail 
to any party that has provided an e-mail address.
[2.101(a), (b) and (d)]
    Section 2.101(a) currently sets forth that an opposition proceeding 
is commenced by filing a timely opposition, together with the required 
fee, in the Office. Section 2.101(a) is amended to specify that proof 
of service on applicant or its attorney or domestic representative of 
record in the USPTO, at the correspondence address of record in the 
USPTO, must be included with the notice of opposition.
    Section 2.101(b) currently sets forth who may file a notice of 
opposition and how the notice must be signed. Section 2.101(b) is 
amended to reflect the new requirement in Sec.  2.101(a) that an 
opposer include proof of service on the applicant with its notice of 
opposition. It also explains who must be served, specifies that the 
correspondence address of record in the USPTO is to be used, and 
specifies the steps opposer must take if the service copy of the notice 
of opposition is returned to opposer as undeliverable.
    Section 2.101(d)(4) currently sets forth that the filing date of an 
opposition is the date of its receipt in the Office with the required 
fee. Section 2.101(d)(4) is amended to add proof of service on 
applicant or its attorney or domestic representative of record in the 
USPTO, at the correspondence address of record in the USPTO, to the 
requirements for receiving a filing date for the notice of opposition; 
and to include a clarifying reference to filing by ``Express Mail'' 
under Sec.  2.198.
[2.105(a) and (c)]
    Section 2.105(a) currently sets forth that the Board will prepare a 
notification of the filing of a notice of opposition. Section 2.105(a) 
is amended to cross-reference Sec. Sec.  2.101 and 2.104 regarding 
proper form for and proper service of a notice of opposition, and to 
indicate that the Board may transmit the notification of proceedings 
via e-mail to any party that has provided an e-mail address.
    Section 2.105(c) currently sets forth that the Board will forward 
copies of the notice of opposition, exhibits and notification of the 
proceeding to an applicant. Section 2.105(c), in its introductory text, 
is amended to delete the reference to forwarding of copies of the 
notice of opposition and exhibits by the Board, and to reflect the 
amendments to Sec.  2.101 that now require the opposer to serve the 
notice of opposition and exhibits directly on the applicant, attorney 
or domestic representative.
 [2.111(a) to (c)]
    Section 2.111(a) currently sets forth that a cancellation 
proceeding is commenced by the filing of a timely petition for 
cancellation, together with the required fee, in the Office. Section 
2.111(a) is amended to specify that proof of service on the owner of 
the registration, or the owner's domestic representative of record in 
the USPTO, at the correspondence address of record in the USPTO, must 
be included with the petition for cancellation and fee.
    Section 2.111(b) currently sets forth who may file a petition for 
cancellation, how the petition must be signed and certain provisions 
regarding when a petition may be filed. Section 2.111(b) is amended to 
reflect the new requirement in Sec.  2.111(a) that the petitioner must 
include with its petition for cancellation proof of service on the 
owner of the registration, or domestic representative of the owner of 
record in the USPTO, to specify that the correspondence address of 
record in the USPTO is to be used, and to specify the steps petitioner 
must take if the service copy of the petition for cancellation is 
returned to petitioner as undeliverable.
    Section 2.111(c)(4) currently sets forth that the filing date of a 
petition for cancellation is the date of its receipt in the Office with 
the required fee. Section 2.111(c)(4) is amended to add proof of 
service on the owner of the registration, or domestic representative of 
record in the USPTO, at the correspondence address of record in the 
USPTO, to the requirements for receiving a filing date for the petition 
for cancellation; and to include a clarifying reference to filing by 
``Express Mail'' under Sec.  2.198.
[2.113(a) and (c)]
    Section 2.113(a) currently sets forth that the Board will prepare a 
notification of the filing of a petition for cancellation. Section 
2.113(a) is amended to cross-reference Sec. Sec.  2.111 and 2.112 
regarding proper form for and proper service of a petition for 
cancellation, and to indicate that the Board may transmit the 
notification of proceedings via e-mail to any party that has provided 
an e-mail address.
    Section 2.113(c) currently sets forth that the Board will forward 
copies of the petition for cancellation, exhibits and notification of 
the proceeding to the respondent (owner of the registration). Section 
2.113(c) is amended to delete the reference to forwarding of copies of 
the petition for cancellation and exhibits by the Board, and to reflect 
the amendments to Sec.  2.111 that now require the petitioner to serve 
the petition for cancellation and exhibits directly on the

[[Page 42248]]

owner of the registration, attorney or domestic representative.
[2.113(e)] [remove and reserve]
    Section 2.113(e) currently sets forth that the Board may allow a 
petitioner time to correct an informality in a defective petition for 
cancellation. Section 2.113 is amended to remove and reserve paragraph 
(e) to conform the rule to the existing practice whereby the Board no 
longer advises petitioners of defects in petitions for cancellation.
[2.116(g)] [add]
    Section 2.116 currently sets forth an explanation of the 
applicability of the Federal Rules of Civil Procedure in Board inter 
partes trademark proceedings, and equates particular terms used in the 
Federal Rules to terms used in inter partes trademark proceedings. 
Section 2.116 is amended to add new paragraph (g). Section 2.116(g) 
provides that the Board's standard protective order, available via the 
Office's Web site or upon request made to the Board, is applicable to 
all inter partes trademark proceedings, unless the parties agree to, 
and the Board approves, an alternative protective order, or unless a 
motion by a party to enter a specific protective order is granted by 
the Board.
[2.118]
    Section 2.118 currently sets forth that the Office may provide 
notice of a proceeding by publication in the Official Gazette, when a 
notice of a proceeding mailed to a registrant is returned to the Office 
as undeliverable. Section 2.118 is amended to also allow for notice by 
publication when a notice mailed to an applicant is returned as 
undeliverable.
[2.119(a) and (b)]
    Section 2.119(a) currently sets forth provisions regarding proof of 
service requirements for papers filed in Board inter partes trademark 
proceedings, but specifies that proof of service is not required for 
certain papers that the Office serves. Section 2.119(a) is amended by 
striking out the list of exceptions to reflect amendments to other 
sections that now require opposers, petitioners and concurrent use 
applicants to serve papers previously served by the Office. Section 
2.119(a) also is amended to change ``Patent and Trademark Office'' to 
``United States Patent and Trademark Office,'' and to make the singular 
``notice of appeal'' the plural ``notices of appeal.''
    Section 2.119(b) currently sets forth the permissible means for a 
party to serve a paper on an adverse party. Section 2.119(b) is amended 
to add paragraph (6), which will allow parties by agreement to meet 
their service obligations by utilizing fax or e-mail.
[2.120(a), (d) through (j)]
    Section 2.120(a) currently sets forth various general provisions 
regarding discovery in Board inter partes trademark proceedings, 
including the extent to which the Federal Rules of Civil Procedure are 
applicable, and the timing and sequence of the discovery period and 
various discovery activities. Section 2.120(a) is amended to separate 
it into three paragraphs. Paragraph (1) discusses the applicability of 
the federal rules provisions relating to a conference of the parties to 
discuss disclosures, discovery and possible settlement, and the 
requirements for automatic disclosures. Paragraph (1) also explains 
that the Board will, by order, specify the dates for conferencing, 
disclosures and discovery. Paragraph (2) provides more specific 
information regarding the deadlines or due dates for conferencing, 
disclosures, and discovery; and explains that the parties by 
stipulation approved by the Board, or a party by motion granted by the 
Board, may seek to reset various deadlines or due dates or to alter 
their disclosure obligations. Paragraph (3) provides that a party must 
make its initial disclosures prior to seeking discovery, provides a 
deadline for taking discovery depositions and for serving various types 
of discovery requests, and for serving responses to discovery requests, 
and provides that the parties by stipulation approved by the Board, or 
a party by motion granted by the Board, may seek to alter the 
obligation to make initial disclosures prior to seeking discovery or to 
reset the deadlines relating to discovery.
    Section 2.120(d)(1) currently sets forth the limit on the number of 
interrogatories a party may serve, means by which the parties or a 
party may seek leave to exceed the limit, and procedures for either 
objecting to interrogatories alleged to be in excess of the limit or 
seeking to compel responses. Section 2.120(d)(1) is amended to clarify 
that a motion or stipulation of the parties to allow interrogatories in 
excess of the limit requires approval of the Board.
    Section 2.120(e) currently sets forth various provisions regarding 
filing and required support for motions to compel. Section 2.120(e) is 
amended to make provisions regarding a motion to compel applicable to 
discovery and initial and expert disclosures.
    Section 2.120(f) currently sets forth various provisions by which a 
party from whom discovery is sought may seek a protective order from 
the Board. Section 2.120(f) is amended to make provisions regarding a 
motion for a protective order applicable to discovery requests and 
required initial disclosures.
    Section 2.120(g) currently sets forth provisions regarding how and 
when a party may move for entry of sanctions for failure of an adverse 
party to provide discovery or comply with an order of the Board 
relating to discovery. Section 2.120(g), in paragraph (1) is amended to 
make its provisions applicable to Board orders relating to disclosures 
and to provide a deadline for filing a motion for sanctions for a 
party's failure to participate in a discovery conference.
    Section 2.120(h)(2) currently sets forth provisions regarding 
motions to test the sufficiency of responses to requests for 
admissions. Section 2.120(h)(2) is amended to state that filing a 
motion to test the sufficiency of responses to requests for admissions 
shall not toll the time for a party to comply with disclosure 
obligations, to respond to outstanding discovery requests, or to appear 
for a noticed deposition.
    Section 2.120(i) currently sets forth provisions regarding the 
availability and use of telephone conferences and the possibility that 
parties may have to meet at the Board for a pretrial conference. 
Section 2.120(i) is amended to clarify language used in paragraph 
(i)(1), to conform titles used in paragraph (i)(2) to existing titles, 
and to specify that the existing provision through which the Board may 
require parties to attend a conference at the Board's offices can 
involve discovery or disclosure issues.
    Section 2.120(j) currently sets forth provisions governing the use 
of discovery depositions and discovery responses by the deposing or 
inquiring party. Section 2.120(j), in paragraphs (3) and (5) through 
(8), is amended to provide that written disclosures and disclosed 
documents shall be treated in essentially the same manner as 
information and documents obtained through discovery requests; and to 
remove a reference to past Board practice whereby filings related to 
discovery that should not have been filed with the Board were returned 
to the parties.
[2.121(a) and (d)]
    Section 2.121(a) currently sets forth the process by which the 
Board issues a trial order setting various deadlines, and provisions 
for resetting deadlines by stipulation or motion. Section 2.121(a) is 
amended to state that deadlines for pretrial disclosures will be

[[Page 42249]]

included in the Board's trial order, that provisions for resetting 
dates apply to pretrial disclosures and testimony period dates, and to 
delete (and reserve) paragraph 2.
    Section 2.121(d) currently sets forth how parties should file 
stipulations resetting testimony periods. Section 2.121(d) is amended 
to account for stipulations resetting pretrial disclosure deadlines and 
testimony periods.
[2.121(e)] [add]
    Section 2.121(e) is added to explain what is required of a party 
when it makes its pretrial disclosures.
[2.122(d)]
    Section 2.122(d), in paragraph (1), currently sets forth provisions 
whereby a party in position of opposer or petitioner may make its 
registration(s) of record with its pleading. Section 2.122(d), in 
paragraph (1), is amended to conform to existing practice by removing 
the requirement for a party in position of opposer or petitioner to 
file two copies when making a pleaded registration of record with its 
pleading, and to allow the party to rely on printouts from Office 
electronic database records establishing status and title of a 
registration.
[2.123(e)]
    Section 2.123(e) currently sets forth provisions regarding the 
examination of witnesses.
    Section 2.123(e), in paragraph (3), is amended to provide that a 
party may object to improper or inadequate pretrial disclosures and may 
move to strike the testimony of a witness for lack of proper pretrial 
disclosure.
[2.126(a)]
    Section 2.126(a) currently sets forth provisions regarding the 
filing of submissions on paper, and their related exhibits. Section 
2.126(a), in paragraph (6), is amended to reflect the removal of Sec.  
2.126(b).
[2.126(b)] [remove and reserve]
    Section 2.126(b) currently allows a party to make submissions on 
CD-ROM. This section is deleted and reserved.
[2.127(a), (c) and (e)]
    Section 2.127(a) currently sets forth provisions regarding the 
briefing of motions.
    Section 2.127(a) is amended to clarify certain provisions relating 
to briefing of motions and to conform them to existing practice.
    Section 2.127(c) is amended to conform titles used in the section 
to current titles and to correct a typographical error.
    Section 2.127(e) currently sets forth provisions regarding filing 
and briefing motions for summary judgment. Section 2.127(e) is amended 
to provide that a party generally may not file a motion for summary 
judgment before it has made its initial disclosures; and to provide 
that a party may submit written disclosures and disclosed documents 
when briefing a motion for summary judgment.
[2.129(a)]
    Section 2.129(a) is amended to conform titles used in the section 
to current titles.
[2.133(a) and (b)]
    Sections 2.133(a) and (b) currently set forth provisions regarding 
the amendment of an application or registration involved in an inter 
partes trademark proceeding. Sections 2.133(a) and (b) are amended to 
conform the sections to current Office practice.
[2.142(e)]
    Section 2.142(e) is amended to conform titles used in the section 
to current titles.
[2.173(a)]
    Section 2.173(a) currently sets forth provisions regarding 
amendment of a registration involved in an inter partes trademark 
proceeding. Section 2.173(a) is amended to conform the provisions in 
the section to current Office practice.
[2.176]
    Section 2.176 currently sets forth provisions regarding amendment 
of a registration involved in an inter partes trademark proceeding. 
Section 2.176 is amended to conform the provisions in the section to 
current Office practice.
    Response to comments: The Office published a Notice of Proposed 
Rule Making (NPRM or proposed rule) in the Federal Register at 71 FR 
2498 (Jan. 17, 2006), in the Official Gazette at 1303 TMOG 58 (February 
14, 2006), and posted the notice on the Office's Web site (https://
www.uspto.gov) and at https://www.regulations.gov. The comment period 
was originally set to close on March 20, 2006. Six comments requested 
only an extension of the comment period and/or a public hearing. 
Numerous others included specific comments but also requested an 
extended comment period and/or a public hearing. As a result of the 
many requests for an extension and/or hearing, the USPTO published a 
notice reopening the comment period until May 4, 2006, i.e., forty-five 
(45) days beyond the original deadline, in the Federal Register at 71 
FR 15097 (March 27, 2006), and posted that notice on the Office's Web 
site and at https://www.regulations.gov. All told, the Office received 
comments from the American Bar Association Section of Intellectual 
Property Law (ABA-IPL), American Intellectual Property Law Association 
(AIPLA), the Intellectual Property Owners Association (IPO), the 
International Trademark Association (INTA), the New York State Bar 
Association Intellectual Property Law Section (NYSBA-IPL), three 
businesses, eleven attorneys in their individual capacities, and eight 
law firms. In addition, ABA-IPL, AIPLA, IPO and INTA, while maintaining 
their separate comments, also submitted consensus views on some 
subjects of the proposed rules. A number of rule amendments suggested 
in the comments, though meritorious, cannot be adopted at this time 
because they are outside the scope of the present rule making. 
Virtually every proposal received at least some support. Many 
proposals, however, prompted either criticism or requests for 
clarification. Finally, many who provided comments also offered 
alternatives to promote the stated goals of the proposed rules. The 
comments and the Office's responses to the comments follow:
    Comments subject 1 (Service by Plaintiffs): Many comments addressed 
the Office's proposal to have plaintiffs serve on defendants copies of 
complaints or, in the case of a concurrent use applicant, its claim of 
right to a registration. Many comments stated no objection in principle 
to a service requirement, but sought clarification of the type of 
service that would be sufficient and argued that personal service 
should not be required. Most comments addressing service also sought 
clarification of whether a plaintiff would have any duty to investigate 
ownership of a mark, application, or registration, and argued that 
there should be no such duty beyond reference to Office records. Many 
also sought clarification of what was meant by the phrase 
``correspondence address of record.''
    Response: The Office is, in this final rule, proceeding with a 
requirement that plaintiffs in inter partes proceedings serve on 
defendants copies of complaints or claims of right to a concurrent use 
registration on defendants. In the affected rules and in the 
Supplementary Information portion of this notice, the Office has 
clarified the meaning of correspondence address of record. It further 
clarifies that a plaintiff has no duty to investigate other than to 
refer to Office records, that

[[Page 42250]]

personal service is not required, and that all that is required is 
service and proof of service pursuant to Sec.  2.119.
    Comments subject 2 (Service of Additional Copies by Plaintiffs): 
Many comments argued against the requirement in the proposed rules that 
a plaintiff serve additional copies of its complaint or claim of right 
to a concurrent use registration on parties the plaintiff might have 
reason to believe had an ownership interest in a mark, application, or 
registration, even if not shown by Office records to have such an 
interest. One comment suggested that a petitioner should serve a copy 
of its petition for cancellation on the attorney, if any, that 
prosecuted the application resulting in issuance of a registration; but 
most comments argued against such a practice as a burden on the 
attorney, who may no longer represent the client.
    Response: The Office recognizes that a plaintiff may conduct 
independent investigations prior to commencing a proceeding and may 
thereby discover an ownership interest in a party not reflected in 
Office records, or a more current address for a prospective defendant. 
The Office did not propose to require any investigation prior to 
commencement of a proceeding, but only recognized that such 
investigations do occur. The Office intended by this proposal only to 
enhance the prospects of having any real party in interest joined as a 
defendant and any subsequent judgment be binding on the real party in 
interest. The Office has withdrawn this proposal and retained only a 
requirement that the plaintiff serve the defendant or defendants 
revealed by reference to Office records, at the correspondence 
address(es) of record.
    Comments subject 3 (Informing the Board of Returned Service 
Copies): Several comments sought clarification of the proposed 
requirement that a plaintiff inform the Board of any return to the 
plaintiff of an undeliverable service copy of its complaint or claim of 
right to a concurrent use registration. In particular, these comments 
sought clarification of the plaintiff's obligations when the service 
copy is returned. One comment, focusing on the proposed requirement 
that the Board be notified ``within 10 days'' of a returned service 
copy, sought clarification as to the event that would start the count 
and also sought five additional days.
    Response: The Office is proceeding with the requirement and is 
providing the requested clarifications in the Supplementary Information 
section of this notice. There is no obligation on a plaintiff to 
investigate the failure of service; but if the returned service copy 
includes a new address for the defendant or if the plaintiff 
voluntarily investigates and uncovers a new address, then this 
information must be included in the report of the failure of service. 
There is no obligation on the plaintiff to serve a defendant at any new 
address. There are no specific obligations regarding how the plaintiff 
informs the Board that a service copy has been returned. The plaintiff 
can inform the Board in any manner that it might otherwise use to 
communicate with the Board, as specified in Sec. Sec.  2.126 and 2.191. 
The ten (10) days within which a party receiving a returned service 
copy should notify the Board of the return is measured from the date of 
delivery to the serving party of the returned service copy. The Office 
has decided not to extend that time period to fifteen (15) days. The 
Board will effect service on the defendant whose service copy was 
returned, utilizing the newer correspondence address information the 
plaintiff has obtained, if any, or information the Board may obtain 
through its own investigation. In the Board order effecting service, 
the Board will clarify what address is to be used for service 
thereafter, and amend, if necessary, any deadlines or dates that were 
set in the institution order. If a current correspondence address for 
the defendant cannot be obtained, then the Board may effect service by 
publication in the Official Gazette. Service by publication will 
include a web address that will allow the defendant to view the 
complaint or concurrent use application through the Office's Web site.
    Comments subject 4 (Correspondence by e-mail): One comment