Miscellaneous Changes to Trademark Trial and Appeal Board Rules of Practice, 19295-19324 [2016-06672]
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Vol. 81
Monday,
No. 64
April 4, 2016
Part II
Department of Commerce
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Patent and Trademark Office
37 CFR Part 2
Miscellaneous Changes to Trademark Trial and Appeal Board Rules of
Practice; Proposed Rules
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Federal Register / Vol. 81, No. 64 / Monday, April 4, 2016 / Proposed Rules
TTABFRNotices@uspto.gov, or by
telephone at (571) 272–4259.
DEPARTMENT OF COMMERCE
Patent and Trademark Office
SUPPLEMENTARY INFORMATION:
37 CFR Part 2
[Docket No. PTO–T–2009–0030]
RIN 0651–AC35
Miscellaneous Changes to Trademark
Trial and Appeal Board Rules of
Practice
United States Patent and
Trademark Office, Commerce.
ACTION: Notice of Proposed Rulemaking.
AGENCY:
The United States Patent and
Trademark Office (‘‘USPTO’’ or
‘‘Office’’) proposes to amend the
Trademark Rules of Practice
(‘‘Trademark Rules’’ or ‘‘Rules’’), in
particular the rules pertinent to practice
before the Trademark Trial and Appeal
Board (‘‘Board’’), to benefit the public
by providing for more efficiency and
clarity in inter partes and ex parte
proceedings. Certain amendments are
being proposed to reduce the burden on
the parties, to conform the rules to
current practice, to update references
that have changed, to reflect technologic
changes, and to ensure the usage of
standard, current terminology. The
proposed rules will also further strategic
objectives of the Office to increase the
end-to-end electronic processing.
DATES: Comments must be received by
June 3, 2016 to ensure consideration.
ADDRESSES: The Office prefers that
comments be submitted via electronic
mail message to TTABFRNotices@
uspto.gov. Written comments also may
be submitted by mail to Trademark Trial
and Appeal Board, P.O. Box 1451,
Alexandria, VA 22313–1451, attention
Cheryl Butler; by hand delivery to the
Trademark Assistance Center,
Concourse Level, James Madison
Building-East Wing, 600 Dulany Street,
Alexandria, Virginia, attention Cheryl
Butler; or by electronic mail message via
the Federal eRulemaking Portal. See the
Federal eRulemaking Portal Web site,
https://www.regulations.gov, for
additional instructions on providing
comments via the Federal eRulemaking
Portal. Written comments will be
available for public inspection on the
Office’s Web site at https://
www.uspto.gov, on the Federal
eRulemaking Portal, and at the
Trademark Assistance Center,
Concourse Level, James Madison
Building-East Wing, 600 Dulany Street,
Alexandria, Virginia.
FOR FURTHER INFORMATION CONTACT:
Cheryl Butler, Trademark Trial and
Appeal Board, by email at
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SUMMARY:
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Executive Summary: Purpose: The
proposed amendments to the rules
emphasize the efficiency of electronic
filing, which is already utilized by most
parties in Board proceedings. In
particular, it is proposed that all
submissions will be filed through the
Board’s online filing system, the
Electronic System for Trademark Trials
and Appeals (‘‘ESTTA’’) (available at
https://www.uspto.gov), except in certain
limited circumstances.
To simplify proceedings, the Office
proposes to resume service
requirements for notices of opposition,
petitions for cancellation, and
concurrent use proceedings, and
proposes to require parties to serve all
other submissions and papers by email.
The proposed amended rules promote
other efficiencies in proceedings, such
as imposing discovery limitations, and
allowing parties to take testimony by
affidavit or declaration, with the option
for oral cross-examination. It is being
proposed that the proportionality
requirement implemented in the 2015
amendments to the Federal Rules of
Civil Procedure be expressly
incorporated into the Board’s proposed
amended rules, which in-part adapt to
recent changes to the Federal Rules of
Civil Procedure, while taking into
account the administrative nature of
Board proceedings.
Other proposed amended rules
address the Board’s standard protective
order and codify recent case law,
including the submission of internet
materials. Recognition of remote
attendance at oral hearings is proposed
to be codified, and new requirements for
notification to the Office and the Board
when review by way of civil action is
taken are proposed in order to avoid
premature termination of a Board
proceeding. The proposed amendments
also make minor changes to correct or
update certain rules so that they clearly
reflect current Board practice and
terminology.
Costs and Benefits: This rulemaking is
not economically significant under
Executive Order 12866 (Sept. 30, 1993).
References below to ‘‘the Act,’’ ‘‘the
Trademark Act,’’ or ‘‘the statute’’ refer to
the Trademark Act of 1946, 15 U.S.C.
1051 et seq., as amended. References to
‘‘TBMP’’ refer to the June 2015 edition
of the Trademark Trial and Appeal
Board Manual of Procedure.
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Background
Reasons for Proposed Rule Changes
The last major set of rule changes at
the Board took effect in 2007; the time
is ripe for changes that will assist
stakeholders in achieving more efficient
practice before the Board. In the years
since 2007, technology changes have
allowed Board operations to move much
closer toward the goal of realizing a
fully integrated paperless filing and
docketing system. In addition, many
stakeholders have embraced use of the
Board’s Accelerated Case Resolution
(‘‘ACR’’) procedures, which has
provided the Board with insight as to
the effectiveness of the various
procedures to which users of ACR have
agreed, and which can be leveraged to
benefit all parties involved in Board
proceedings. The Federal Rules of Civil
Procedure have changed in ways that
are appropriate for codification into
Board rules at this time, and the Board
rules must be updated to reflect
precedential decisions of the Board and
the courts.
The revised rules would apply to
every pending case and every new case
commenced on or after the effective date
of the rulemaking. Any issues that may
arise concerning the transition to the
revised rules for cases pending as of the
effective date of the rules would be
addressed by the Board and the parties
on a case-by-case basis, allowing for
flexibility to respond to the unique
needs in each case, particularly with
respect to scheduling matters.
Electronic Filing
The Board’s electronic filing system,
ESTTA, came online in 2002. Since that
time electronic filings with the Board
have steadily increased. Today well
over 95 percent of filings are submitted
via ESTTA. In addition, during this
time, the Board has effectively
communicated with parties through
email for notices, orders, and decisions
when the party has provided an email
address, and since 2006, the Board
institution order has included a link to
the case file in TTABVUE, the Board’s
database of electronic case files. In view
of this trend, and to further streamline
proceedings, the proposed rules require
that all filings be made through ESTTA
and provide that the Board will send its
notices, orders, and decisions via email.
Eastern Time continues to control the
timeliness of filing dates.
ESTTA already requires plaintiffs
commencing a trial proceeding to select
relevant grounds for opposition and
cancellation, enhancing the accuracy of
notice pleading, and under the proposed
rules defendants would be required to
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inform the Board of any other related
proceeding that serves as, or in essence
could be viewed as, a counterclaim. In
addition, under the proposed rules
plaintiffs in a cancellation proceeding
would have to include the name and
address, including an email address, of
any attorney reasonably believed by the
plaintiff to be a possible representative
of the owner in matters regarding the
registration. Cancellation plaintiffs often
are privy to such information and have
traditionally provided it to the Board.
The proposed rules codify this practice;
the goal of this requirement is simply to
assist in locating current owners of
registrations, so that each cancellation
case will involve the real parties in
interest. To be clear, any attorney so
identified is not considered counsel of
record for the defendant until and
unless either a power of attorney is filed
or an appearance is made by the
attorney in the proceeding.
The proposed rules codify that any
notification of non-delivery of the
Board’s electronic notice of institution
may also prompt additional notice of
commencement of the case by
publication in the USPTO Official
Gazette. The Board would continue its
practice of using other appropriate and
available means to contact a party to
ensure the real party in interest is
notified of the proceeding. These
changes recognize and embrace the shift
by stakeholders from paper filing to
electronic filing.
The Board would continue to accept
paper filing of a notice of opposition or
petition for cancellation in the rare
circumstances when filing through
ESTTA is not possible; however, parties
attempting to commence a proceeding
through a paper filing would have to
concurrently file, to the attention of the
Board, a petition to the Director with a
showing that either ESTTA was
unavailable due to technical problems
or extraordinary circumstances are
present. This procedure for paper filing
would be required for all filings (e.g.,
motions, testimony, and notices of
reliance) with the Board.
In the event of more serious
circumstances that could affect the
Office’s filing systems, such as the
disruption of Office systems in
December 2015, the Board will be
flexible in making accommodation for
such an event.
Service and Electronic Communication
In 2007, the USPTO amended the
rules to require each plaintiff to serve
the complaint on the defendant. This
was a change from long-standing
practice where the Board served the
complaint on the defendant with the
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notice of institution. The proposed rules
now shift the responsibility for serving
the complaint back to the Board.
However, in keeping with the progress
toward complete use of electronic
communication, the Board would not
forward a paper copy of the complaint
but rather would serve the complaint in
the form of a link to TTABVUE in the
notice of institution. In addition,
recognizing that the correspondence
address for a registered extension of
protection under the Madrid Protocol,
15 U.S.C. 1141i, is the international
registration holder’s designated
representative, the Board would forward
the notice of institution to the
registrant’s designated representative.
Under the 2007 rules, parties are
allowed (and encouraged) to stipulate to
electronic service between the parties
for all filings with the Board. Over the
last few years, this has become the
common practice, and the USPTO
proposes to codify that practice by
requiring service between parties by
email for all filings with the Board and
any other papers served on a party not
required to be filed with the Board (e.g.,
disclosures, discovery, etc.). The
proposed rules nonetheless allow for
parties to stipulate otherwise, to
accommodate other methods of
communication that may promote
convenience and expediency (for
example, a file hosting service that
provides cloud storage, delivery of a
USB drive, etc.). In addition, in the
event service by email is not possible
due to technical problems or
extraordinary circumstances, and there
is no stipulation to other methods, the
party would have to include a statement
with its submission or paper explaining
why service by email was not possible,
and the certificate of service would have
to reflect the manner in which service
was made. The statement is meant to
assist the Board in ascertaining whether
a repeating problem exists that may be
alleviated with Board guidance. The
statement is not intended to provide
fertile ground for motion practice. In
any event, methods of service of
discovery requests and responses and
document production remain subject to
the parties’ duty to cooperate under the
Federal Rules of Civil Procedure and the
Trademark Rules and are to be
discussed during the settlement and
discovery planning conference. Parties
may avail themselves of Board
participation in these conferences to
ensure the most expeditious manner of
service is achieved.
In view of service by email, the
additional five days previously added to
a prescribed period for response, to
account for mail delays, would be
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removed. The response period for a
motion would be initiated by its service
date and would run for 20 days, except
that the response period for summary
judgment motions would remain 30
days. Similarly, no additional time
would be available for the service of
discovery responses.
Streamlining Discovery and Pretrial
Procedure
The proposed rules adopt
amendments to the Federal Rules of
Civil Procedure by codifying the
concept of ‘‘proportionality’’ in
discovery. In addition, the proposed
rules codify the ability of parties to
stipulate to limit discovery by
shortening the period, limiting requests,
using reciprocal disclosures in lieu of
discovery, or eliminating discovery
altogether. To align further with the
Federal Rules, the proposed rules
explicitly include reference to
electronically stored information
(‘‘ESI’’) and tangible things as subject
matter for discovery. The Board
continues to view the universe of ESI
within the context of its narrower scope
of jurisdiction, as compared to that of
the federal district courts. The burden
and expense of e-discovery will weigh
heavily in any consideration. See FritoLay North America Inc. v. Princeton
Vanguard LLC, 100 USPQ2d 1904, 1909
(TTAB 2011). The inclusion of ESI in
the rule simply recognizes that many
relevant documents are now kept in
electronic form.
Under the proposed amendments,
motions to compel initial disclosures
must be filed within 30 days after the
deadline for initial disclosures.
The proposed rules limit the number
of requests for production of documents
and requests for admissions to 75, the
same as the current limitation on
interrogatories, and remove the option
to request additional interrogatories. In
addition, the proposed rules allow for
each party that has received produced
documents to serve one comprehensive
request for admission on the producing
party, whereby the producing party
would authenticate all produced
documents or specify which documents
cannot be authenticated. These
proposed limitations on discovery
simply recognize general practice and
are meant to curtail abuse and restrain
litigation expense for stakeholders. In
view of the Board’s narrow jurisdiction,
the need to move for additional requests
would be unlikely; however, the Office
can revisit this issue based on
comments from stakeholders.
Many commenced trial cases are
quickly settled, withdrawn, or decided
by default, and many others involve
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cooperative parties who engage in
useful settlement and discovery
planning conferences. For more
contentious cases, involvement of a
Board Interlocutory Attorney in the
conference is encouraged, and the
proposed rules codify the ability of the
Interlocutory Attorneys to sua sponte
participate in a discovery conference
when they consider it useful. In
addition, the circumstances under
which telephone conferences with
Interlocutory Attorneys can be sought
by a party or initiated by the
Interlocutory Attorney would be
broadened to encompass any
circumstances in which they ‘‘would be
beneficial.’’
Under the proposed rule changes,
discovery must be served early enough
in the discovery period that responses
will be provided and all discovery will
be complete by the close of discovery.
This includes production of documents,
which would have to be produced or
inspected by the close of discovery.
Under the proposed rules, discovery
disputes would have to be resolved
promptly following the close of
discovery. The current deadline for
filing motions to compel is merely prior
to the commencement of the first trial
period. Under the proposed revisions,
however, motions to compel discovery
or to determine the sufficiency of
responses to requests for admissions
must be filed prior to the deadline for
the plaintiff’s pretrial disclosures for the
first testimony period. These revisions
are intended to avoid the expense and
uncertainty that arise when discovery
disputes erupt on the eve of trial. These
changes would also ensure that pretrial
disclosures would be made and trial
preparation would be engaged in only
after all discovery issues have been
resolved. In addition, the Board would
be able to reset the pretrial disclosure
deadline and testimony periods after
resolving any motions relating to
discovery and allowing time for
compliance with any orders requiring
additional responses or production.
Parties would also be subject to a
requirement to inform adverse parties
when prospective witnesses located
outside the United States are expected
to be present in the United States. This
obligation would continue through
discovery (as well as during trial if the
witness could be called to testify),
subject to the Board’s determination of
whether the party has been reasonable
in meeting this obligation.
In 2007, the rules were amended to
make the Board’s standard protective
order applicable in all proceedings,
during disclosure, discovery, and trial,
though parties have been able to agree
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to alternative orders, subject to Board
approval. This has worked well, and the
proposed rules clarify that the
protective order is imposed in all inter
partes proceedings. Parties would
continue to have the flexibility to move
forward under an alternative order by
stipulation or motion approved by the
Board. The proposed rules also codify
practice and precedent that the Board
may treat as not confidential material
which cannot reasonably be considered
confidential, notwithstanding party
designations. See Edwards Lifesciences
Corp. v. VigiLanz Corp., 94 USPQ2d
1399, 1402–03 (TTAB 2010).
Since 2007, several types of consented
motions for extensions and suspensions
have been granted automatically by the
Board’s electronic filing system and the
proposed rules codify this practice,
while retaining the ability of Board
personnel to require that certain
conditions be met prior to approval.
Thus, the practice by which some
consented motions to extend or suspend
are not automatically approved and
would be reviewed and processed by a
Board paralegal or attorney would
continue. In addition, non-dispositive
matters could be acted on by paralegals,
and the proposed rules clarify that
orders on motions under the
designation, ‘‘By the Trademark Trial
and Appeal Board,’’ have the same legal
effect as orders by a panel of three
judges.
To clarify the obligations of the
parties and render the status and
timeline for a case more predictable, the
proposed rules provide that a trial
proceeding is suspended upon filing of
a timely potentially-dispositive motion.
As with the timing of motions relating
to discovery disputes that remain
unresolved by the parties at the close of
discovery, referenced above, motions for
summary judgment also would have to
be filed prior to the deadline for
plaintiff’s pretrial disclosures for the
first testimony period. This would avoid
disruption of trial planning and
preparation through the filing, as late as
on the eve of trial, of motions for
summary judgment.
The existing rule for convening a
pretrial conference because of the
complexity of issues is proposed to be
limited to exercise only by the Board,
upon the Board’s initiative.
Efficient Trial Procedures
For some time now parties have had
the option to stipulate to ACR, which
can be adopted in various forms. A
common approach is for parties to
stipulate that summary judgment cross
motions will substitute for a trial record
and traditional briefs at final hearing
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and the Board may resolve any issues of
fact that otherwise might be considered
subject to dispute. Other approaches
adopted by parties utilizing the
efficiencies of the ACR process have
included agreements to limit discovery,
agreements to shorten trial periods or
the time between trial periods,
stipulations to facts or to the
admissibility of documents or other
evidence, and stipulations to proffers of
testimony by declaration or affidavit.
These types of efficiencies would be
codified by specifically providing for
such stipulations and, most
significantly, by allowing a unilateral
option for trial testimony by affidavit or
declaration subject to the right of oral
cross examination by the adverse party
or parties. Parties also would continue
to be able to stipulate to rely on
summary judgment materials as trial
evidence.
The proposed rules would codify two
changes in recent years, effected by case
law and practice, expanding the option
to submit certain documents by notice
of reliance. First, the proposed rules
codify existing law that pleaded
registrations and registrations owned by
any party may be made of record via
notice of reliance by submitting
therewith a current printout of
information from the USPTO electronic
database records showing current status
and title. The rules currently allow for
such printouts to be attached to the
notice of opposition or petition for
cancellation; the proposed change
specifically also allows for such
printouts to be submitted under notice
of reliance. Second, the proposed rules
codify that internet materials also may
be submitted under a notice of reliance,
as provided by Safer, Inc. v. OMS
Investments, Inc., 94 USPQ2d 1031
(TTAB 2010).
To alleviate any uncertainty, the
proposed rules add a subsection to the
requirements for a notice of reliance,
specifically, to require that the notice
indicate generally the relevance of the
evidence and associate it with one or
more issues in the proceeding. In an
effort to curtail motion practice on this
point, the proposed rule explicitly states
any failure of a notice of reliance to
meet this requirement would be
considered a curable procedural defect.
This codifies the holding of FUJIFILM
SonoSite, Inc. v. Sonoscape Co., 111
USPQ2d 1234, 1237 (TTAB 2014).
Under the proposed rule changes, a
party must file any motion to use a
discovery deposition at trial along with
its pretrial disclosures. Also, an adverse
party would be able to move to quash
a notice of testimony deposition if the
witness was not included in the pretrial
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disclosures, and an adverse party would
be able to move to strike testimony
presented by affidavit or declaration if
the witness was not included in the
pretrial disclosure.
Similar to the above-referenced
proposal in regard to taking discovery
from witnesses otherwise located
outside the United States but who may
be present in the United States during
discovery, the proposed rules also
provide that a party will have to inform
adverse parties when it knows a
prospective trial witness otherwise
located outside the United States will be
within the jurisdiction of the United
States during trial.
In response to Cold War Museum Inc.
v. Cold War Air Museum Inc., 586 F.3d
1352, 92 USPQ2d 1626, 1629 (Fed. Cir.
2009), the proposed rules make clear
that while the file history of the subject
application or registration is of record,
statements in affidavits or declarations
in the file are not evidence.
The Board has seen an increase in
testimony deposition transcripts that do
not include a word index, and the
proposed rules would require a word
index for all testimony transcripts. For
ease of review, deposition transcripts
also would have to be submitted in fullsized format, not condensed with
multiple pages per sheet. More broadly,
the proposed rules would make clear
that it is the parties’ responsibility to
ensure that all exhibits pertaining to an
electronic submission must be clear and
legible.
The proposed rules codify case law
and Board practice under which the
Board may sua sponte grant judgment
for the defendant when the plaintiff has
not submitted evidence, even where the
plaintiff has responded to the Board’s
show cause order for failure to file a
brief but has either not moved to reopen
its trial period or not been successful in
any such motion. Gaylord
Entertainment Co. v. Calvin Gilmore
Productions. Inc., 59 USPQ2d 1369,
1372 (TTAB 2000).
To alleviate confusion and codify case
law, the proposed rules clarify that
evidentiary objections may be set out in
a separate appendix that does not count
against the page limit for a brief and that
briefs exceeding the page limit may not
be considered by the Board. Alcatraz
Media Inc. v. Chesapeake Marine Tours
Inc., 107 USPQ2d 1750, 1753–54 (TTAB
2013) (Appropriate evidentiary
objections may be raised in appendix or
separate paper rather than in text of
brief.), aff’d, 565 F. App’x 900 (Fed. Cir.
2013) (mem.).
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Remand Procedures/Appeal Procedures
Certain aspects of ex parte appeals
procedure are clarified in the proposed
amendments. Under the proposed rules,
evidence shall not be submitted after the
filing of the notice of appeal and may
only be added to the record when
attached to a timely request for
reconsideration or via a request for
remand. This is not a change to the
substance of the existing rule, but is
designed to address a recurring error by
applicants during ex parte appeal.
Reply briefs in ex parte appeals would
be limited to 10 pages. To facilitate
consideration and discussion of record
evidence, citation to evidence in all the
briefs for the appeal, by the applicant
and examining attorney, would be to the
documents in the electronic application
record by docket entry date and page
number.
The proposed rules provide that, if
during an inter partes proceeding the
examining attorney believes certain
facts render an applied-for mark
unregistrable, the examining attorney
should formally request remand of the
application to the Trademark Examining
Operation rather than simply notify the
Board.
Other Clarification of Board Practice
and Codification of Case Law
Correlative to electronic filing and
communication, the Board also has
made it possible for parties, examining
attorneys, and members of the Board to
attend hearings remotely through video
conference. The proposed rules codify
that option.
In 2.106(a) and 2.114(a) the proposed
rules codify case law and practice to
make it clear that when no answer has
been filed, all other deadlines are tolled.
If the parties have continued to litigate
after an answer is late-filed, it would
generally be viewed as a waiver of the
technical default.
The proposed rules provide that a
Notice of Opposition to an application
under Trademark Act § 66(a) must
identify the goods and services opposed
and the grounds for opposition on the
ESTTA cover sheet and may not be
amended to expand the opposition to
cover goods or services beyond those
referenced on the ESTTA cover sheet.
These amendments codify the holding
of Hunt Control Systems Inc. v.
Koninklijke Philips Electronics N.V., 98
USPQ2d 1558, 1561–62 (TTAB 2011). In
addition, the rules would clarify that
after the close of the time period for
filing a Notice of Opposition, the notice
may not be amended to add a joint
opposer.
Requirements for filing appeals of
Board decisions are restructured to align
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with the rules governing review of
Patent Trial and Appeal Board
decisions. Further, all notices of appeal
to the United States Court of Appeals for
the Federal Circuit must be filed with
the USPTO’s Office of General Counsel
and a copy filed with the Board via
ESTTA. When a party seeks review of a
Board inter partes decision by
commencing a civil action, the proposed
amendments clarify that a notice of such
commencement must be filed with the
Board via ESTTA to avoid premature
termination of the Board proceeding
during pendency of the civil action. The
proposed amendments further require
that both a notice and a copy of the
complaint for review of an ex parte
decision by way of civil action are to be
filed with the USPTO’s Office of
General Counsel with a copy to be filed
with the Board via ESTTA.
Public Participation
The Board began 2015 looking ahead
to the implementation of changes in the
Federal Rules of Civil Procedure then
scheduled to take effect in December
2015. The Board also looked back on its
multi-year campaign to promote the use
of Accelerated Case Resolution, to
determine lessons learned, and to
identify ways to leverage the benefits of
ACR into all Board trial cases. For these
and other reasons, it became clear that
the timing was right to consider
updating the Board’s rules. On January
29, 2015, the Board held an ESTTA
Users Forum, directed to issues and
matters involving electronic filing. On
February 19, 2015, the Board held a
Stakeholder Roundtable concerning
matters of practice and received
comments and suggestions from various
organizations representing intellectual
property user groups, including inside
counsel, outside counsel, and mark
owners and applicants. That February
roundtable involved discussion of many
of the provisions that are now included
in the proposed rule package. The Board
also engaged in significant stakeholder
outreach throughout 2015, alerting users
in locations across the country about the
issues that they could expect to be
addressed in prospective rulemaking.
Finally, the Board engaged the
Trademark Public Advisory Committee
on process and procedure changes
under consideration, on multiple
occasions during the year. All of these
events have enriched the process
through which the Board has developed
proposed rule changes and served as a
precursor to the continuing discussion
with stakeholders that the Office seeks
through this Notice of Proposed
Rulemaking.
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Discussion of Proposed Rules Changes
The Office proposes to make the
following amendments:
Interferences and Concurrent Use
Proceedings
Preliminary to Interference
The Office proposes to amend § 2.92
to incorporate a nomenclature change
from ‘‘Examiner of Trademarks’’ to
‘‘examining attorney.’’
Adding Party to Interference
The Office proposes to amend § 2.98
to incorporate a nomenclature change
from ‘‘examiner’’ to ‘‘examining
attorney.’’
Application To Register as a Concurrent
User
The Office proposes to amend
§ 2.99(c) and (d) to change
‘‘notification’’ to ‘‘notice of institution’’
or ‘‘notice,’’ and to specify that the
notice will be transmitted via email.
The Office proposes to revise
§ 2.99(d)(1) to remove the service
requirement for applicants for
concurrent use registration and to
specify that the notice of institution will
include a web link or web address for
the concurrent use proceeding.
The Office proposes to amend
§ 2.99(d)(2) to clarify that an answer to
the notice of institution is not required
by an applicant or registrant whose
application or registration is
acknowledged in the concurrent use
application.
The Office proposes to amend
§ 2.99(d)(3) to clarify that a user who
does not file an answer when required
is in default, but the burden of
providing entitlement to registration(s)
remains with the concurrent use
applicant(s).
The Office proposes to amend
§ 2.99(f)(3) to incorporate a
nomenclature change from ‘‘examiner’’
to ‘‘examining attorney.’’
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Opposition
Filing an Opposition
The Office proposes to amend
§ 2.101(a) and (b) to remove the
opposer’s requirement to serve a copy of
the notice of opposition on applicant.
The Office proposes to amend
§ 2.101(b)(1) to require that oppositions
be filed through ESTTA. The proposed
amendment continues the existing
unconditional requirement that an
opposition to an application based on
Section 66(a) of the Trademark Act must
be filed through ESTTA, but provides
that an opposition against an
application based on Section 1 or 44 of
the Act may be filed in paper form in
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the event that ESTTA is unavailable due
to technical problems or when
extraordinary circumstances are present.
The proposed amendment codifies the
use of electronic filing.
The Office proposes to amend
§ 2.101(b)(2) to require that a paper
opposition to an application must be
accompanied by a Petition to the
Director under § 2.146(a)(5), with the
required fees and showing, and to add
that timeliness of the submission will be
determined in accordance with §§ 2.195
through 2.198.
The Office proposes to amend
§ 2.101(c) by moving the content of
paragraph (d)(1) to the end of paragraph
(c).
The Office proposes to amend
§ 2.101(d) by removing paragraphs (1),
(3), and (4), but retaining the content in
paragraph (d)(2) in an undesignated
paragraph, and providing that an
ESTTA opposition cannot be filed
absent sufficient fees and a paper
opposition accompanied by insufficient
fees may not be instituted, but a
potential opposer may resubmit the
opposition with the required fee if time
remains. The proposed revisions are
intended to simplify the rules pertaining
to insufficient fees.
The Office proposes to amend
§ 2.101(d)(4) to rename it as § 2.101(e)
and clarify that the filing date of an
opposition is the date of electronic
receipt in the Office of the notice of
opposition and required fee and to add
that the filing date for a paper filing,
where permitted, will be determined in
accordance with §§ 2.195 through 2.198.
Extension of Time for Filing an
Opposition
The Office proposes to amend § 2.102
to omit references to ‘‘written’’ requests
for extensions of time, as it is
unnecessary in view of the requirement
in § 2.191 that all business be conducted
in writing.
The Office proposes to amend
§ 2.102(a)(1) to require that requests to
extend the time for filing an opposition
be filed through ESTTA. The proposed
amendment continues the existing
requirement that an opposition to an
application based on Section 66(a) of
the Act must be filed through ESTTA,
but provides that an opposition against
an application based on Section 1 or 44
of the Act may be filed in paper form
in the event that ESTTA is unavailable
due to technical problems or when
extraordinary circumstances are present.
The Office proposes to amend
§ 2.102(a)(2) to require that a paper
request to extend the opposition period
must be accompanied by a Petition to
the Director under § 2.146(a)(5), with
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the required fees and showing, and to
add that timeliness of the paper
submission will be determined in
accordance with §§ 2.195 through 2.198.
The Office proposes to amend
§ 2.102(b) to clarify that an opposition
filed during an extension of time must
be in the name of the person to whom
the extension was granted except in
cases of misidentification through
mistake or where there is privity.
The Office proposes to amend
§ 2.102(c)(1) to clarify that a sixty-day
extension is not available as a first
extension of time to oppose. The Office
proposes to amend § 2.102(c)(3) to
clarify that only a sixty-day time period
is allowed for a final extension of the
opposition period.
The Office proposes to add new
§ 2.102(d), which clarifies that the filing
date of a request to extend the time for
filing an opposition is the date of
electronic receipt in the Office of the
notice of opposition and that the filing
date for a paper filing, where permitted,
will be determined in accordance with
§§ 2.195 through 2.198.
Contents of Opposition
The Office proposes to amend
§ 2.104(a) to specify that ESTTA
requires the opposer to select relevant
grounds for opposition, and the
accompanying required statement
supports and explains the grounds. The
proposed amendment codifies current
Office practice.
The Office proposes to add new
§ 2.104(c) to clarify that with respect to
an opposition to an application filed
under Section 66(a) of the Trademark
Act, both the ESTTA cover sheet and
accompanying statement must identify
the goods and/or services opposed and
the grounds for opposition and such an
opposition may not be amended to
include goods, services, or grounds
beyond those set forth in the cover
sheet. The proposed amendment
conforms with Section 68(c)(3) of the
Act, is consistent with the proposed
amendment to § 2.107(b), and codifies
current case law and practice.
Notification to Parties of Opposition
Proceeding(s)
The Office proposes to amend
§ 2.105(a) to remove the service
requirement for opposers and to specify
that the notice of institution constitutes
service and will include a web link or
web address to access the electronic
proceeding record.
The Office proposes to amend
§§ 2.105(b) and (c) to provide that it will
effect service of the notice of opposition
at the email or correspondence address
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of record for the parties, their attorneys,
or their domestic representatives.
Answer
The Office proposes to amend
§ 2.106(a) to add that default may occur
after the time to answer is reset and that
failure to file a timely answer tolls all
deadlines until the issue of default is
resolved. The proposed amendment
codifies current Office practice and is
consistent with the Office’s proposed
amendment to § 2.114(a).
The Office proposes to amend
§ 2.106(b)(1) to specify that a reply to an
affirmative defense shall not be filed.
The Office proposes to amend
§ 2.106(b)(2)(i) to add a requirement that
an applicant subject to an opposition
proceeding must promptly inform the
Board of the filing of another proceeding
between the same parties or anyone in
privity therewith.
The Office proposes to amend
§ 2.106(b)(2)(iv) to clarify that the Board
may sua sponte reset the times for
pleading, discovery, testimony, briefs,
or oral argument.
Amendment of Pleadings in an
Opposition Proceeding
The Office proposes to amend
§ 2.107(a) to add that an opposition
proceeding may not be amended to add
a joint opposer.
The Office proposes to amend
§ 2.107(b) to clarify that, with respect to
an opposition to an application filed
under Section 66(a) of the Trademark
Act, pleadings may not be amended to
add grounds for opposition or goods or
services beyond those set forth in the
cover sheet, or to add a joint opposer.
The proposed amendment conforms
with Section 68(c)(3) of the Act, is
consistent with the proposed
amendment to § 2.104(c), and codifies
current case law and practice.
Cancellation
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Filing a Petition for Cancellation
The Office proposes to amend
§ 2.111(a) and (b) to remove the
petitioner’s requirement to serve a copy
of the petition to cancel on registrant.
The Office proposes to amend
§ 2.111(c)(1) to require that a petition to
cancel a registration be filed through
ESTTA. The proposed amendment
provides that a petition to cancel may be
filed in paper form in the event that
ESTTA is unavailable due to technical
problems or when extraordinary
circumstances are present. The Office
proposes to amend § 2.111(c)(2) to
require that a paper petition to cancel a
registration must be accompanied by a
Petition to the Director under
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§ 2.146(a)(5), with the required fees and
showing, and to add that timeliness of
the submission, if relevant to a ground
asserted in the petition to cancel, will be
determined in accordance with §§ 2.195
through 2.198. The proposed
amendments codify the use of electronic
filing.
The Office proposes to delete
§ 2.111(c)(3) and add a new § 2.111(d),
which provides that a petition for
cancellation cannot be filed via ESTTA
absent sufficient fees and a paper
petition accompanied by insufficient
fees may not be instituted. The
proposed revisions are intended to
simplify the rules pertaining to
insufficient fees.
The Office proposes to amend
§ 2.111(c)(4) to renumber it as § 2.111(e),
which clarifies that the filing date of a
petition for cancellation is the date of
electronic receipt in the Office of the
petition and required fee and adds that
the filing date for a paper petition for
cancellation, where permitted, is the
date identified in § 2.198.
Contents of Petition for Cancellation
The Office proposes to amend
§ 2.112(a) to add that the petition for
cancellation must indicate, to the best of
petitioner’s knowledge, a current email
address(es) of the current owner of the
registration and of any attorney, as
specified in §§ 11.14(a) and (c) of this
Chapter, reasonably believed by the
petitioner to be a possible representative
of the owner in matters regarding the
registration.
The Office proposes to further amend
§ 2.112(a) to specify that ESTTA
requires the petitioner to select relevant
grounds for cancellation, and the
required accompanying statement
supports and explains the grounds. The
proposed amendment codifies current
Office practice.
Notification of Cancellation Proceeding
The Office proposes to amend
§ 2.113(a) to remove the service
requirement for petitioners and to
specify that the notice of institution
constitutes service and will include a
web link or web address to access the
electronic proceeding record.
The Office proposes to amend
§§ 2.113(b) and (c) to provide that it will
effect service of the petition for
cancellation at the email or
correspondence address of record for
the parties, their attorneys, or their
domestic representatives. The Office
further proposes to amend § 2.113(c) to
insert subheadings (1), (2), and (3) for
clarity and to provide in newly
designated paragraph (3) that, in the
case of a registration issued under 15
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19301
U.S.C. 1141(i), notice will be sent to the
international registration holder’s
designated representative and
constitutes service.
The Office proposes to amend
§ 2.113(d) to remove ‘‘petition for
cancellation’’ and to provide that the
courtesy copy of the notice of institution
that shall be forwarded to the alleged
current owner of the registration will
include a web link or web address to
access the electronic proceeding record.
Answer
The Office proposes to amend
§ 2.114(a) to add that default may occur
after the time to answer is reset and that
failure to file a timely answer tolls all
deadlines until the issue of default is
resolved. The proposed revision codifies
current Office practice and is consistent
with the Office’s proposed amendment
to § 2.106(a).
The Office proposes to amend
§ 2.114(b)(1) to add that a pleaded
registration is a registration identified
by number by the party in the position
of plaintiff in an original or
counterclaim petition for cancellation.
The Office proposes to amend
§ 2.114(b)(2)(i) to add a requirement that
a party in the position of respondent
and counterclaim plaintiff must
promptly inform the Board of the filing
of another proceeding between the same
parties or anyone in privity therewith.
The Office proposes to amend
§ 2.114(b)(2)(iii) to clarify that the Board
may sua sponte reset the period for
filing an answer to a counterclaim. The
Office proposes to amend
§ 2.114(b)(2)(iv) to clarify that the Board
may sua sponte reset the times for
pleading, discovery, testimony, briefs,
or oral argument.
The Office proposes to amend
§ 2.114(c) to add that counterclaim
petitions for cancellation may be
withdrawn without prejudice before an
answer is filed.
Procedure in Inter Partes Proceedings
Federal Rules of Civil Procedure
The Office proposes to amend
§ 2.116(e) to add that the submission of
notices of reliance, declarations, and
affidavits, as well as the taking of
depositions, during the testimony
period corresponds to the trial in court
proceedings. The proposed revision
codifies current Office practice and is
consistent with proposed amendments
relating to declarations and affidavits.
The Office proposes to amend
§ 2.116(g) to clarify that the Board’s
standard protective order, which is
available on the Office’s Web site, is
automatically imposed throughout all
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inter partes proceedings. The Office
proposes to further amend § 2.116(g) to
add that the Board may treat as not
confidential material which cannot
reasonably be considered confidential,
notwithstanding a party’s designation.
The proposed revisions codify current
case law and Office practice.
Suspension of Proceedings
The Office proposes to amend
§ 2.117(c) to clarify that the Board may
suspend proceedings sua sponte and
retains discretion to condition approval
of consented or stipulated motions to
suspend on the provision by parties of
necessary information about the status
of settlement talks or discovery or trial
activities.
Undelivered Office Notices
The Office proposes to amend § 2.118
to add notification of non-delivery in
paper or electronic form of Board
notices and to delete the time period
prescribed by the Director.
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Service and Signing
The Office proposes to incorporate the
word ‘‘submissions’’ throughout § 2.119
to codify the use of electronic filing. The
proposed amendment codifies the use of
electronic filing.
The Office proposes to amend
§ 2.119(a) to remove the service
requirements for notices of opposition
and petitions to cancel, consistent with
proposed amendments to §§ 2.101(a)
and (b) and 2.111(a) and (b).
The Office proposes to amend
§ 2.119(b) to require that all submissions
filed with the Board and any other
papers served on a party be served by
email, unless otherwise stipulated or
service by email cannot be made due to
technical problems or extraordinary
circumstances.
The Office proposes to amend
§ 2.119(b)(3) to revise the manner of
service on a person’s residence by
stating that a copy of a submission may
be left with some person of suitable age
and discretion who resides there. The
proposed amendment is consistent with
both the Patent Rules of Practice and the
Federal Rules of Civil Procedure.
The Office proposes to amend
§ 2.119(b)(6) to remove the requirement
for mutual agreement by the parties for
service by other forms of electronic
transmission and to remove service by
notice published in the Official Gazette.
The Office proposes to amend
§ 2.119(c) to remove the provision
adding five days to the prescribed
period for action after service by the
postal service or overnight courier. All
fifteen-day response dates initiated by a
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service date would be amended to
twenty days.
The Office proposes to amend
§ 2.119(d) to add that no party may
serve submissions by means of the
postal service if a party to an inter
partes proceeding is not domiciled in
the United States and is not represented
by an attorney or other authorized
representative located in the United
States.
Discovery
The Office proposes to amend
§ 2.120(a)(1) to add the concept of
proportionality in discovery, in
conformance with the 2015
amendments to the Federal Rules of
Civil Procedure, and to reorganize
portions of the text for clarity.
The Office proposes to amend
§ 2.120(a)(2) to add headings for
subparts (i) through (v) and to
reorganize portions of the text for
clarity.
The Office proposes to amend
renumbered § 2.120(a)(2)(i) to specify
that a Board Interlocutory Attorney or
Administrative Trademark Judge will
participate in a discovery conference
when the Board deems it useful. The
proposed revision codifies current
Office practice.
The Office proposes to amend
renumbered § 2.120(a)(2)(iii) to add that
the Board may issue an order regarding
expert discovery either on its own
initiative or on notice from a party of
the disclosure of expert testimony.
The Office proposes to amend
renumbered § 2.120(a)(2)(iv) to add that
parties may stipulate that there will be
no discovery, that the number of
discovery requests or depositions be
limited, or that reciprocal disclosures be
used in place of discovery. The
proposed amendment codifies some of
the stipulations successfully used by
parties in ACR procedures and other
proceedings incorporating ACR-type
efficiencies. The Office proposes to
further amend § 2.120(a)(2)(iv) to clarify
that extensions of the discovery period
granted by the Board will be limited.
The Office proposes to further amend
§ 2.120(a)(2)(iv) to require that an expert
disclosure deadline must always be
scheduled prior to the close of
discovery.
The Office proposes to amend
§ 2.120(a)(3) to require that discovery
requests be served early enough in the
discovery period that responses will be
due no later than the close of discovery,
and when the time to respond is
extended, discovery responses may not
be due later than the close of discovery.
The proposed amendment is intended to
alleviate motion practice prompted by
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responses to discovery requests served
after discovery has closed.
The Office proposes to amend
§ 2.120(b) to require that any agreement
by the parties as to the location of a
discovery deposition shall be made in
writing.
The Office proposes to amend the title
of § 2.120(c) to clarify that it applies to
foreign parties within the jurisdiction of
the United States. The Office proposes
to amend § 2.120(c)(2) to require that a
party must inform every adverse party
whenever a foreign party has or will
have, during a time set for discovery, an
officer, director, managing agent, or
other person who consents to testify on
its behalf present within the United
States.
The Office proposes to amend
§ 2.120(d) to remove motions for leave
to serve additional interrogatories. The
Office proposes to revise § 2.120(d) such
that it addresses only interrogatories,
deleting subsections (1) and (2).
Provisions relating to requests for
production are moved to revised
§ 2.120(e), and §§ 2.120(f) through (k)
are renumbered in conformance.
The Office proposes to amend
§ 2.120(e) to limit the total number of
requests for production to seventy-five
and to provide a mechanism for
objecting to requests exceeding the
limitation parallel to § 2.120(d). The
Office proposes to further amend
§ 2.120(e) to clarify that the rule applies
to electronically stored information as
well as documents and tangible things;
to provide that the time, place, and
manner for production shall comport
with the provisions of Rule 34 of the
Federal Rules of Civil Procedure, or be
made pursuant to agreement of the
parties; and to delete that production
will be made at the place where the
documents and things are usually kept.
The Office proposes to amend
renumbered § 2.120(f)(1) to clarify that
the rule applies to electronically stored
information as well as documents and
tangible things. The Office proposes to
further amend § 2.120(f)(1) to require
that a motion to compel initial
disclosures must be filed within thirty
days after the deadline therefor and
include a copy of the disclosures. The
Office proposes to further amend
§ 2.120(f)(1) to require that a motion to
compel discovery must be filed prior to
the deadline for pretrial disclosures for
the first testimony period, rather than
the commencement of that period. The
Office proposes to further amend
§ 2.120(f)(1) to clarify that the request
for designation pertains to a witness.
The Office proposes to further amend
§ 2.120(f)(1) to require a showing from
the moving party that the party has
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made a good faith effort to resolve the
issues presented in the motion.
The Office proposes to amend
renumbered § 2.120(f)(2) to clarify that
when a motion to compel is filed after
the close of discovery, the parties need
not make pretrial disclosures until
directed to do so by the Board.
The Office proposes to amend
renumbered § 2.120(g) to conform to
Federal Rule of Civil Procedure 26(c).
The Office proposes to amend
renumbered § 2.120(i) to limit the total
number of requests for admission to
seventy-five and to provide a
mechanism for objecting to requests
exceeding the limitation parallel to
§§ 2.120(d) and (e). The Office proposes
to further amend § 2.120(i) to permit a
party to make one comprehensive
request for an admission authenticating
documents produced by an adverse
party.
The Office proposes to amend
renumbered § 2.120(i)(1) to require that
any motion to test the sufficiency of any
objection, including a general objection
on the ground of excessive number,
must be filed prior to the deadline for
pretrial disclosures for the first
testimony period, rather than the
commencement of that period. The
Office proposes to further amend
§ 2.120(i)(1) to require a showing from
the moving party that the party has
made a good faith effort to resolve the
issues presented in the motion.
The Office proposes to amend
renumbered § 2.120(i)(2) to clarify that
when a motion to determine the
sufficiency of an answer or objection to
a request for admission is filed after the
close of discovery, the parties need not
make pretrial disclosures until directed
to do so by the Board.
The Office proposes to amend
renumbered § 2.120(j)(1) to state more
generally that the Board may schedule
a telephone conference whenever it
appears that a stipulation or motion is
of such nature that a telephone
conference would be beneficial. The
Office proposes to amend § 2.120(j)(2) to
remove provisions allowing parties to
move for an in-person meeting with the
Board during the interlocutory phase of
an inter partes proceeding and the
requirement that any such meeting
directed by the Board be at its offices.
The Board proposes to add new
§ 2.120(j)(3) to codify existing practice
that parties may not make a recording of
the conferences referenced in
§§ 2.120(j)(1) and (2).
The Office proposes to amend
renumbered § 2.120(k)(2) to change the
time for a motion to use a discovery
deposition to when the offering party
makes its pretrial disclosures and to
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clarify that the exceptional
circumstances standard applies when
this deadline has passed.
The Office proposes to amend
renumbered § 2.120(k)(3)(i) to clarify
that the disclosures referenced are
initial disclosures, to remove the
exclusion of disclosed documents, and
to incorporate a reference to new
§ 2.122(g).
The Office proposes to amend
renumbered § 2.120(k)(3)(ii) to add that
a party may make documents produced
by another party of record by notice of
reliance alone if the party has obtained
an admission or stipulation from the
producing party that authenticates the
documents. This amendment is
consistent with the proposed
amendment in renumbered § 2.120(i)
permitting a party to make one
comprehensive request for an admission
authenticating documents produced by
an adverse party.
The Office proposes to amend
renumbered § 2.120(k)(7) to add an
authenticated produced document to
the list of evidence that may be referred
to by any party when it has been made
of record.
Assignment of Times for Taking
Testimony and Presenting Evidence
The Office proposes to amend
§ 2.121(a) to clarify that evidence must
be presented during a party’s testimony
period. The Office proposes to further
amend § 2.121(a) to add that the
resetting of a party’s testimony period
will result in the rescheduling of the
remaining pretrial disclosure deadlines
without action by any party. These
amendments codify current Office
practice.
The Office proposes to amend
§ 2.121(c) to add that testimony periods
may be shortened by stipulation of the
parties approved by the Board or may be
extended on motion granted by the
Board or order of the Board. The Office
proposes to further amend § 2.121(c) to
add that the pretrial disclosure
deadlines associated with testimony
periods may remain as set if a motion
for an extension is denied. These
amendments codify current Office
practice.
The Office proposes to amend
§ 2.121(d) to add that stipulations to
reschedule the deadlines for the closing
date of discovery, pretrial disclosures,
and testimony periods must be
submitted through ESTTA with the
relevant dates set forth and an express
statement that all parties agree to the
new dates. The proposed amendment
codifies the use of electronic filing.
The Office proposes to amend
§ 2.121(e) to add that the testimony of a
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witness may be either taken on oral
examination and transcribed or
presented in the form of an affidavit or
declaration, as provided in proposed
amendments to § 2.123.
The Office proposes to further amend
§ 2.121(e) to add that a party may move
to quash a noticed testimony deposition
of a witness not identified or improperly
identified in pretrial disclosures before
the deposition. The proposed
amendment codifies current Office
practice.
The Office proposes to further amend
§ 2.121(e) to add that when testimony
has been presented by affidavit or
declaration, but was not covered by an
earlier pretrial disclosure, the remedy
for any adverse party is the prompt
filing of a motion to strike, as provided
in §§ 2.123 and 2.124. The proposed
amendment aligns the remedy for
undisclosed testimony by affidavit or
declaration with the remedy for
undisclosed deposition testimony.
Matters in Evidence
The Office proposes to amend
§ 2.122(a) to clarify the title of the
subsection and to specify that parties
may stipulate to rules of evidence for
proceedings before the Board. The
Office proposes to further amend
§ 2.122(a), consistent with § 2.120(k)(7),
to add that when evidence has been
made of record by one party in
accordance with these rules, it may be
referred to by any party for any purpose
permitted by the Federal Rules of
Evidence. The proposed amendments
codify current Office practice.
The Office proposes to amend
§ 2.122(b)(2) to clarify the title of the
subsection and to clarify that statements
made in an affidavit or declaration in
the file of an application for registration
or in the file of a registration are not
evidence on behalf of the applicant or
registrant and must be established by
competent evidence.
The Office proposes to amend
§ 2.122(d)(2) to add a cross-reference to
new § 2.122(g) and to specify that a
registration owned by a party may be
made of record via notice of reliance
accompanied by a current printout of
information from the electronic database
records of the Office showing the
current status and title of the
registration. The proposed amendment
codifies current case law and Office
practice.
The Office proposes to amend
§ 2.122(e) to designate a new paragraph
(e)(1), clarify that printed publications
must be relevant to a particular
proceeding, and add a cross-reference to
new § 2.122(g).
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The Office proposes to add new
§ 2.122(e)(2) permitting admission of
internet materials into evidence by
notice of reliance and providing
requirements for their identification.
The proposed amendment codifies
current case law and Office practice.
The Office proposes to add new
§ 2.122(g) detailing the requirements for
admission of evidence by notice of
reliance. Section 2.122(g) provides that
a notice must indicate generally the
relevance of the evidence offered and
associate it with one or more issues in
the proceeding, but failure to do so with
sufficient specificity is a procedural
defect that can be cured by the offering
party within the time set by Board
order. The proposed amendment
codifies current case law and Office
practice.
Trial Testimony in Inter Partes Cases
The Office proposes to amend
§ 2.123(a)(1) to permit submission of
witness testimony by affidavit or
declaration, subject to the right of any
adverse party to take and bear the
expense of oral cross-examination of
that witness, as provided in proposed
amendments to § 2.121(e), and to add
that the offering party must make that
witness available. The proposed
amendment is intended to promote
efficient trial procedure.
The Office proposes to further amend
§ 2.123(a)(1) to move to § 2.123(a)(2) a
provision permitting a motion for
deposition on oral examination of a
witness in the United States whose
testimonial deposition on written
questions has been noticed.
The Office proposes to further amend
§ 2.123(a)(2) to add that the party which
has proffered a witness for testimonial
deposition on written questions must
inform every adverse party when it
knows that such witness will be within
the jurisdiction of the United States
during such party’s testimony period.
The proposed amendment is consistent
with the proposed amendment to
§ 2.120(c)(2) and is intended to promote
efficient trial procedure by facilitating
the use of deposition on oral
examination instead of written
questions when permissible.
The Office proposes to amend
§ 2.123(b) to remove the requirement for
written agreement of the parties to
submit testimony in the form of an
affidavit, as provided in proposed
amendments to § 2.123(a)(1), and to
clarify that parties may stipulate to any
relevant facts.
The Office proposes to amend
§ 2.123(c) to remove the option of
identifying a witness by description in
a notice of examination and to clarify
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that such notice shall be given to
adverse parties before oral depositions.
The Office proposes to further amend
§ 2.123(c) to add that, when a party
elects to take oral cross-examination of
an affiant or declarant, the notice of
such election must be served on the
adverse party and a copy filed with the
Board within 10 days from the date of
service of the affidavit or declaration
and completed within 20 days from the
date of service of the notice of election.
The Office proposes to further amend
§ 2.123(c) to add that the Board may
extend the periods for electing and
taking oral cross-examination and, when
necessary, shall suspend or reschedule
proceedings in the matter to allow for
the orderly completion of the oral crossexamination(s) that cannot be
completed within a testimony period.
The Office proposes to amend
§ 2.123(e)(1) to specify that a witness
must be sworn before providing oral
testimony. The Office proposes to
further amend § 2.123(e)(1) to move
from § 2.123(e)(3) the provision that
cross-examination is available on oral
depositions. The Office proposes to
further amend § 2.123(e)(1) to add that,
where testimony is proffered by
affidavit or declaration, crossexamination is available for any witness
within the jurisdiction of the United
States, as provided in proposed
amendments to § 2.123(a)(1).
The Office proposes to amend
§ 2.123(e)(2) to remove provisions
permitting depositions to be taken in
longhand, by typewriting, or
stenographically and to specify that
testimony depositions shall be recorded.
The Office proposes to amend
§ 2.123(e)(3) to delete the provision that
cross-examination is available on oral
depositions, which the Office proposes
to move to § 2.123(e)(1), and to insert
subheadings (i) and (ii) for clarity.
The Office proposes to amend
§ 2.123(e)(4) to specify that the rule
regarding objections pertains to oral
examination.
The Office proposes to amend
§ 2.123(e)(5) to clarify that the rule
regarding witness signature relates to
the transcript of an oral deposition.
The Office proposes to amend
§ 2.123(f)(2) to require that deposition
transcripts and exhibits shall be filed in
electronic form using ESTTA. If the
weight or bulk of an exhibit prevents its
uploading to ESTTA, it shall be
transmitted in a separate package,
including an explanation as to why it
could not be submitted electronically.
The proposed amendment codifies the
use of electronic filing.
The Office proposes to amend
§ 2.123(g)(1) to add that deposition
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transcripts must be submitted in fullsized format (one page per sheet), not
condensed (multiple pages per sheet).
The Office proposes to amend
§ 2.123(g)(3) to add that deposition
transcripts must contain a word index,
giving the pages where the words
appear in the deposition.
The Office proposes to remove
§ 2.123(i), which permits inspection by
parties and printing by the Office of
depositions after they are filed in the
Office. Subsections 2.123(j) through (l)
are renumbered §§ 2.123(i) through (k)
in conformance.
The Office proposes to amend
renumbered § 2.123(j) to add that
objection may be made to receiving in
evidence any declaration or affidavit.
The Office proposes to further amend
renumbered § 2.123(j) to provide that
objections may not be considered until
final hearing.
Depositions Upon Written Questions
The Office proposes to add new
§ 2.124(b)(3) to provide that a party
desiring to take cross-examination by
written questions of a witness who has
provided testimony by affidavit or
declaration shall serve notice on each
adverse party and file a copy of the
notice with the Board.
The Office proposes to amend
§ 2.124(d)(1) to clarify that the
procedures for examination on written
questions apply to both direct testimony
and cross-examination. The Office
proposes to further amend § 2.124(d)(1)
to specify procedure for crossexamination by written questions of a
witness who has provided testimony by
affidavit or declaration.
The Office proposes to add new
§ 2.124(d)(3) to provide that service of
written questions, responses, and crossexamination questions shall be in
accordance with § 2.119(b).
Filing and Service of Testimony
The Office proposes to amend § 2.125
to renumber paragraphs (a) through (e)
to (b) through (f) and to add new
§ 2.125(a) to require that one copy of a
declaration or affidavit prepared in
accordance with § 2.123, with exhibits,
shall be served on each adverse party at
the time the declaration or affidavit is
submitted to the Board during the
assigned testimony period.
The Office proposes to amend
renumbered § 2.125(b) to add a crossreference to § 2.124 and to clarify that
the subsection applies to testimony
depositions, including depositions on
written questions.
The Office proposes to amend
renumbered § 2.125(f) to permit sealing
of a part of an affidavit or declaration.
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Form of Submissions to the Trademark
Trial and Appeal Board
The Office proposes to amend § 2.126
to renumber paragraph (a) to (b) and to
add new paragraph (a) to require that
submissions to the Board shall be made
via ESTTA. The proposed amendment
codifies the use of electronic filing.
The Office proposes to add new
§ 2.126(a)(1) to require that text in an
electronic submission must be filed in at
least 12-point type and double-spaced.
The proposed amendment is consistent
with the proposed amendment to
§ 2.126(b)(1).
The Office proposes to add new
§ 2.126(a)(2) to require that exhibits
pertaining to an electronic submission
must be made electronically as an
attachment to the submission and must
be clear and legible. The proposed
amendment codifies the use of
electronic filing.
The Office proposes to amend
renumbered § 2.126(b) to permit
submissions in paper form in the event
that ESTTA is unavailable due to
technical problems or when
extraordinary circumstances are present.
The Office proposes to further amend
renumbered § 2.126(b) to require that
submissions in paper form must be
accompanied by a Petition to the
Director under § 2.146(a)(5), with the
required fees and showing.
The Office proposes to amend
renumbered § 2.126(b)(1) to require that
text in a paper submission must be filed
in at least 12-point type. The proposed
amendment is consistent with the
proposed amendment to § 2.126(a)(1).
The Office proposes to remove the
subsection previously designated
§ 2.126(b).
The Office proposes to amend
§ 2.126(c) to provide that submissions to
the Board that are confidential in whole
or part must be submitted using the
‘‘Confidential’’ selection available in
ESTTA or, where appropriate, under a
separate paper cover. The Office
proposes to further amend § 2.126(c) to
clarify that a redacted copy must be
submitted concurrently for public
viewing.
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Motions
The Office proposes to amend
§ 2.127(a) to reflect that all response
dates initiated by a service date are
twenty days. The Office proposes to
further amend § 2.127(a) to add that the
time for filing a reply brief will not be
reopened.
The Office proposes to amend
§ 2.127(b) to reflect that all response
dates initiated by a service date are
twenty days.
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The Office proposes to amend
§ 2.127(c) to add that conceded matters
and other matters not dispositive of a
proceeding may be acted on by a
Paralegal of the Board or by ESTTA and
that motions disposed of by orders
entitled ‘‘By the Trademark Trial and
Appeal Board’’ have the same legal
effect as orders by a panel of three
Administrative Trademark Judges of the
Board. The proposed amendments
codify current Office practice.
The Office proposes to amend
§ 2.127(d) to clarify that a case is
suspended when a party timely files any
potentially dispositive motion.
The Office proposes to amend
§ 2.127(e)(1) to require that a motion for
summary judgment must be filed prior
to the deadline for pretrial disclosures
for the first testimony period, rather
than the commencement of that period.
The Office proposes to further amend
§ 2.127(e)(1) to change references to
Rule 56(f) to 56(d) in conformance with
amendments to the Federal Rules of
Civil Procedure. The Office proposes to
further amend § 2.127(e)(1) to reflect
that the reply in support of a motion for
summary judgment is due twenty days
after service of the response. The Office
proposes to further amend § 2.127(e)(1)
to add that the time for filing a motion
under Rule 56(d) and a reply brief will
not be reopened.
The Office proposes to amend
§ 2.127(e)(2) to add that if a motion for
summary judgment is denied, the
parties may stipulate that the materials
submitted with briefs on the motion
shall be considered at trial as trial
evidence, which may be supplemented
by additional evidence during trial. The
proposed revision codifies an approach
used by parties in proceedings
incorporating ACR-type efficiencies at
trial.
Briefs at Final Hearing
The Office proposes to amend
§ 2.128(a)(3) to add that, when the Board
issues a show cause order for failure to
file a brief and there is no evidence of
record, if the party responds to the order
showing good cause why judgment
should not be entered based on loss of
interest but does not move to reopen its
testimony period based on demonstrable
excusable neglect, judgment may be
entered against the plaintiff for failure to
take testimony or submit evidence. The
proposed amendment codifies current
case law and practice and is consistent
with TBMP § 536 (2015).
The Office proposes to amend
§ 2.128(b) to add that evidentiary
objections may be set out in a separate
appendix that does not count against the
briefing page limit. The proposed
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amendment codifies current case law
and practice and is consistent with
TBMP § 801.03. The Office proposes to
further amend § 2.128(b) to add that
briefs exceeding the page limits may not
be considered by the Board, and this
also codifies existing practice.
Oral Argument; Reconsideration
The Office proposes to amend
§ 2.129(a) to clarify that all statutory
members of the Board may hear oral
argument. The Office proposes to
further amend § 2.129(a) to add that
parties and members of the Board may
attend oral argument in person or, at the
discretion of the Board, remotely. The
proposed amendment codifies current
Office practices and is consistent with
the Office’s proposed amendments to
§ 2.142(e)(1).
The Office proposes to amend
§ 2.129(b) to add that the Board may
deny a request to reset a hearing date for
lack of good cause or if multiple
requests for rescheduling have been
filed.
The Office proposes to amend
§ 2.129(c) to reflect that all response
dates initiated by a service date are
twenty days.
New Matter Suggested by the Trademark
Examining Attorney
The Office proposes to amend § 2.130
to add that if during an inter partes
proceeding involving an application the
examining attorney believes certain
facts render the mark unregistrable the
examining attorney should formally
request remand of the application rather
than simply notify the Board.
Involuntary Dismissal for Failure To
Take Testimony
The Office proposes to amend
§ 2.132(a) to clarify that, if a plaintiff has
not submitted evidence and its time for
taking testimony has expired, the Board
may grant judgment for the defendant
sua sponte. The Office proposes to
further amend § 2.132(a) to reflect that
all response dates initiated by a service
date are twenty days. The Office
proposes to amend further § 2.132(a) to
clarify the standard for the showing
required not to render judgment
dismissing the case is excusable neglect.
The Office proposes to amend
§ 2.132(b) to limit evidence to Office
records showing the current status and
title of a plaintiff’s pleaded registrations.
The Office proposes to further amend
§ 2.132(b) to reflect that all response
dates initiated by a service date are
twenty days. The Office proposes to
further amend § 2.132(b) to clarify that
the Board may decline to render
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judgment on a motion to dismiss until
all testimony periods have passed.
Surrender or Voluntary Cancellation of
Registration
The Office proposes to amend
§ 2.134(b) to clarify that the subsection
is applicable to extensions of protection
in accordance with the Madrid Protocol.
Status of Application on Termination of
Proceeding
The Office proposes to amend § 2.136
to specify when a proceeding will be
terminated by the Board and the status
of an application on termination of an
opposition or concurrent use
proceeding.
Appeals
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Time and Manner of Ex Parte Appeals
The Office proposes to amend § 2.142
to incorporate a nomenclature change
from ‘‘examiner’’ to ‘‘examining
attorney.’’
The Office proposes to amend
§ 2.142(b)(2) to add that a reply brief
from an appellant shall not exceed ten
pages in length and that no further
briefs are permitted unless authorized
by the Board.
The Office proposes to add new
§ 2.142(b)(3) to specify that citation to
evidence in briefs should be to the
documents in the electronic application
record by date, the name of the paper
under which the evidence was
submitted, and the page number in the
electronic record. The proposed
amendment is intended to facilitate
review of record evidence by the
applicant, the examining attorney, the
Board, and the public.
The Office proposes to amend
§ 2.142(c) to add that the statement of
issues in a brief should note that the
applicant has complied with all
requirements made by the examining
attorney and not the subject of appeal.
The Office proposes to amend
§ 2.142(d) to clarify that evidence shall
not be submitted after a notice of appeal
is filed. The proposed amendment more
directly states the existing rule. The
Office proposes to further amend
§ 2.142(d) for clarity, including by
specifying that an appellant or
examining attorney who desires to
introduce additional evidence after an
appeal is filed must submit a request to
the Board to suspend the appeal and
remand the application for further
examination.
The Office proposes to amend
§ 2.142(e)(1) to clarify that all statutory
members of the Board may hear oral
argument. The Office proposes to
further amend § 2.142(e)(1) to add that
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appellants, examining attorneys, and
members of the Board may attend oral
argument in person or, at the discretion
of the Board, remotely. The proposed
amendment codifies current Office
practice and is consistent with the
Office’s proposed amendments to
§ 2.129(a).
The Office proposes to amend
§ 2.142(e)(2) to add that a supervisory or
managing attorney may designate an
examining attorney to present oral
argument and to delete the provision
that the examining attorney designated
must be from the same examining
division.
The Office proposes to amend
§ 2.142(f)(1) to change the time for
further examination of an application on
remand from thirty days to the time set
by the Board.
Appeal to Court and Civil Action
The Office proposes to amend § 2.145
by reorganizing the subjects covered and
rewording some provisions to improve
the clarity and structure of the rule and
to align the provisions with the
analogous rules governing judicial
review of Patent Trial and Appeal Board
decisions in 37 CFR part 90.
From a restructuring standpoint,
certain proposed amendments result in
existing provisions being moved to a
different subsection of the rule.
Specifically, provisions regarding
appeals to the U.S. Court of Appeals for
the Federal Circuit, which currently
appear in subparts (a) and (b), are
proposed to be grouped together under
subpart (a). Provisions regarding the
process provided for in Section 21(a)(1)
of the Act, whereby an adverse party to
a Federal Circuit appeal of an inter
partes Board decision may file notice of
its election to have proceedings
conducted by way of a civil action, are
proposed to be moved from subpart (c),
which concerns civil actions, to revised
subpart (b), with the subheading ‘‘For a
notice of election under section 21(a)(1)
to proceed under section 21(b) of the
Act.’’
Substantively, throughout § 2.145, the
Office proposes to remove specific
references to times for taking action or
other requirements that are specified in
the Act or another set of rules (e.g.,
Federal Rules of Appellate Procedure)
and replace them with references to the
applicable section of the Act or rules
that set the time or requirements for the
specified action. These changes will
help ensure that parties consult the
applicable statute or rule itself and
avoid the need for the USPTO to amend
its regulations if the applicable
provision of the statute or rule changes.
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The Office also proposes to amend the
provisions in § 2.145 that require copies
of notices of appeal, notices of election,
and notices of civil action to be filed
with the Trademark Trial and Appeal
Board to specify that such notices must
be filed with the Board via ESTTA.
These proposed amendments codify the
use of electronic filing and enhance the
Office’s ability to handle properly
applications, registrations, and
proceedings while on review in federal
court.
Regarding amendments to the
requirements for appeals to the Federal
Circuit, the Office proposes to amend
§ 2.145(a) to add subsections (1)–(3).
The Office proposes to move the
language currently in § 2.145 (a) to new
(a)(1) and to amend it, in accordance
with Section 21(a) of the Act, to include
that a registrant who has filed an
affidavit or declaration under Section 71
of the Trademark Act and is dissatisfied
with the decision of the Director may
appeal. The Office proposes to further
amend § 2.145(a)(1) to add that it is
unnecessary to request reconsideration
before filing an appeal of a Board
decision, but a party requesting
reconsideration must do so before filing
a notice of appeal. Proposed
§§ 2.145(a)(2) and (3) specify the
requirements contained in current
§§ 2.145(a) and (b) for filing an appeal
to the Federal Circuit.
Regarding amendments to the
requirements for filing a civil action in
district court in § 2.145(c), the Office
proposes to add in § 2.145(c)(1) an
amendment corresponding to the
amendment to § 2.145(a)(1) that it is
unnecessary for a party to request
reconsideration before filing a civil
action seeking judicial review of a Board
decision, but a party requesting
reconsideration must do so before filing
the civil action. The Office proposes to
replace current § 2.145(c)(2) with a
provision that specifies the
requirements for serving the Director
with a complaint by an applicant or
registrant in an ex parte case who seeks
remedy by civil action under section
21(b) of the Act. The proposed
amendment, which references Federal
Rule of Civil Procedure 4(i) and § 104.2,
is intended to facilitate proper service of
complaints in such actions on the
Director. The Office proposes to replace
current § 2.145(c)(3) with a modified
version of the provision currently in
§ 2.145(c)(4), to specify that the party
who commences a civil action for
review of a Board decision in an inter
partes case must file notice thereof with
the Trademark Trial and Appeal Board
via ESTTA no later than five business
days after filing the complaint in district
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court. The addition of a time frame for
filing the notice of the civil action with
the Board, and explicitly stating that the
notice must identify the civil action
with particularity, is necessary to ensure
that the Board is timely notified when
parties seek judicial review of its
decisions and to avoid premature
termination of a proceeding.
The Office proposes to amend
§ 2.145(d) regarding time for appeal or
civil action by restructuring the
subsections by the type of action (i.e.,
(1) for an appeal to the Federal Circuit,
(2) for a notice of election, or (3) for a
civil action) and to add a new
subsection (d)(4)(i) regarding time
computation if a request for
reconsideration is filed. The Office
proposes to move the time computation
provision currently in (d)(2) regarding
when the last day of time falls on a
holiday to new subsection (d)(4)(ii) and
to omit the addition of one day to any
two-month time that includes February
28. The Office also proposes to change
the times for filing a notice of appeal or
commencing a civil action from two
months to sixty-three days (i.e., nine
weeks) from the date of the final
decision of the Board. The proposed
amendment aligns the times for appeal
from Board action with those for the
Patent Trial and Appeal Board in Part
90 of Title 37 of the Code of Federal
Regulations and is intended to simplify
calculation of the deadlines for taking
action.
The Office proposes to amend
§ 2.145(e) to specify that a request for
extension of time to seek judicial review
must be filed as provided in § 104.2 and
addressed to the attention of the Office
of the Solicitor, to which the Director
has delegated his or her authority to
decide such requests, with a copy filed
with the Board via ESTTA. The
proposed amendment is intended to
facilitate proper filing of and timely
action upon extension requests and to
avoid premature termination of a Board
proceeding.
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General Information and
Correspondence in Trademark Cases
Addresses for Trademark
Correspondence With the United States
Patent and Trademark Office
The Office proposes to amend
§§ 2.190(a) and (c) to reflect a
nomenclature change from the
Assignment Services Division to the
Assignment Recordation Branch. The
Office proposes to amend § 2.190(b) to
direct that documents in proceedings
before the Board be filed through
ESTTA. The proposed amendment
codifies the use of electronic filing.
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Business To Be Transacted in Writing
The Office proposes to amend § 2.191
to direct that documents in proceedings
before the Board be filed through
ESTTA. The proposed amendment
codifies the use of electronic filing.
Rulemaking Considerations
Administrative Procedure Act: The
changes in this rulemaking involve rules
of agency practice and procedure and/
or interpretive rules. See National
Organization of Veterans’ Advocates v.
Secretary of Veterans Affairs, 260 F.3d
1365, 1375 (Fed. Cir. 2001) (Rule that
clarifies interpretation of a statute is
interpretive.); Bachow Communications
Inc. v. FCC, 237 F.3d 683, 690 (D.C. Cir.
2001) (Rules governing an application
process are procedural under the
Administrative Procedure Act.); Inova
Alexandria Hospital v. Shalala, 244
F.3d 342, 350 (4th Cir. 2001) (Rules for
handling appeals were procedural
where they did not change the
substantive standard for reviewing
claims.).
Accordingly, prior notice and
opportunity for public comment for the
rule changes are not required pursuant
to 5 U.S.C. 553(b) or (c), or any other
law. See Cooper Techs. Co. v. Dudas,
536 F.3d 1330, 1336–37 (Fed. Cir. 2008)
(stating that 5 U.S.C. 553, and thus 35
U.S.C. 2(b)(2), does not require notice
and comment rulemaking for
‘‘interpretative rules, general statements
of policy, or rules of agency
organization, procedure, or practice’’
(quoting 5 U.S.C. 553(b)(A))). However,
the Office chose to seek public comment
before implementing the rule to benefit
from the public’s input.
Regulatory Flexibility Act: Under the
Regulatory Flexibility Act (RFA) (5
U.S.C. 601 et seq.), whenever an agency
is required by 5 U.S.C. 553 (or any other
law) to publish a notice of proposed
rulemaking (NPRM), the agency must
prepare and make available for public
comment an Initial Regulatory
Flexibility Analysis, unless the agency
certifies under 5 U.S.C. 605(b) that the
proposed rule, if implemented, will not
have a significant economic impact on
a substantial number of small entities. 5
U.S.C. 603, 605.
For the reasons set forth herein, the
Deputy General Counsel for General
Law of the United States Patent and
Trademark Office has certified to the
Chief Counsel for Advocacy of the Small
Business Administration that this rule
will not have a significant economic
impact on a substantial number of small
entities. See 5 U.S.C. 605(b).
The proposed rules involve changes
to rules of agency practice and
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procedure in matters before the
Trademark Trial and Appeal Board. The
primary changes are to codify certain
existing practices, increase efficiency
and streamline proceedings, and
provide greater clarity as to certain
requirements in Board proceedings. The
proposed rules do not alter any
substantive criteria used to decide cases.
The proposed rules will apply to all
persons appearing before the Board.
Applicants for a trademark are not
industry specific and may consist of
individuals, small businesses, nonprofit organizations, and large
corporations. The USPTO does not
collect or maintain statistics in Board
cases on small- versus large-entity
applicants, and this information would
be required in order to determine the
number of small entities that would be
affected by the proposed rules.
The burdens, if any, to all entities,
including small entities, imposed by
these rule changes will be minor and
consist of additional responsibilities
and procedural requirements on parties
appearing before the Board. Two
possible sources of burden may come
from the proposed requirement that all
submissions will be filed through the
Board’s online filing system, the
Electronic System for Trademark Trials
and Appeals (‘‘ESTTA’’), except in
certain limited circumstances, and the
requirement that service between parties
be conducted by email for all filings
with the Board and any other papers.
For impacted entities that do not have
the necessary equipment and internet
service, this may result in additional
costs to obtain this ability or to petition
to file on paper. However, the USPTO
does not anticipate this requirement to
impact a significant number of entities
impacted by this rule as well over 95
percent of filings are already submitted
electronically, and it is common
practice among parties to use electronic
service for all filings with the Board.
In most instances the rule changes
will lessen the burdens on parties,
including small entities. For example,
the Office proposes shifting away from
the parties to itself the obligation to
serve notices of opposition, petitions for
cancellation, and concurrent use
proceedings. Moreover, the proposed
rules provide for the option of electronic
service of other documents among the
parties to a proceeding, thereby
eliminating the existing need to arrange
for the mailing or hand delivery of these
documents. Also, the Office proposes
making discovery less onerous for the
parties by imposing limitations on the
volume of discovery, incorporating a
proportionality requirement, and
allowing parties to present direct
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testimony by affidavit or declaration.
The proposed rules also keep burdens
and costs lower for the parties by
permitting remote attendance at oral
hearings, thereby eliminating the need
for travel to appear in person. Overall,
the proposed rules will have a net
benefit to the parties to proceedings by
increasing convenience, providing
efficiency and clarity in the process, and
streamlining the procedures. Therefore,
this action will not have a significant
economic impact on a substantial
number of small entities.
Executive Order 12866: This rule has
been determined not to be significant for
purposes of Executive Order 12866.
Executive Order 13563 (Improving
Regulation and Regulatory Review): The
Office has complied with Executive
Order 13563 (Jan. 18, 2011).
Specifically, the Office has, to the extent
feasible and applicable: (1) Made a
reasoned determination that the benefits
justify the costs of the rule changes; (2)
tailored the rule to impose the least
burden on society consistent with
obtaining the regulatory objectives; (3)
selected a regulatory approach that
maximizes net benefits; (4) specified
performance objectives; (5) identified
and assessed available alternatives; (6)
provided the public with a meaningful
opportunity to participate in the
regulatory process, including soliciting
the views of those likely affected prior
to issuing a notice of proposed
rulemaking, and provided online access
to the rulemaking docket; (7) attempted
to promote coordination, simplification,
and harmonization across government
agencies and identified goals designed
to promote innovation; (8) considered
approaches that reduce burdens and
maintain flexibility and freedom of
choice for the public; and (9) ensured
the objectivity of scientific and
technological information and
processes, to the extent applicable.
Executive Order 13132: This rule does
not contain policies with federalism
implications sufficient to warrant
preparation of a Federalism Assessment
under Executive Order 13132 (Aug. 4,
1999).
Congressional Review Act: Under the
Congressional Review Act provisions of
the Small Business Regulatory
Enforcement Fairness Act of 1996 (5
U.S.C. 801 et seq.), prior to issuing any
final rule, the Office will submit a report
containing the final rule and other
required information to the U.S. Senate,
the U.S. House of Representatives, and
the Comptroller General of the
Government Accountability Office. The
changes in this rule are not expected to
result in an annual effect on the
economy of 100 million dollars or more,
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a major increase in costs or prices, or
significant adverse effects on
competition, employment, investment,
productivity, innovation, or the ability
of U.S.-based enterprises to compete
with foreign-based enterprises in
domestic and export markets. Therefore,
this rule change is not expected to result
in a ‘‘major rule’’ as defined in 5 U.S.C.
804(2).
Unfunded Mandate Reform Act of
1995: The Unfunded Mandates Reform
Act (2 U.S.C. 1501 et seq.) requires that
agencies prepare an assessment of
anticipated costs and benefits before
issuing any rule that may result in
expenditure by State, local, and tribal
governments, in the aggregate, or by the
private sector, of $100 million or more
(adjusted annually for inflation) in any
given year. This rule will have no such
effect on State, local, and tribal
governments or the private sector.
Paperwork Reduction Act: The
Paperwork Reduction Act of 1995 (44
U.S.C. 3501–3549) requires that the
Office consider the impact of paperwork
and other information collection
burdens imposed on the public. This
proposed rule involves information
collection requirements that are subject
to review by the Office of Management
and Budget (OMB) under the Paperwork
Reduction Act of 1995 (44 U.S.C. 3501–
3549). The collections of information
involved in this rulemaking have been
reviewed and previously approved by
OMB under control numbers 0651–
0054. This proposed rule, if adopted,
would shift a greater portion of paper
filings to electronic filings. However,
this rulemaking would not add any
additional information requirements or
fees for parties before the Board, and
therefore, it would not materially
change the information collection
burdens approved under the OMB
control number 0651–0054. If the
proposed rule is adopted, the Office will
submit a change worksheet to the
information collection to recognize the
greater shift of filings to an electronic
format and enter any related
adjustments. Notwithstanding any other
provision of law, no person is required
to respond to, nor shall any person be
subject to, a penalty for failure to
comply with a collection of information
subject to the requirements of the
Paperwork Reduction Act unless that
collection of information displays a
currently valid OMB control number.
List of Subjects
37 CFR Part 2
Administrative practice and
procedure, Trademarks.
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For the reasons given in the preamble
and under the authority contained in 15
U.S.C. 1113, 15 U.S.C. 1123, and 35
U.S.C. 2, as amended, the Office
proposes to amend part 2 of title 37 as
follows:
PART 2—RULES OF PRACTICE IN
TRADEMARK CASES
1. The authority citation for 37 CFR
part 2 continues to read as follows:
■
Authority: 15 U.S.C. 1113, 15 U.S.C. 1123,
35 U.S.C. 2, Section 10(c) of Pub. L. 112–29,
unless otherwise noted.
■
2. Revise § 2.92 to read as follows:
§ 2.92
Preliminary to interference.
An interference which has been
declared by the Director will not be
instituted by the Trademark Trial and
Appeal Board until the examining
attorney has determined that the marks
which are to form the subject matter of
the controversy are registrable, and all
of the marks have been published in the
Official Gazette for opposition.
■ 3. In § 2.98 revise the second sentence
to read as follows:
§ 2.98
Adding party to interference.
* * * If an application which is or
might be the subject of a petition for
addition to an interference is not added,
the examining attorney may suspend
action on the application pending
termination of the interference
proceeding.
■ 4. In § 2.99 revise paragraphs (c),
(d)(1), (d)(2), (d)(3), and (f)(3) to read as
follows:
§ 2.99 Application to register as
concurrent user.
*
*
*
*
*
(c) If no opposition is filed, or if all
oppositions that are filed are dismissed
or withdrawn, the Trademark Trial and
Appeal Board will send a notice of
institution to the applicant for
concurrent use registration (plaintiff)
and to each applicant, registrant or user
specified as a concurrent user in the
application (defendants). The notice for
each defendant shall state the name and
address of the plaintiff and of the
plaintiff’s attorney or other authorized
representative, if any, together with the
serial number and filing date of the
application. If a party has provided the
Office with an email address, the notice
will be transmitted via email.
(d)(1) The Board’s notice of institution
will include a web link or web address
for the concurrent use application
proceeding contained in Office records.
(2) An answer to the notice is not
required in the case of an applicant or
registrant whose application or
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registration is acknowledged by the
concurrent use applicant in the
concurrent use application, but a
statement, if desired, may be filed
within forty days after the issuance of
the notice; in the case of any other party
specified as a concurrent user in the
application, an answer must be filed
within forty days after the issuance of
the notice.
(3) If an answer, when required, is not
filed, judgment will be entered
precluding the defaulting user from
claiming any right more extensive than
that acknowledged in the application(s)
for concurrent use registration, but the
burden of proving entitlement to
registration(s) will remain with the
concurrent use applicant(s).
*
*
*
*
*
(f) * * *
(3) A true copy of the court decree is
submitted to the examining attorney;
and
*
*
*
*
*
■ 5. Revise § 2.101 to read as follows:
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§ 2.101
Filing an opposition.
(a) An opposition proceeding is
commenced by filing in the Office a
timely notice of opposition with the
required fee.
(b) Any person who believes that he,
she or it would be damaged by the
registration of a mark on the Principal
Register may file an opposition
addressed to the Trademark Trial and
Appeal Board. The opposition need not
be verified, but must be signed by the
opposer or the opposer’s attorney, as
specified in § 11.1 of this chapter, or
other authorized representative, as
specified in § 11.14(b) of this chapter.
Electronic signatures pursuant to
§ 2.193(c) are required for oppositions
filed through ESTTA under paragraphs
(b)(1) or (2) of this section.
(1) An opposition to an application
must be filed through ESTTA. In the
event that ESTTA is unavailable due to
technical problems, or when
extraordinary circumstances are present,
an opposition against an application
based on Section 1 or 44 of the Act may
be filed in paper form. An opposition to
an application based on Section 66(a) of
the Act must be filed through ESTTA
and may not under any circumstances
be filed in paper form.
(2) A paper opposition to an
application based on Section 1 or 44 of
the Act must be filed by the due date set
forth in paragraph (c) of this section and
be accompanied by a Petition to the
Director under § 2.146(a)(5), with the
fees therefor and the showing required
under paragraph (b)(1) of this section.
Timeliness of the paper submission will
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be determined in accordance with
§§ 2.195 through 2.198.
(c) The opposition must be filed
within thirty days after publication
(§ 2.80) of the application being opposed
or within an extension of time (§ 2.102)
for filing an opposition. The opposition
must be accompanied by the required
fee for each party joined as opposer for
each class in the application for which
registration is opposed (see § 2.6).
(d) An otherwise timely opposition
cannot be filed via ESTTA unless the
opposition is accompanied by a fee that
is sufficient to pay in full for each
named party opposer to oppose the
registration of a mark in each class
specified in the opposition. A paper
opposition that is not accompanied by
the required fee sufficient to pay in full
for each named party opposer for each
class in the application for which
registration is opposed may not be
instituted. If time remains in the
opposition period as originally set or as
extended by the Board, the potential
opposer may resubmit the opposition
with the required fee.
(e) The filing date of an opposition is
the date of electronic receipt in the
Office of the notice of opposition, and
required fee. In the rare instances that
filing by paper is permitted under these
rules, the filing date will be determined
in accordance with §§ 2.195 through
2.198.
■ 6. Amend § 2.102 by revising:
■ a. Paragraphs (a), (b), (c)(1), and (c)(2);
■ b. Add a new second sentence after
the first sentence in paragraph (c)(3);
■ c. Add new paragraph (d), and;
■ d. Add and reserve paragraph (e) to
read as follows:
§ 2.102 Extension of time for filing an
opposition.
(a) Any person who believes that he,
she or it would be damaged by the
registration of a mark on the Principal
Register may file a request with the
Trademark Trial and Appeal Board to
extend the time for filing an opposition.
The request need not be verified, but
must be signed by the potential opposer
or by the potential opposer’s attorney, as
specified in § 11.1 of this chapter, or
authorized representative, as specified
in § 11.14(b) of this chapter. Electronic
signatures pursuant to § 2.193(c) are
required for electronically filed
extension requests.
(1) A request to extend the time for
filing an opposition to an application
must be filed through ESTTA. In the
event that ESTTA is unavailable due to
technical problems, or when
extraordinary circumstances are present,
a request to extend the opposition
period for an application based on
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19309
Section 1 or 44 of the Act may be filed
in paper form by the opposition due
date set forth in § 2.101(c). A request to
extend the opposition period for an
application based on Section 66(a) of
the Act must be filed through ESTTA
and may not under any circumstances
be filed in paper form.
(2) A paper request to extend the
opposition period for an application
based on Section 1 or 44 of the Act must
be filed by the due date set forth in
§ 2.101(c) and be accompanied by a
Petition to the Director under
§ 2146(a)(5), with the fees therefor and
the showing required under paragraph
(a)(1) of this section. Timeliness of the
paper submission will be determined in
accordance with §§ 2.195 through 2.198.
(b) A request to extend the time for
filing an opposition must identify the
potential opposer with reasonable
certainty. Any opposition filed during
an extension of time must be in the
name of the person to whom the
extension was granted, except that an
opposition may be accepted if the
person in whose name the extension
was requested was misidentified
through mistake or if the opposition is
filed in the name of a person in privity
with the person who requested and was
granted the extension of time.
(c) * * *
(1) A person may file a first request
for (i) either a thirty-day extension of
time, which will be granted upon
request, or (ii) a ninety-day extension of
time, which will be granted only for
good cause shown. A sixty-day
extension is not available as a first
extension of time to oppose.
(2) If a person was granted an initial
thirty-day extension of time, that person
may file a request for an additional
sixty-day extension of time, which will
be granted only for good cause shown.
(3) * * * No other time period will be
allowed for a final extension of the
opposition period. * * *
(d) The filing date of a request to
extend the time for filing an opposition
is the date of electronic receipt in the
Office of the request. In the rare instance
that filing by paper is permitted under
these rules, the filing date will be
determined in accordance with §§ 2.195
through 2.198.
(e) Fees. [Reserved]
■ 7. Add and reserve § 2.103 to read as
follows:
§ 2.103
[Reserved]
8. Amend § 2.104 by revising
paragraph (a), and adding new
paragraph (c) to read as follows:
■
§ 2.104
Contents of opposition.
(a) The opposition must set forth a
short and plain statement showing why
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the opposer believes he, she or it would
be damaged by the registration of the
opposed mark and state the grounds for
opposition. ESTTA requires the opposer
to select relevant grounds for
opposition. The required accompanying
statement supports and explains the
grounds.
*
*
*
*
*
(c) An opposition to an application
filed under Section 66(a) of the Act
must identify the goods and/or services
opposed and the grounds for opposition
on the ESTTA cover sheet as well as in
the accompanying statement.
Opposition to a Section 66(a)
application may not be amended to
include goods, services or grounds
beyond those set forth in the ESTTA
cover sheet.
■ 9. Revise § 2.105 to read as follows:
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§ 2.105 Notification to parties of
opposition proceeding(s).
(a) When an opposition in proper
form (see §§ 2.101 and 2.104) has been
filed with the correct fee(s), and the
opposition has been determined to be
timely and complete, the Trademark
Trial and Appeal Board shall prepare a
notice of institution, which shall
identify the proceeding as an
opposition, number of the proceeding,
and the application(s) involved; and the
notice shall designate a time, not less
than thirty days from the mailing date
of the notice, within which an answer
must be filed. If a party has provided the
Office with an email address, the notice
will be transmitted via email. The
notice, which will include a web link or
web address to access the electronic
proceeding record, constitutes service of
the notice of opposition to the
applicant.
(b) The Board shall forward a copy of
the notice to opposer, as follows:
(1) If the opposition is transmitted by
an attorney, or a written power of
attorney is filed, the Board will send the
notice to the attorney transmitting the
opposition or to the attorney designated
in the power of attorney, provided that
the person is an ‘‘attorney’’ as defined
in § 11.1 of this chapter, at the email or
correspondence address for the attorney.
(2) If opposer is not represented by an
attorney in the opposition, but opposer
has appointed a domestic
representative, the Board will send the
notice to the domestic representative, at
the email or correspondence address of
record for the domestic representative,
unless opposer designates in writing
another correspondence address.
(3) If opposer is not represented by an
attorney in the opposition, and no
domestic representative has been
appointed, the Board will send the
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notice directly to opposer at the email
or correspondence address of record for
opposer, unless opposer designates in
writing another correspondence
address.
(c) The Board shall forward a copy of
the notice to applicant, as follows:
(1) If the opposed application
contains a clear indication that the
application is being prosecuted by an
attorney, as defined in § 11.1 of this
chapter, the Board shall send the notice
described in this section to applicant’s
attorney at the email or correspondence
address of record for the attorney.
(2) If the opposed application is not
being prosecuted by an attorney but a
domestic representative has been
appointed, the Board will send the
notice described in this section to the
domestic representative, at the email or
correspondence address of record for
the domestic representative, unless
applicant designates in writing another
correspondence address.
(3) If the opposed application is not
being prosecuted by an attorney, and no
domestic representative has been
appointed, the Board will send the
notice described in this section directly
to applicant, at the email or
correspondence address of record for
the applicant, unless applicant
designates in writing another
correspondence address.
■ 10. Amend § 2.106 by revising
paragraphs (a) and (b) to read as follows:
§ 2.106
Answer.
(a) If no answer is filed within the
time initially set, or as may later be reset
by the Board, the opposition may be
decided as in case of default. The failure
to file a timely answer tolls all
deadlines, including the discovery
conference, until the issue of default is
resolved.
(b)(1) An answer shall state in short
and plain terms the applicant’s defenses
to each claim asserted and shall admit
or deny the averments upon which the
opposer relies. If the applicant is
without knowledge or information
sufficient to form a belief as to the truth
of an averment, applicant shall so state
and this will have the effect of a denial.
Denials may take any of the forms
specified in Rule 8(b) of the Federal
Rules of Civil Procedure. An answer
may contain any defense, including the
affirmative defenses of unclean hands,
laches, estoppel, acquiescence, fraud,
mistake, prior judgment, or any other
matter constituting an avoidance or
affirmative defense. When pleading
special matters, the Federal Rules of
Civil Procedure shall be followed. A
reply to an affirmative defense shall not
be filed. When a defense attacks the
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validity of a registration pleaded in the
opposition, paragraph (b)(2) of this
section shall govern. A pleaded
registration is a registration identified
by number by the party in the position
of plaintiff in an original notice of
opposition or in any amendment thereto
made under Rule 15 of the Federal
Rules of Civil Procedure.
(2)(i) A defense attacking the validity
of any one or more of the registrations
pleaded in the opposition shall be a
compulsory counterclaim if grounds for
such counterclaim exist at the time
when the answer is filed. If grounds for
a counterclaim are known to the
applicant when the answer to the
opposition is filed, the counterclaim
shall be pleaded with or as part of the
answer. If grounds for a counterclaim
are learned during the course of the
opposition proceeding, the counterclaim
shall be pleaded promptly after the
grounds therefor are learned. A
counterclaim need not be filed if the
claim is the subject of another
proceeding between the same parties or
anyone in privity therewith; but the
applicant must promptly inform the
Board, in the context of the opposition
proceeding, of the filing of the other
proceeding.
(ii) An attack on the validity of a
registration pleaded by an opposer will
not be heard unless a counterclaim or
separate petition is filed to seek the
cancellation of such registration.
(iii) The provisions of §§ 2.111
through 2.115, inclusive, shall be
applicable to counterclaims. A time, not
less than thirty days, will be designated
by the Board within which an answer to
the counterclaim must be filed.
(iv) The times for pleading, discovery,
testimony, briefs or oral argument may
be reset or extended when necessary,
upon motion by a party, or as the Board
may deem necessary, to enable a party
fully to present or meet a counterclaim
or separate petition for cancellation of a
registration.
*
*
*
*
*
■ 11. Revise § 2.107 to read as follows:
§ 2.107 Amendment of pleadings in an
opposition proceeding.
(a) Pleadings in an opposition
proceeding against an application filed
under section 1 or 44 of the Act may be
amended in the same manner and to the
same extent as in a civil action in a
United States district court, except that,
after the close of the time period for
filing an opposition including any
extension of time for filing an
opposition, an opposition may not be
amended to add to the goods or services
opposed, or to add a joint opposer.
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(b) Pleadings in an opposition
proceeding against an application filed
under section 66(a) of the Act may be
amended in the same manner and to the
same extent as in a civil action in a
United States district court, except that,
once filed, the opposition may not be
amended to add grounds for opposition
or goods or services beyond those
identified in the notice of opposition, or
to add a joint opposer. The grounds for
opposition, the goods or services
opposed, and the named opposers are
limited to those identified in the ESTTA
cover sheet regardless of what is
contained in any attached statement.
■ 12. Revise § 2.111 to read as follows:
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§ 2.111
Filing petition for cancellation.
(a) A cancellation proceeding is
commenced by filing in the Office a
timely petition for cancellation with the
required fee.
(b) Any person who believes that he,
she or it is or will be damaged by a
registration may file a petition,
addressed to the Trademark Trial and
Appeal Board, for cancellation of the
registration in whole or in part. The
petition for cancellation need not be
verified, but must be signed by the
petitioner or the petitioner’s attorney, as
specified in § 11.1 of this chapter, or
other authorized representative, as
specified in § 11.14(b) of this chapter.
Electronic signatures pursuant to
§ 2.193(c) are required for petitions
submitted electronically via ESTTA.
The petition for cancellation may be
filed at any time in the case of
registrations on the Supplemental
Register or under the Act of 1920, or
registrations under the Act of 1881 or
the Act of 1905 which have not been
published under section 12(c) of the
Act, or on any ground specified in
section 14(3) or (5) of the Act. In all
other cases, the petition for cancellation
and the required fee must be filed
within five years from the date of
registration of the mark under the Act or
from the date of publication under
section 12(c) of the Act.
(c)(1) A petition to cancel a
registration must be filed through
ESTTA. In the event that ESTTA is
unavailable due to technical problems,
or when extraordinary circumstances
are present, a petition to cancel may be
filed in paper form as provided in
paragraph (c)(2) of this section.
(2) A paper petition to cancel a
registration must be accompanied by a
Petition to the Director under
§ 2.146(a)(5), with the fees therefor and
the showing required under paragraph
(c)(1) of this section. Timeliness of the
paper submission, if relevant to a
ground asserted in the petition to
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cancel, will be determined in
accordance with §§ 2.195 through 2.198.
(d) The petition for cancellation must
be accompanied by the required fee for
each party joined as petitioner for each
class in the registration(s) for which
cancellation is sought (see § 2.6). A
petition cannot be filed via ESTTA
unless the petition is accompanied by a
fee that is sufficient to pay in full for
each named petitioner to seek
cancellation of the registration(s) in
each class specified in the petition. A
petition filed in paper form that is not
accompanied by a fee sufficient to pay
in full for each named petitioner for
each class in the registration(s) for
which cancellation is sought may not be
instituted.
(e) The filing date of a petition for
cancellation is the date of electronic
receipt in the Office of the petition and
required fee. In the rare instances that
filing by paper is permitted under these
rules, the filing date of a petition for
cancellation is the date identified in
§ 2.198.
■ 13. Revise § 2.112 to read as follows:
§ 2.112 Contents of petition for
cancellation.
(a) The petition for cancellation must
set forth a short and plain statement
showing why the petitioner believes he,
she or it is or will be damaged by the
registration, state the ground for
cancellation, and indicate, to the best of
petitioner’s knowledge, the name and
address, and a current email address(es),
of the current owner of the registration,
and of any attorney, as specified in
§§ 11.14(a) and (c) of this Chapter,
reasonably believed by the petitioner to
be a possible representative of the
owner in matters regarding the
registration. ESTTA requires the
petitioner to select relevant grounds for
petition to cancel. The required
accompanying statement supports and
explains the grounds.
(b) When appropriate, petitions for
cancellation of different registrations
owned by the same party may be joined
in a consolidated petition for
cancellation. The required fee must be
included for each party joined as a
petitioner for each class sought to be
cancelled in each registration against
which the petition for cancellation has
been filed.
■ 14. Revise § 2.113 to read as follows:
§ 2.113 Notification of cancellation
proceeding.
(a) When a petition for cancellation in
proper form (see §§ 2.111 and 2.112) has
been filed and the correct fee has been
submitted, the Trademark Trial and
Appeal Board shall prepare a notice of
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19311
institution which shall identify the
proceeding as a cancellation, number of
the proceeding and the registration(s)
involved; and shall designate a time, not
less than thirty days from the mailing
date of the notice, within which an
answer must be filed. If a party has
provided the Office with an email
address, the notice will be transmitted
via email. The notice, which will
include a web link or web address to
access the electronic proceeding record,
constitutes service to the registrant of
the petition to cancel.
(b) The Board shall forward a copy of
the notice to petitioner, as follows:
(1) If the petition for cancellation is
transmitted by an attorney, or a written
power of attorney is filed, the Board will
send the notice to the attorney
transmitting the petition for cancellation
or to the attorney designated in the
power of attorney, provided that person
is an ‘‘attorney’’ as defined in § 11.1 of
this chapter, to the attorney’s email or
correspondence address of record for
the attorney.
(2) If petitioner is not represented by
an attorney in the cancellation
proceeding, but petitioner has
appointed a domestic representative, the
Board will send the notice to the
domestic representative, at the email or
correspondence address of record for
the domestic representative, unless
petitioner designates in writing another
correspondence address.
(3) If petitioner is not represented by
an attorney in the cancellation
proceeding, and no domestic
representative has been appointed, the
Board will send the notice directly to
petitioner, at the email or
correspondence address of record for
petitioner, unless petitioner designates
in writing another correspondence
address.
(c)(1) The Board shall forward a copy
of the notice to the party shown by the
records of the Office to be the current
owner of the registration(s) sought to be
cancelled, except that the Board, in its
discretion, may join or substitute as
respondent a party who makes a
showing of a current ownership interest
in such registration(s).
(2) If the respondent has appointed a
domestic representative, and such
appointment is reflected in the Office’s
records, the Board will send the notice
only to the domestic representative at
the email or correspondence address of
record for the domestic representative.
(3) In the case of a registration issued
under 15 U.S.C. 1141i, notice will be
sent to the international registration
holder’s designated representative. The
notice, which will include a web link or
web address to access the electronic
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proceeding record, constitutes service to
respondent of the petition to cancel.
(d) When the party alleged by the
petitioner, pursuant to § 2.112(a), as the
current owner of the registration(s) is
not the record owner, a courtesy copy of
the notice with a web link or web
address to access the electronic
proceeding record shall be forwarded to
the alleged current owner. The alleged
current owner may file a motion to be
joined or substituted as respondent.
■ 15. Revise § 2.114 to read as follows:
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§ 2.114
Answer.
(a) If no answer is filed within the
time initially set, or as may later be reset
by the Board, the petition may be
decided as in case of default. The failure
to file a timely answer tolls all
deadlines, including the discovery
conference, until the issue of default is
resolved.
(b)(1) An answer shall state in short
and plain terms the respondent’s
defenses to each claim asserted and
shall admit or deny the averments upon
which the petitioner relies. If the
respondent is without knowledge or
information sufficient to form a belief as
to the truth of an averment, respondent
shall so state and this will have the
effect of a denial. Denials may take any
of the forms specified in Rule 8(b) of the
Federal Rules of Civil Procedure. An
answer may contain any defense,
including the affirmative defenses of
unclean hands, laches, estoppel,
acquiescence, fraud, mistake, prior
judgment, or any other matter
constituting an avoidance or affirmative
defense. When pleading special matters,
the Federal Rules of Civil Procedure
shall be followed. A reply to an
affirmative defense need not be filed.
When a defense attacks the validity of
a registration pleaded in the petition,
paragraph (b)(2) of this section shall
govern. A pleaded registration is a
registration identified by number by the
party in position of plaintiff in an
original petition for cancellation, or a
counterclaim petition for cancellation,
or in any amendment thereto made
under Rule 15 of the Federal Rules of
Civil Procedure.
(2)(i) A defense attacking the validity
of any one or more of the registrations
pleaded in the petition shall be a
compulsory counterclaim if grounds for
such counterclaim exist at the time
when the answer is filed. If grounds for
a counterclaim are known to respondent
when the answer to the petition is filed,
the counterclaim shall be pleaded with
or as part of the answer. If grounds for
a counterclaim are learned during the
course of the cancellation proceeding,
the counterclaim shall be pleaded
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promptly after the grounds therefor are
learned. A counterclaim need not be
filed if the claim is the subject of
another proceeding between the same
parties or anyone in privity therewith;
but the party in position of respondent
and counterclaim plaintiff must
promptly inform the Board, in the
context of the primary cancellation
proceeding, of the filing of the other
proceeding.
(ii) An attack on the validity of a
registration pleaded by a petitioner for
cancellation will not be heard unless a
counterclaim or separate petition is filed
to seek the cancellation of such
registration.
(iii) The provisions of §§ 2.111
through 2.115, inclusive, shall be
applicable to counterclaims. A time, not
less than thirty days, will be designated
by the Board within which an answer to
the counterclaim must be filed. Such
response period may be reset as
necessary by the Board, for a time
period to be determined by the Board.
(iv) The times for pleading, discovery,
testimony, briefs, or oral argument may
be reset or extended when necessary,
upon motion by a party, or as the Board
may deem necessary, to enable a party
fully to present or meet a counterclaim
or separate petition for cancellation of a
registration.
(c) The petition for cancellation or
counterclaim petition for cancellation
may be withdrawn without prejudice
before the answer is filed. After the
answer is filed, such petition or
counterclaim petition may not be
withdrawn without prejudice except
with the written consent of the
registrant or the registrant’s attorney or
other authorized representative.
■ 16. Amend § 2.116 by revising
paragraphs (c) and (e) through (g) to
read as follows:
§ 2.116
Federal Rules of Civil Procedure.
*
*
*
*
*
(c) The notice of opposition or the
petition for cancellation and the answer
correspond to the complaint and answer
in a court proceeding.
*
*
*
*
*
(e) The submission of notices of
reliance, declarations and affidavits, as
well as the taking of depositions, during
the assigned testimony periods
correspond to the trial in court
proceedings.
(f) Oral hearing, if requested, of
arguments on the record and merits
corresponds to oral summation in court
proceedings.
(g) The Trademark Trial and Appeal
Board’s standard protective order is
automatically imposed in all inter partes
proceedings unless the parties, by
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stipulation approved by the Board, agree
to an alternative order, or a motion by
a party to use an alternative order is
granted by the Board. The standard
protective order is available at the
Office’s Web site. No material disclosed
or produced by a party, presented at
trial, or filed with the Board, including
motions or briefs which discuss such
material, shall be treated as confidential
or shielded from public view unless
designated as protected under the
Board’s standard protective order, or
under an alternative order stipulated to
by the parties and approved by the
Board, or under an order submitted by
motion of a party granted by the Board.
The Board may treat as not confidential
that material which cannot reasonably
be considered confidential,
notwithstanding a designation as such
by a party.
■ 17. Amend by revising § 2.117
paragraph (c) to read as follows:
§ 2.117
Suspension of proceedings.
*
*
*
*
*
(c) Proceedings may also be
suspended sua sponte by the Board, or,
for good cause, upon motion or a
stipulation of the parties approved by
the Board. Many consented or stipulated
motions to suspend are suitable for
automatic approval by ESTTA, but the
Board retains discretion to condition
approval on the party or parties
providing necessary information about
the status of settlement talks, discovery
activities, or trial activities, as may be
appropriate.
■ 18. Revise § 2.118 to read as follows:
§ 2.118
Undelivered Office notices.
When a notice sent by the Office to
any registrant or applicant is returned to
the Office undelivered, including
notification to the Office of non-delivery
in paper or electronic form, additional
notice may be given by publication in
the Official Gazette.
■ 19. Revise § 2.119 and the heading to
read as follows:
§ 2.119
Service and signing.
(a) Except for the notice of opposition
or the petition to cancel, every
submission filed in the Office in inter
partes cases, including notices of appeal
to the courts, must be served upon the
other party or parties. Proof of such
service must be made before the
submission will be considered by the
Office. A statement signed by the
attorney or other authorized
representative, attached to or appearing
on the original submission when filed,
clearly stating the date and manner in
which service was made will be
accepted as prima facie proof of service.
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(b) Service of submissions filed with
the Board and any other papers served
on a party not required to be filed with
the Board, must be on the attorney or
other authorized representative of the
party if there be such or on the party if
there is no attorney or other authorized
representative, and must be made by
email, unless otherwise stipulated, or if
the serving party can show by written
explanation accompanying the
submission or paper, or in a subsequent
amended certificate of service, that
service by email was attempted but
could not be made due to technical
problems or extraordinary
circumstances, then service may be
made in any of the following ways:
(1) By delivering a copy of the
submission or paper to the person
served;
(2) By leaving a copy at the usual
place of business of the person served,
with someone in the person’s
employment;
(3) When the person served has no
usual place of business, by leaving a
copy at the person’s residence, with
some person of suitable age and
discretion who resides there;
(4) Transmission by the Priority Mail
Express® Post Office to Addressee
service of the United States Postal
Service or by first-class mail, which may
also be certified or registered;
(5) Transmission by overnight courier;
(6) Other forms of electronic
transmission.
(c) When service is made by first-class
mail, Priority Mail Express®, or
overnight courier, the date of mailing or
of delivery to the overnight courier will
be considered the date of service.
(d) If a party to an inter partes
proceeding is not domiciled in the
United States and is not represented by
an attorney or other authorized
representative located in the United
States, none of the parties to the
proceeding is eligible to use the service
option under paragraph (b)(4) of this
section. The party not domiciled in the
United States may designate by
submission filed in the Office the name
and address of a person residing in the
United States on whom may be served
notices or process in the proceeding. If
the party has appointed a domestic
representative, official communications
of the Office will be addressed to the
domestic representative unless the
proceeding is being prosecuted by an
attorney at law or other qualified person
duly authorized under § 11.14(c) of this
subchapter. If the party has not
appointed a domestic representative and
the proceeding is not being prosecuted
by an attorney at law or other qualified
person, the Office will send
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correspondence directly to the party,
unless the party designates in writing
another address to which
correspondence is to be sent. The mere
designation of a domestic representative
does not authorize the person
designated to prosecute the proceeding
unless qualified under § 11.14(a), or
qualified under § 11.14(b) and
authorized under § 2.17(f).
(e) Every submission filed in an inter
partes proceeding, and every request for
an extension of time to file an
opposition, must be signed by the party
filing it, or by the party’s attorney or
other authorized representative, but an
unsigned submission will not be refused
consideration if a signed copy is
submitted to the Office within the time
limit set in the notification of this defect
by the Office.
■ 20. Revise § 2.120 to read as follows:
§ 2.120
Discovery.
(a) In general. (1) Except as otherwise
provided in this section, and wherever
appropriate, the provisions of the
Federal Rules of Civil Procedure relating
to disclosure and discovery shall apply
in opposition, cancellation, interference
and concurrent use registration
proceedings. The provisions of Rule 26
of the Federal Rules of Civil Procedure
relating to required disclosures, the
conference of the parties to discuss
settlement and to develop a disclosure
and discovery plan, the scope,
proportionality, timing and sequence of
discovery, protective orders, signing of
disclosures and discovery responses,
and supplementation of disclosures and
discovery responses, are applicable to
Board proceedings in modified form, as
noted in these rules and as may be
detailed in any order instituting an inter
partes proceeding or subsequent
scheduling order. The Board will
specify the deadline for a discovery
conference, the opening and closing
dates for the taking of discovery, and the
deadlines within the discovery period
for making initial disclosures and expert
disclosure. The trial order setting these
deadlines and dates will be included
within the notice of institution of the
proceeding.
(2)(i) The discovery conference shall
occur no later than the opening of the
discovery period, and the parties must
discuss the subjects set forth in Rule
26(f) of the Federal Rules of Civil
Procedure and any subjects set forth in
the Board’s institution order. A Board
Interlocutory Attorney or
Administrative Trademark Judge will
participate in the conference upon
request of any party made after answer
but no later than ten days prior to the
deadline for the conference, or when the
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Board deems it useful for the parties to
have Board involvement. The
participating attorney or judge may
expand or reduce the number or nature
of subjects to be discussed in the
conference as may be deemed
appropriate. The discovery period will
be set for a period of 180 days.
(ii) Initial disclosures must be made
no later than thirty days after the
opening of the discovery period.
(iii) Disclosure of expert testimony
must occur in the manner and sequence
provided in Rule 26(a)(2) of the Federal
Rules of Civil Procedure, unless
alternate directions have been provided
by the Board in an institution order or
any subsequent order resetting
disclosure, discovery or trial dates. If
the expert is retained after the deadline
for disclosure of expert testimony, the
party must promptly file a motion for
leave to use expert testimony. Upon
disclosure by any party of plans to use
expert testimony, whether before or
after the deadline for disclosing expert
testimony, the Board, either on its own
initiative or on notice from either party
of the disclosure of expert testimony,
may issue an order regarding expert
discovery and/or set a deadline for any
other party to disclose plans to use a
rebuttal expert.
(iv) The parties may stipulate to a
shortening of the discovery period, that
there will be no discovery, that the
number of discovery requests or
depositions be limited, or that
reciprocal disclosures be used in place
of discovery. Limited extensions of the
discovery period may be granted upon
stipulation of the parties approved by
the Board, or upon motion granted by
the Board, or by order of the Board. If
a motion for an extension is denied, the
discovery period may remain as
originally set or as reset. Disclosure
deadlines and obligations may be
modified upon written stipulation of the
parties approved by the Board, or upon
motion granted by the Board, or by
order of the Board, but the expert
disclosure deadline must always be
scheduled prior to the close of
discovery. If a stipulation or motion for
modification is denied, discovery
disclosure deadlines may remain as
originally set or reset and obligations
may remain unaltered.
(v) The parties are not required to
prepare or transmit to the Board a
written report outlining their discovery
conference discussions, unless the
parties have agreed to alter disclosure or
discovery obligations set forth by these
rules or applicable Federal Rules of
Civil Procedure, or unless directed to
file such a report by a participating
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Board Interlocutory Attorney or
Administrative Trademark Judge.
(3) A party must make its initial
disclosures prior to seeking discovery,
absent modification of this requirement
by a stipulation of the parties approved
by the Board, or a motion granted by the
Board, or by order of the Board.
Discovery depositions must be properly
noticed and taken during the discovery
period. Interrogatories, requests for
production of documents and things,
and requests for admission must be
served early enough in the discovery
period, as originally set or as may have
been reset by the Board, so that
responses will be due no later than the
close of discovery. Responses to
interrogatories, requests for production
of documents and things, and requests
for admission must be served within
thirty days from the date of service of
such discovery requests. The time to
respond may be extended upon
stipulation of the parties, or upon
motion granted by the Board, or by
order of the Board, but the response may
not be due later than the close of
discovery. The resetting of a party’s time
to respond to an outstanding request for
discovery will not result in the
automatic rescheduling of the discovery
and/or testimony periods; such dates
will be rescheduled only upon
stipulation of the parties approved by
the Board, or upon motion granted by
the Board, or by order of the Board.
(b) Discovery deposition within the
United States. The deposition of a
natural person shall be taken in the
Federal judicial district where the
person resides or is regularly employed
or at any place on which the parties
agree in writing. The responsibility rests
wholly with the party taking discovery
to secure the attendance of a proposed
deponent other than a party or anyone
who, at the time set for the taking of the
deposition, is an officer, director, or
managing agent of a party, or a person
designated under Rule 30(b)(6) or Rule
31(a) of the Federal Rules of Civil
Procedure. (See 35 U.S.C. 24.)
(c) Discovery deposition in foreign
countries; or of foreign party within
jurisdiction of the United States. (1) The
discovery deposition of a natural person
residing in a foreign country who is a
party or who, at the time set for the
taking of the deposition, is an officer,
director, or managing agent of a party,
or a person designated under Rule
30(b)(6) or Rule 31(a) of the Federal
Rules of Civil Procedure, shall, if taken
in a foreign country, be taken in the
manner prescribed by § 2.124 unless the
Trademark Trial and Appeal Board,
upon motion for good cause, orders that
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the deposition be taken by oral
examination, or the parties so stipulate.
(2) Whenever a foreign party is or will
be, during a time set for discovery,
present within the United States or any
territory which is under the control and
jurisdiction of the United States, such
party may be deposed by oral
examination upon notice by the party
seeking discovery. Whenever a foreign
party has or will have, during a time set
for discovery, an officer, director,
managing agent, or other person who
consents to testify on its behalf, present
within the United States or any territory
which is under the control and
jurisdiction of the United States, the
party must inform every adverse party
of such presence and such officer,
director, managing agent, or other
person who consents to testify in its
behalf may be deposed by oral
examination upon notice by the party
seeking discovery. The party seeking
discovery may have one or more
officers, directors, managing agents, or
other persons who consent to testify on
behalf of the adverse party, designated
under Rule 30(b)(6) of the Federal Rules
of Civil Procedure. The deposition of a
person under this paragraph shall be
taken in the Federal judicial district
where the witness resides or is regularly
employed, or, if the witness neither
resides nor is regularly employed in a
Federal judicial district, where the
witness is at the time of the deposition.
This paragraph does not preclude the
taking of a discovery deposition of a
foreign party by any other procedure
provided by paragraph (c)(1) of this
section.
(d) Interrogatories. The total number
of written interrogatories which a party
may serve upon another party pursuant
to Rule 33 of the Federal Rules of Civil
Procedure, in a proceeding, shall not
exceed seventy-five, counting subparts.
If a party upon which interrogatories
have been served believes that the
number of interrogatories exceeds the
limitation specified in this paragraph,
and is not willing to waive this basis for
objection, the party shall, within the
time for (and instead of) serving answers
and specific objections to the
interrogatories, serve a general objection
on the ground of their excessive
number. If the inquiring party, in turn,
files a motion to compel discovery, the
motion must be accompanied by a copy
of the set(s) of the interrogatories which
together are said to exceed the
limitation, and must otherwise comply
with the requirements of paragraph (f) of
this section.
(e) Requests for production. The total
number of requests for production
which a party may serve upon another
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party pursuant to Rule 34 of the Federal
Rules of Civil Procedure, in a
proceeding, shall not exceed seventyfive, counting subparts. If a party upon
which requests have been served
believes that the number of requests
exceeds the limitation specified in this
paragraph, and is not willing to waive
this basis for objection, the party shall,
within the time for (and instead of)
serving responses and specific
objections to the requests, serve a
general objection on the ground of their
excessive number. If the inquiring party,
in turn, files a motion to compel
discovery, the motion must be
accompanied by a copy of the set(s) of
the requests which together are said to
exceed the limitation, and must
otherwise comply with the requirements
of paragraph (f) of this section. The
time, place, and manner for production
of documents, electronically stored
information, and tangible things shall
comport with the provisions of Rule 34
of the Federal Rules of Civil Procedure,
or be made pursuant to agreement of the
parties, or where and in the manner
which the Trademark Trial and Appeal
Board, upon motion, orders.
(f) Motion for an order to compel
disclosure or discovery. (1) If a party
fails to make required initial disclosures
or expert testimony disclosure, or fails
to designate a person pursuant to Rule
30(b)(6) or Rule 31(a) of the Federal
Rules of Civil Procedure, or if a party,
or such designated person, or an officer,
director or managing agent of a party
fails to attend a deposition or fails to
answer any question propounded in a
discovery deposition, or any
interrogatory, or fails to produce and
permit the inspection and copying of
any document, electronically stored
information, or tangible thing, the party
entitled to disclosure or seeking
discovery may file a motion to compel
disclosure, a designation, or attendance
at a deposition, or an answer, or
production and an opportunity to
inspect and copy. A motion to compel
initial disclosures must be filed within
thirty days after the deadline therefor
and include a copy of the disclosure(s),
if any, and a motion to compel an expert
testimony disclosure must be filed prior
to the close of the discovery period. A
motion to compel discovery must be
filed prior to the deadline for pretrial
disclosures for the first testimony period
as originally set or as reset. A motion to
compel discovery shall include a copy
of the request for designation of a
witness or of the relevant portion of the
discovery deposition; or a copy of the
interrogatory with any answer or
objection that was made; or a copy of
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the request for production, any proffer
of production or objection to production
in response to the request, and a list and
brief description of the documents,
electronically stored information, or
tangible things that were not produced
for inspection and copying. A motion to
compel initial disclosures, expert
testimony disclosure, or discovery must
be supported by a showing from the
moving party that such party or the
attorney therefor has made a good faith
effort, by conference or correspondence,
to resolve with the other party or the
attorney therefor the issues presented in
the motion but the parties were unable
to resolve their differences. If issues
raised in the motion are subsequently
resolved by agreement of the parties, the
moving party should inform the Board
in writing of the issues in the motion
which no longer require adjudication.
(2) When a party files a motion for an
order to compel initial disclosures,
expert testimony disclosure, or
discovery, the case will be suspended
by the Board with respect to all matters
not germane to the motion. After the
motion to compel is filed and served, no
party should file any paper that is not
germane to the motion, except as
otherwise specified in the Board’s
suspension order. Nor may any party
serve any additional discovery until the
period of suspension is lifted or expires
by or under order of the Board. The
filing of a motion to compel any
disclosure or discovery shall not toll the
time for a party to comply with any
disclosure requirement or to respond to
any outstanding discovery requests or to
appear for any noticed discovery
deposition. If discovery has closed,
however, the parties need not make
pretrial disclosures until directed to do
so by the Board.
(g) Motion for a protective order.
Upon motion by a party obligated to
make initial disclosures or expert
testimony disclosure or from whom
discovery is sought, and for good cause,
the Trademark Trial and Appeal Board
may make any order which justice
requires to protect a party from
annoyance, embarrassment, oppression,
or undue burden or expense, including
one or more of the types of orders
provided by clauses (A) through (H),
inclusive, of Rule 26(c)(1) of the Federal
Rules of Civil Procedure. If the motion
for a protective order is denied in whole
or in part, the Board may, on such
conditions (other than an award of
expenses to the party prevailing on the
motion) as are just, order that any party
comply with disclosure obligations or
provide or permit discovery.
(h) Sanctions. (1) If a party fails to
participate in the required discovery
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conference, or if a party fails to comply
with an order of the Trademark Trial
and Appeal Board relating to disclosure
or discovery, including a protective
order, the Board may make any
appropriate order, including those
provided in Rule 37(b)(2) of the Federal
Rules of Civil Procedure, except that the
Board will not hold any person in
contempt or award expenses to any
party. The Board may impose against a
party any of the sanctions provided in
Rule 37(b)(2) in the event that said party
or any attorney, agent, or designated
witness of that party fails to comply
with a protective order made pursuant
to Rule 26(c) of the Federal Rules of
Civil Procedure. A motion for sanctions
against a party for its failure to
participate in the required discovery
conference must be filed prior to the
deadline for any party to make initial
disclosures.
(2) If a party fails to make required
initial disclosures or expert testimony
disclosure, and such party or the party’s
attorney or other authorized
representative informs the party or
parties entitled to receive disclosures
that required disclosures will not be
made, the Board may make any
appropriate order, as specified in
paragraph (h)(1) of this section. If a
party, or an officer, director, or
managing agent of a party, or a person
designated under Rule 30(b)(6) or 31(a)
of the Federal Rules of Civil Procedure
to testify on behalf of a party, fails to
attend the party’s or person’s discovery
deposition, after being served with
proper notice, or fails to provide any
response to a set of interrogatories or to
a set of requests for production of
documents and things, and such party
or the party’s attorney or other
authorized representative informs the
party seeking discovery that no response
will be made thereto, the Board may
make any appropriate order, as specified
in paragraph (h)(1) of this section.
(i) Requests for admission. The total
number of requests for admission which
a party may serve upon another party
pursuant to Rule 36 of the Federal Rules
of Civil Procedure, in a proceeding,
shall not exceed seventy-five, counting
subparts. If a party upon which requests
for admission have been served believes
that the number of requests for
admission exceeds the limitation
specified in this paragraph, and is not
willing to waive this basis for objection,
the party shall, within the time for (and
instead of) serving answers and specific
objections to the requests for admission,
serve a general objection on the ground
of their excessive number. However,
independent of this limit, a party may
make one comprehensive request for
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admission of any adverse party that has
produced documents for an admission
authenticating such documents, or
specifying which documents cannot be
authenticated.
(1) Any motion by a party to
determine the sufficiency of an answer
or objection, including testing the
sufficiency of a general objection on the
ground of excessive number, to a
request made by that party for an
admission must be filed prior to the
deadline for pretrial disclosures for the
first testimony period, as originally set
or as reset. The motion shall include a
copy of the request for admission and
any exhibits thereto and of the answer
or objection. The motion must be
supported by a written statement from
the moving party showing that such
party or the attorney therefor has made
a good faith effort, by conference or
correspondence, to resolve with the
other party or the attorney therefor the
issues presented in the motion and has
been unable to reach agreement. If
issues raised in the motion are
subsequently resolved by agreement of
the parties, the moving party should
inform the Board in writing of the issues
in the motion which no longer require
adjudication.
(2) When a party files a motion to
determine the sufficiency of an answer
or objection to a request for an
admission, the case will be suspended
by the Board with respect to all matters
not germane to the motion. After the
motion is filed and served, no party
should file any paper that is not
germane to the motion, except as
otherwise specified in the Board’s
suspension order. Nor may any party
serve any additional discovery until the
period of suspension is lifted or expires
by or under order of the Board. The
filing of a motion to determine the
sufficiency of an answer or objection to
a request for admission shall not toll the
time for a party to comply with any
disclosure requirement or to respond to
any outstanding discovery requests or to
appear for any noticed discovery
deposition. If discovery has closed,
however, the parties need not make
pretrial disclosures until directed to do
so by the Board.
(j) Telephone and pretrial
conferences. (1) Whenever it appears to
the Trademark Trial and Appeal Board
that a stipulation or motion filed in an
inter partes proceeding is of such nature
that a telephone conference would be
beneficial, the Board may, upon its own
initiative or upon request made by one
or both of the parties, schedule a
telephone conference.
(2) Whenever it appears to the
Trademark Trial and Appeal Board that
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questions or issues arising during the
interlocutory phase of an inter partes
proceeding have become so complex
that their resolution by correspondence
or telephone conference is not practical
and that resolution would likely be
facilitated by a conference in person of
the parties or their attorneys with an
Administrative Trademark Judge or an
Interlocutory Attorney of the Board, the
Board may, upon its own initiative,
direct that the parties and/or their
attorneys meet with the Board for a
disclosure, discovery or pretrial
conference on such terms as the Board
may order.
(3) Parties may not make a recording
of the conferences referenced in
paragraphs (j)(1) and (j)(2) of this
section.
(k) Use of discovery deposition,
answer to interrogatory, admission or
written disclosure. (1) The discovery
deposition of a party or of anyone who
at the time of taking the deposition was
an officer, director or managing agent of
a party, or a person designated by a
party pursuant to Rule 30(b)(6) or Rule
31(a) of the Federal Rules of Civil
Procedure, may be offered in evidence
by an adverse party.
(2) Except as provided in paragraph
(k)(1) of this section, the discovery
deposition of a witness, whether or not
a party, shall not be offered in evidence
unless the person whose deposition was
taken is, during the testimony period of
the party offering the deposition, dead;
or out of the United States (unless it
appears that the absence of the witness
was procured by the party offering the
deposition); or unable to testify because
of age, illness, infirmity, or
imprisonment; or cannot be served with
a subpoena to compel attendance at a
testimonial deposition; or there is a
stipulation by the parties; or upon a
showing that such exceptional
circumstances exist as to make it
desirable, in the interest of justice, to
allow the deposition to be used. The use
of a discovery deposition by any party
under this paragraph will be allowed
only by stipulation of the parties
approved by the Trademark Trial and
Appeal Board, or by order of the Board
on motion, which shall be filed when
the party makes its pretrial disclosures,
unless the motion is based upon a claim
that such exceptional circumstances
exist as to make it desirable, in the
interest of justice, to allow the
deposition to be used, even though such
deadline has passed, in which case the
motion shall be filed promptly after the
circumstances claimed to justify use of
the deposition became known.
(3)(i) A discovery deposition, an
answer to an interrogatory, an
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admission to a request for admission, or
a written initial disclosure, which may
be offered in evidence under the
provisions of paragraph (k) of this
section, may be made of record in the
case by filing the deposition or any part
thereof with any exhibit to the part that
is filed, or a copy of the interrogatory
and answer thereto with any exhibit
made part of the answer, or a copy of
the request for admission and any
exhibit thereto and the admission (or a
statement that the party from which an
admission was requested failed to
respond thereto), or a copy of the
written initial disclosure, together with
a notice of reliance in accordance with
§ 2.122(g). The notice of reliance and the
material submitted thereunder should
be filed during the testimony period of
the party that files the notice of reliance.
An objection made at a discovery
deposition by a party answering a
question subject to the objection will be
considered at final hearing.
(ii) A party that has obtained
documents from another party through
disclosure or under Rule 34 of the
Federal Rules of Civil Procedure may
not make the documents of record by
notice of reliance alone, except to the
extent that they are admissible by notice
of reliance under the provisions of
§ 2.122(e), or the party has obtained an
admission or stipulation from the
producing party that authenticates the
documents.
(4) If only part of a discovery
deposition is submitted and made part
of the record by a party, an adverse
party may introduce under a notice of
reliance any other part of the deposition
which should in fairness be considered
so as to make not misleading what was
offered by the submitting party. A notice
of reliance filed by an adverse party
must be supported by a written
statement explaining why the adverse
party needs to rely upon each additional
part listed in the adverse party’s notice,
failing which the Board, in its
discretion, may refuse to consider the
additional parts.
(5) Written disclosures, an answer to
an interrogatory, or an admission to a
request for admission, may be submitted
and made part of the record only by the
receiving or inquiring party except that,
if fewer than all of the written
disclosures, answers to interrogatories,
or fewer than all of the admissions, are
offered in evidence by the receiving or
inquiring party, the disclosing or
responding party may introduce under a
notice of reliance any other written
disclosures, answers to interrogatories,
or any other admissions, which should
in fairness be considered so as to make
not misleading what was offered by the
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receiving or inquiring party. The notice
of reliance filed by the disclosing or
responding party must be supported by
a written statement explaining why the
disclosing or responding party needs to
rely upon each of the additional written
disclosures or discovery responses
listed in the disclosing or responding
party’s notice, and absent such
statement, the Board, in its discretion,
may refuse to consider the additional
written disclosures or responses.
(6) Paragraph (k) of this section will
not be interpreted to preclude reading or
use of written disclosures or documents,
a discovery deposition, or answer to an
interrogatory, or admission as part of the
examination or cross-examination of
any witness during the testimony period
of any party.
(7) When a written disclosure, a
discovery deposition, or a part thereof,
or an answer to an interrogatory, or an
admission, or an authenticated
produced document has been made of
record by one party in accordance with
the provisions of paragraph (k)(3) of this
section, it may be referred to by any
party for any purpose permitted by the
Federal Rules of Evidence.
(8) Written disclosures or disclosed
documents, requests for discovery,
responses thereto, and materials or
depositions obtained through the
disclosure or discovery process should
not be filed with the Board, except
when submitted with a motion relating
to disclosure or discovery, or in support
of or in response to a motion for
summary judgment, or under a notice of
reliance, when permitted, during a
party’s testimony period.
■ 21. Amend § 2.121 by revising the
heading and paragraphs (a), (c) through
(e) to read as follows:
§ 2.121 Assignment of times for taking
testimony and presenting evidence.
(a) The Trademark Trial and Appeal
Board will issue a trial order setting a
deadline for each party’s required
pretrial disclosures and assigning to
each party its time for taking testimony
and presenting evidence (‘‘testimony
period’’). No testimony shall be taken or
evidence presented except during the
times assigned, unless by stipulation of
the parties approved by the Board, or
upon motion granted by the Board, or by
order of the Board. The deadlines for
pretrial disclosures and the testimony
periods may be rescheduled by
stipulation of the parties approved by
the Board, or upon motion granted by
the Board, or by order of the Board. If
a motion to reschedule any pretrial
disclosure deadline and/or testimony
period is denied, the pretrial disclosure
deadline or testimony period and any
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subsequent remaining periods may
remain as set. The resetting of the
closing date for discovery will result in
the rescheduling of pretrial disclosure
deadlines and testimony periods
without action by any party. The
resetting of a party’s testimony period
will result in the rescheduling of the
remaining pretrial disclosure deadlines
without action by any party.
*
*
*
*
*
(c) A testimony period which is solely
for rebuttal will be set for fifteen days.
All other testimony periods will be set
for thirty days. The periods may be
shortened or extended by stipulation of
the parties approved by the Trademark
Trial and Appeal Board, or may be
extended upon motion granted by the
Board, or by order of the Board. If a
motion for an extension is denied, the
testimony periods and their associated
pretrial disclosure deadlines may
remain as set.
(d) When parties stipulate to the
rescheduling of a deadline for pretrial
disclosures and subsequent testimony
periods or to the rescheduling of the
closing date for discovery and the
rescheduling of subsequent deadlines
for pretrial disclosures and testimony
periods, a stipulation presented in the
form used in a trial order, signed by the
parties, or a motion in said form signed
by one party and including a statement
that every other party has agreed
thereto, shall be submitted to the Board
through ESTTA, with the relevant dates
set forth and an express statement that
all parties agree to the new dates.
(e) A party need not disclose, prior to
its testimony period, any notices of
reliance it intends to file during its
testimony period. However, no later
than fifteen days prior to the opening of
each testimony period, or on such
alternate schedule as may be provided
by order of the Board, the party
scheduled to present evidence must
disclose the name and, if not previously
provided, the telephone number and
address of each witness from whom it
intends to take testimony, or may take
testimony if the need arises, general
identifying information about the
witness, such as relationship to any
party, including job title if employed by
a party, or, if neither a party nor related
to a party, occupation and job title, a
general summary or list of subjects on
which the witness is expected to testify,
and a general summary or list of the
types of documents and things which
may be introduced as exhibits during
the testimony of the witness. The
testimony of a witness may be taken
upon oral examination and transcribed,
or presented in the form of an affidavit
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or declaration, as provided in § 2.123.
Pretrial disclosure of a witness under
this subsection does not substitute for
issuance of a proper notice of
examination under § 2.123(c) or
§ 2.124(b). If a party does not plan to
take testimony from any witnesses, it
must so state in its pretrial disclosure.
When a party fails to make required
pretrial disclosures, any adverse party
or parties may have remedy by way of
a motion to the Board to delay or reset
any subsequent pretrial disclosure
deadlines and/or testimony periods. A
party may move to quash a noticed
testimony deposition of a witness not
identified or improperly identified in
pretrial disclosures before the
deposition. When testimony has been
presented by affidavit or declaration,
but was not covered by an earlier
pretrial disclosure, the remedy for any
adverse party is the prompt filing of a
motion to strike, as provided in §§ 2.123
and 2.124.
■ 22. Amend § 2.122 by revising
paragraphs (a) through (e), and
addingparagraph (g), to read as follows:
§ 2.122
Matters in evidence.
(a) Applicable Rules. Unless the
parties otherwise stipulate, the rules of
evidence for proceedings before the
Trademark Trial and Appeal Board are
the Federal Rules of Evidence, the
relevant provisions of the Federal Rules
of Civil Procedure, the relevant
provisions of Title 28 of the United
States Code, and the provisions of this
Part of Title 37 of the Code of Federal
Regulations. When evidence has been
made of record by one party in
accordance with these rules, it may be
referred to by any party for any purpose
permitted by the Federal Rules of
Evidence.
(b) Application and registration files.
(1) The file of each application or
registration specified in a notice of
interference, of each application or
registration specified in the notice of a
concurrent use registration proceeding,
of the application against which a notice
of opposition is filed, or of each
registration against which a petition or
counterclaim for cancellation is filed
forms part of the record of the
proceeding without any action by the
parties and reference may be made to
the file for any relevant and competent
purpose.
(2) The allegation in an application
for registration, or in a registration, of a
date of use is not evidence on behalf of
the applicant or registrant; a date of use
of a mark must be established by
competent evidence. Specimens in the
file of an application for registration, or
in the file of a registration, are not
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evidence on behalf of the applicant or
registrant unless identified and
introduced in evidence as exhibits
during the period for the taking of
testimony. Statements made in an
affidavit or declaration in the file of an
application for registration, or in the file
of a registration, are not evidence on
behalf of the applicant or registrant and
must be established by competent
evidence.
(c) Exhibits to pleadings. Except as
provided in paragraph (d)(1) of this
section, an exhibit attached to a
pleading is not evidence on behalf of the
party to whose pleading the exhibit is
attached, and must be identified and
introduced in evidence as an exhibit
during the period for the taking of
testimony.
(d) Registrations. (1) A registration of
the opposer or petitioner pleaded in an
opposition or petition to cancel will be
received in evidence and made part of
the record if the opposition or petition
is accompanied by an original or
photocopy of the registration prepared
and issued by the Office showing both
the current status of and current title to
the registration, or by a current printout
of information from the electronic
database records of the Office showing
the current status and title of the
registration. For the cost of a copy of a
registration showing status and title, see
§ 2.6(b)(4).
(2) A registration owned by any party
to a proceeding may be made of record
in the proceeding by that party by
appropriate identification and
introduction during the taking of
testimony or by filing a notice of
reliance in accordance with paragraph
(g) of this section, which shall be
accompanied by a copy (original or
photocopy) of the registration prepared
and issued by the Office showing both
the current status of and current title to
the registration, or by a current printout
of information from the electronic
database records of the Office showing
the current status and title of the
registration. The notice of reliance shall
be filed during the testimony period of
the party that files the notice.
(e) Printed publications and official
records. (1) Printed publications, such
as books and periodicals, available to
the general public in libraries or of
general circulation among members of
the public or that segment of the public
which is relevant in a particular
proceeding, and official records, if the
publication or official record is
competent evidence and relevant to an
issue, may be introduced in evidence by
filing a notice of reliance on the material
being offered in accordance with
paragraph (g) of this section. The notice
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of reliance shall specify the printed
publication (including information
sufficient to identify the source and the
date of the publication) or the official
record and the pages to be read; and be
accompanied by the official record or a
copy thereof whose authenticity is
established under the Federal Rules of
Evidence, or by the printed publication
or a copy of the relevant portion thereof.
A copy of an official record of the Office
need not be certified to be offered in
evidence.
(2) Internet materials may be admitted
into evidence under a notice of reliance
in accordance with paragraph (g) of this
section, in the same manner as a printed
publication in general circulation, so
long as the date the internet materials
were accessed and their source (e.g.,
URL) are provided.
*
*
*
*
*
(g) Notices of reliance. The types of
evidence admissible by notice of
reliance are identified in paragraphs
(d)(2), (e)(1), and (e)(2) of this section
and § 2.120(k). A notice of reliance shall
be filed during the testimony period of
the party that files the notice. For all
evidence offered by notice of reliance,
the notice must indicate generally the
relevance of the evidence and associate
it with one or more issues in the
proceeding. Failure to identify the
relevance of the evidence, or associate it
with issues in the proceeding, with
sufficient specificity is a procedural
defect that can be cured by the offering
party within the time set by Board
order.
■ 23. Amend § 2.123 by revising
paragraphs (a) through (c), (e) through
(k), and removing paragraph (l) to read
as follows:
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§ 2.123
cases.
Trial testimony in inter partes
(a)(1) The testimony of witnesses in
inter partes cases may be submitted in
the form of an affidavit or a declaration
pursuant to § 2.20, filed during the
proffering party’s testimony period,
subject to the right of any adverse party
to elect to take and bear the expense of
oral cross-examination of that witness as
provided under paragraph (c) of this
section if such witness is within the
jurisdiction of the United States, or
conduct cross-examination by written
questions as provided in § 2.124 if such
witness is outside the jurisdiction of the
United States, and the offering party
must make that witness available; or
taken by deposition upon oral
examination as provided by this section;
or by deposition upon written questions
as provided by § 2.124.
(2) A testimonial deposition taken in
a foreign country shall be taken by
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deposition upon written questions as
provided by § 2.124, unless the Board,
upon motion for good cause, orders that
the deposition be taken by oral
examination or by affidavit or
declaration, subject to the right of any
adverse party to elect to take and bear
the expense of cross-examination by
written questions of that witness, or the
parties so stipulate. If a party serves
notice of the taking of a testimonial
deposition upon written questions of a
witness who is, or will be at the time of
the deposition, present within the
United States or any territory which is
under the control and jurisdiction of the
United States, any adverse party may,
within twenty days from the date of
service of the notice, file a motion with
the Trademark Trial and Appeal Board,
for good cause, for an order that the
deposition be taken by oral
examination. The proffering party must
inform every adverse party when it
knows that such witness will be within
the jurisdiction of the United States
during such party’s testimony period.
(b) Stipulations. If the parties so
stipulate in writing, depositions may be
taken before any person authorized to
administer oaths, at any place, upon any
notice, and in any manner, and when so
taken may be used like other
depositions. The parties may stipulate
in writing what a particular witness
would testify to if called; or any relevant
facts in the case may be stipulated in
writing.
(c) Notice of examination of
witnesses. Before the oral depositions of
witnesses shall be taken by a party, due
notice in writing shall be given to the
adverse party or parties, as provided in
§ 2.119(b), of the time when and place
where the depositions will be taken, of
the cause or matter in which they are to
be used, and the name and address of
each witness to be examined.
Depositions may be noticed for any
reasonable time and place in the United
States. A deposition may not be noticed
for a place in a foreign country except
as provided in paragraph (a)(2) of this
section. No party shall take depositions
in more than one place at the same time,
nor so nearly at the same time that
reasonable opportunity for travel from
one place of examination to the other is
not available. When a party elects to
take oral cross-examination of an affiant
or declarant, the notice of such election
must be served on the adverse party and
a copy filed with the Board within 10
days from the date of service of the
affidavit or declaration and completed
within 20 days from the date of service
of the notice of election. Upon motion
for good cause by any party, or upon its
own initiative, the Board may extend
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the periods for electing and taking oral
cross-examination. When such election
has been made but cannot be completed
within that testimony period, the Board,
after the close of that testimony period,
shall suspend or reschedule other
proceedings in the matter to allow for
the orderly completion of the oral crossexamination(s).
*
*
*
*
*
(e) Examination of witnesses. (1) Each
witness before providing oral testimony
shall be duly sworn according to law by
the officer before whom the deposition
is to be taken. Where oral depositions
are taken, every adverse party shall have
a full opportunity to cross-examine each
witness. When testimony is proffered by
affidavit or declaration, every adverse
party will have the right to elect oral
cross-examination of any witness within
the jurisdiction of the United States. For
examination of witnesses outside the
jurisdiction of the United States, see
§ 2.124.
(2) The deposition shall be taken in
answer to questions, with the questions
and answers recorded in their regular
order by the officer, or by some other
person (who shall be subject to the
provisions of Rule 28 of the Federal
Rules of Civil Procedure) in the
presence of the officer except when the
officer’s presence is waived on the
record by agreement of the parties. The
testimony shall be recorded and
transcribed, unless the parties present
agree otherwise. Exhibits which are
marked and identified at the deposition
will be deemed to have been offered
into evidence, without any formal offer
thereof, unless the intention of the party
marking the exhibits is clearly
expressed to the contrary.
(3) If pretrial disclosures or the notice
of examination of witnesses served
pursuant to paragraph (c) of this section
are improper or inadequate with respect
to any witness, an adverse party may
cross-examine that witness under
protest while reserving the right to
object to the receipt of the testimony in
evidence. Promptly after the testimony
is completed, the adverse party, to
preserve the objection, shall move to
strike the testimony from the record,
which motion will be decided on the
basis of all the relevant circumstances.
(i) A motion to strike the testimony of
a witness for lack of proper or adequate
pretrial disclosure may seek exclusion
of the entire testimony, when there was
no pretrial disclosure, or may seek
exclusion of that portion of the
testimony that was not adequately
disclosed in accordance with § 2.121(e).
(ii) A motion to strike the testimony
of a witness for lack of proper or
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adequate notice of examination must
request the exclusion of the entire
testimony of that witness and not only
a part of that testimony.
(4) All objections made at the time of
an oral examination to the qualifications
of the officer taking the deposition, or to
the manner of taking it, or to the
evidence presented, or to the conduct of
any party, and any other objection to the
proceedings, shall be noted by the
officer upon the deposition. Evidence
objected to shall be taken subject to the
objections.
(5) When the oral deposition has been
transcribed, the deposition transcript
shall be carefully read over by the
witness or by the officer to the witness,
and shall then be signed by the witness
in the presence of any officer authorized
to administer oaths unless the reading
and the signature be waived on the
record by agreement of all parties.
(f) Certification and filing of
deposition.
(1) The officer shall annex to the
deposition his or her certificate
showing:
(i) Due administration of the oath by
the officer to the witness before the
commencement of his or her deposition;
(ii) The name of the person by whom
the deposition was taken down, and
whether, if not taken down by the
officer, it was taken down in his or her
presence;
(iii) The presence or absence of the
adverse party;
(iv) The place, day, and hour of
commencing and taking the deposition;
(v) The fact that the officer was not
disqualified as specified in Rule 28 of
the Federal Rules of Civil Procedure.
(2) If any of the foregoing
requirements in paragraph (f)(1) of this
section are waived, the certificate shall
so state. The officer shall sign the
certificate and affix thereto his or her
seal of office, if he or she has such a
seal. The party taking the deposition, or
its attorney or other authorized
representative, shall then promptly file
the transcript and exhibits in electronic
form using ESTTA. If the weight or bulk
of an exhibit shall exclude it from such
filing or prevent its uploading to
ESTTA, it shall be transmitted by the
party taking the deposition, or its
attorney or other authorized
representative, in a separate package
marked and addressed as provided in
this section, including an explanation as
to why it could not be submitted
electronically.
(g) Form of deposition. (1) The pages
of each deposition must be numbered
consecutively, and the name of the
witness plainly and conspicuously
written at the top of each page. A
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deposition must be in written form. The
questions propounded to each witness
must be consecutively numbered unless
the pages have numbered lines. Each
question must be followed by its
answer. The deposition transcript must
be submitted in full-sized format (one
page per sheet), not condensed
(multiple pages per sheet).
(2) Exhibits must be numbered or
lettered consecutively and each must be
marked with the number and title of the
case and the name of the party offering
the exhibit. Entry and consideration
may be refused to improperly marked
exhibits.
(3) Each deposition must contain a
word index and an index of the names
of the witnesses, giving the pages where
the words appear in the deposition and
where witness examination and crossexamination begin, and an index of the
exhibits, briefly describing their nature
and giving the pages at which they are
introduced and offered in evidence.
(h) Depositions must be filed. All
depositions which are taken must be
duly filed in the Office. On refusal to
file, the Office at its discretion will not
further hear or consider the contestant
with whom the refusal lies; and the
Office may, at its discretion, receive and
consider a copy of the withheld
deposition, attested by such evidence as
is procurable.
(i) Effect of errors and irregularities in
depositions. Rule 32(d)(1), (2), and
(3)(A) and (B) of the Federal Rules of
Civil Procedure shall apply to errors and
irregularities in depositions. Notice will
not be taken of merely formal or
technical objections which shall not
appear to have wrought a substantial
injury to the party raising them; and in
case of such injury it must be made to
appear that the objection was raised at
the time specified in said rule.
(j) Objections to admissibility. Subject
to the provisions of paragraph (i) of this
section, objection may be made to
receiving in evidence any declaration,
affidavit, or deposition, or part thereof,
or any other evidence, for any reason
which would require the exclusion of
the evidence from consideration.
Objections to the competency of a
witness or to the competency,
relevancy, or materiality of testimony
must be raised at the time specified in
Rule 32(d)(3)(A) of the Federal Rules of
Civil Procedure. Such objections may
not be considered until final hearing.
(k) Evidence not considered. Evidence
not obtained and filed in compliance
with these sections will not be
considered.
■ 24. Amend § 2.124 by revising
paragraphs (b)(2), (d)(1), and (f), and
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adding paragraphs (b)(3), (d)(3) to read
as follows:
§ 2.124 Depositions upon written
questions.
*
*
*
*
*
(b)(1) * * *
(2) A party desiring to take a
discovery deposition upon written
questions shall serve notice thereof
upon each adverse party and shall file
a copy of the notice, but not copies of
the questions, with the Board. The
notice shall state the name and address,
if known, of the person whose
deposition is to be taken. If the name of
the person is not known, a general
description sufficient to identify the
witness or the particular class or group
to which he or she belongs shall be
stated in the notice, and the party from
whom the discovery deposition is to be
taken shall designate one or more
persons to be deposed in the same
manner as is provided by Rule 30(b)(6)
of the Federal Rules of Civil Procedure.
(3) A party desiring to take crossexamination, by written questions, of a
witness who has provided testimony by
affidavit or declaration shall serve
notice thereof upon each adverse party
and shall file a copy of the notice, but
not copies of the questions, with the
Board.
*
*
*
*
*
(d)(1) Every notice served on any
adverse party under the provisions of
paragraph (b) of this section, for the
taking of direct testimony, shall be
accompanied by the written questions to
be propounded on behalf of the party
who proposes to take the deposition.
Every notice served on any adverse
party under the provisions of paragraph
(b)(3) of this section, for the taking of
cross-examination, shall be
accompanied by the written questions to
be propounded on behalf of the party
who proposes to take the crossexamination. Within twenty days from
the date of service of the notice of taking
direct testimony, any adverse party may
serve cross questions upon the party
who proposes to take the deposition.
Any party who serves cross questions,
whether in response to direct
examination questions or under
paragraph (b)(3) of this section, shall
also serve every other adverse party.
Within ten days from the date of service
of the cross questions, the party who
proposes to take the deposition, or who
earlier offered testimony of the witness
by affidavit or declaration, may serve
redirect questions on every adverse
party. Within ten days from the date of
service of the redirect questions, any
party who served cross questions may
serve recross questions upon the party
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who proposes to take the deposition;
any party who serves recross questions
shall also serve every other adverse
party. Written objections to questions
may be served on a party propounding
questions; any party who objects shall
serve a copy of the objections on every
other adverse party. In response to
objections, substitute questions may be
served on the objecting party within ten
days of the date of service of the
objections; substitute questions shall be
served on every other adverse party.
*
*
*
*
*
(3) Service of written questions,
responses, and cross-examination
questions shall be in accordance with
§ 2.119(b).
*
*
*
*
*
(f) The party who took the deposition
shall promptly serve a copy of the
transcript, copies of documentary
exhibits, and duplicates or photographs
of physical exhibits on every adverse
party. It is the responsibility of the party
who takes the deposition to assure that
the transcript is correct (see § 2.125(b)).
If the deposition is a discovery
deposition, it may be made of record as
provided by § 2.120(k). If the deposition
is a testimonial deposition, the original,
together with copies of documentary
exhibits and duplicates or photographs
of physical exhibits, shall be filed
promptly with the Trademark Trial and
Appeal Board.
*
*
*
*
*
■ 25. Revise § 2.125 to read as follows:
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§ 2.125
Filing and service of testimony.
(a) One copy of the declaration or
affidavit prepared in accordance with
§ 2.123, together with copies of
documentary exhibits and duplicates or
photographs of physical exhibits, shall
be served on each adverse party at the
time the declaration or affidavit is
submitted to the Trademark Trial and
Appeal Board during the assigned
testimony period.
(b) One copy of the transcript of each
testimony deposition taken in
accordance with §§ 2.123 or 2.124,
together with copies of documentary
exhibits and duplicates or photographs
of physical exhibits, shall be served on
each adverse party within thirty days
after completion of the taking of that
testimony. If the transcript with exhibits
is not served on each adverse party
within thirty days or within an
extension of time for the purpose, any
adverse party which was not served may
have remedy by way of a motion to the
Trademark Trial and Appeal Board to
reset such adverse party’s testimony
and/or briefing periods, as may be
appropriate. If the deposing party fails
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to serve a copy of the transcript with
exhibits on an adverse party after having
been ordered to do so by the Board, the
Board, in its discretion, may strike the
deposition, or enter judgment as by
default against the deposing party, or
take any such other action as may be
deemed appropriate.
(c) The party who takes testimony is
responsible for having all typographical
errors in the transcript and all errors of
arrangement, indexing and form of the
transcript corrected, on notice to each
adverse party, prior to the filing of one
certified transcript with the Trademark
Trial and Appeal Board. The party who
takes testimony is responsible for
serving on each adverse party one copy
of the corrected transcript or, if
reasonably feasible, corrected pages to
be inserted into the transcript
previously served.
(d) One certified transcript and
exhibits shall be filed with the
Trademark Trial and Appeal Board.
Notice of such filing shall be served on
each adverse party and a copy of each
notice shall be filed with the Board.
(e) Each transcript shall comply with
§ 2.123(g) with respect to arrangement,
indexing and form.
(f) Upon motion by any party, for
good cause, the Trademark Trial and
Appeal Board may order that any part
of an affidavit or declaration or a
deposition transcript or any exhibits
that directly disclose any trade secret or
other confidential research,
development, or commercial
information may be filed under seal and
kept confidential under the provisions
of § 2.27(e). If any party or any attorney
or agent of a party fails to comply with
an order made under this paragraph, the
Board may impose any of the sanctions
authorized by § 2.120(h).
■ 26. Revise § 2.126 to read as follows:
§ 2.126 Form of submissions to the
Trademark Trial and Appeal Board.
(a) Submissions shall be made to the
Trademark Trial and Appeal Board via
ESTTA.
(1) Text in an electronic submission
must be filed in at least 12-point type
and double-spaced.
(2) Exhibits pertaining to an electronic
submission must be made electronically
as an attachment to the submission and
must be clear and legible.
(b) In the event that ESTTA is
unavailable due to technical problems,
or when extraordinary circumstances
are present, submissions may be filed in
paper form. Submissions in paper form
must be accompanied by a Petition to
the Director under § 2.146(a)(5), with
the fees therefor and the showing
required under this paragraph. A paper
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submission, including exhibits and
depositions, must meet the following
requirements:
(1) A paper submission must be
printed in at least 12-point type and
double-spaced, with text on one side
only of each sheet;
(2) A paper submission must be 8 to
8.5 inches (20.3 to 21.6 cm.) wide and
11 to 11.69 inches (27.9 to 29.7 cm.)
long, and contain no tabs or other such
devices extending beyond the edges of
the paper;
(3) If a paper submission contains
dividers, the dividers must not have any
extruding tabs or other devices, and
must be on the same size and weight
paper as the submission;
(4) A paper submission must not be
stapled or bound;
(5) All pages of a paper submission
must be numbered and exhibits shall be
identified in the manner prescribed in
§ 2.123(g)(2);
(6) Exhibits pertaining to a paper
submission must be filed on paper and
comply with the requirements for a
paper submission.
(c) To be handled as confidential,
submissions to the Trademark Trial and
Appeal Board that are confidential in
whole or part pursuant to § 2.125(e)
must be submitted using the
‘‘Confidential’’ selection available in
ESTTA or, where appropriate, under a
separate paper cover. Both the
submission and its cover must be
marked confidential and must identify
the case number and the parties. A copy
of the submission for public viewing
with the confidential portions redacted
must be submitted concurrently.
■ 27. Amend § 2.127 by revising
paragraphs (a) through (e) to read as
follows:
§ 2.127
Motions.
(a) Every motion must be submitted in
written form and must meet the
requirements prescribed in § 2.126. It
shall contain a full statement of the
grounds, and shall embody or be
accompanied by a brief. Except as
provided in paragraph (e)(1) of this
section, a brief in response to a motion
shall be filed within twenty days from
the date of service of the motion unless
another time is specified by the
Trademark Trial and Appeal Board, or
the time is extended by stipulation of
the parties approved by the Board, or
upon motion granted by the Board, or
upon order of the Board. If a motion for
an extension is denied, the time for
responding to the motion remains as
specified under this section, unless
otherwise ordered. Except as provided
in paragraph (e)(1) of this section, a
reply brief, if filed, shall be filed within
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twenty days from the date of service of
the brief in response to the motion. The
time for filing a reply brief will not be
extended or reopened. The Board will
consider no further papers in support of
or in opposition to a motion. Neither the
brief in support of a motion nor the brief
in response to a motion shall exceed
twenty-five pages in length in its
entirety, including table of contents,
index of cases, description of the record,
statement of the issues, recitation of the
facts, argument, and summary. A reply
brief shall not exceed ten pages in
length in its entirety. Exhibits submitted
in support of or in opposition to a
motion are not considered part of the
brief for purposes of determining the
length of the brief. When a party fails to
file a brief in response to a motion, the
Board may treat the motion as
conceded. An oral hearing will not be
held on a motion except on order by the
Board.
(b) Any request for reconsideration or
modification of an order or decision
issued on a motion must be filed within
one month from the date thereof. A brief
in response must be filed within twenty
days from the date of service of the
request.
(c) Interlocutory motions, requests,
conceded matters, and other matters not
actually or potentially dispositive of a
proceeding may be acted upon by a
single Administrative Trademark Judge
of the Trademark Trial and Appeal
Board, or by an Interlocutory Attorney
or Paralegal of the Board to whom
authority to act has been delegated, or
by ESTTA. Motions disposed of by
orders entitled ‘‘By the Trademark Trial
and Appeal Board’’ have the same legal
effect as orders by a panel of three
Administrative Trademark Judges of the
Board.
(d) When any party timely files a
potentially dispositive motion,
including, but not limited to, a motion
to dismiss, a motion for judgment on the
pleadings, or a motion for summary
judgment, the case is suspended by the
Trademark Trial and Appeal Board with
respect to all matters not germane to the
motion and no party should file any
paper which is not germane to the
motion except as otherwise may be
specified in a Board order. If the case is
not disposed of as a result of the motion,
proceedings will be resumed pursuant
to an order of the Board when the
motion is decided.
(e)(1) A party may not file a motion
for summary judgment until the party
has made its initial disclosures, except
for a motion asserting claim or issue
preclusion or lack of jurisdiction by the
Trademark Trial and Appeal Board. A
motion for summary judgment must be
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filed prior to the deadline for pretrial
disclosures for the first testimony
period, as originally set or as reset. A
motion under Rule 56(d) of the Federal
Rules of Civil Procedure, if filed in
response to a motion for summary
judgment, shall be filed within thirty
days from the date of service of the
summary judgment motion. The time for
filing a motion under Rule 56(d) will
not be extended or reopened. If no
motion under Rule 56(d) is filed, a brief
in response to the motion for summary
judgment shall be filed within thirty
days from the date of service of the
motion unless the time is extended by
stipulation of the parties approved by
the Board, or upon motion granted by
the Board, or upon order of the Board.
If a motion for an extension is denied,
the time for responding to the motion
for summary judgment may remain as
specified under this section. A reply
brief, if filed, shall be filed within
twenty days from the date of service of
the brief in response to the motion. The
time for filing a reply brief will not be
extended or reopened. The Board will
consider no further papers in support of
or in opposition to a motion for
summary judgment.
(2) For purposes of summary
judgment only, the Board will consider
any of the following, if a copy is
provided with the party’s brief on the
summary judgment motion: Written
disclosures or disclosed documents, a
discovery deposition or any part thereof
with any exhibit to the part that is filed,
an interrogatory and answer thereto
with any exhibit made part of the
answer, a request for production and the
documents or things produced in
response thereto, or a request for
admission and any exhibit thereto and
the admission (or a statement that the
party from which an admission was
requested failed to respond thereto). If
any motion for summary judgment is
denied, the parties may stipulate that
the materials submitted with briefs on
the motion shall be considered at trial
as trial evidence, which may be
supplemented by additional evidence
during trial.
■ 28. Amend § 2.128 by revising
paragraphs (a)(3) and (b) to read as
follows:
§ 2.128
Briefs at final hearing.
(a)(1) * * *
(3) When a party in the position of
plaintiff fails to file a main brief, an
order may be issued allowing plaintiff
until a set time, not less than fifteen
days, in which to show cause why the
Board should not treat such failure as a
concession of the case. If plaintiff fails
to file a response to the order, or files
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a response indicating that plaintiff has
lost interest in the case, judgment may
be entered against plaintiff. If a plaintiff
files a response to the order showing
good cause, but does not have any
evidence of record and does not move
to reopen its testimony period and make
a showing of excusable neglect
sufficient to support such reopening,
judgment may be entered against
plaintiff for failure to take testimony or
submit any other evidence.
(b) Briefs must be submitted in
written form and must meet the
requirements prescribed in § 2.126. Each
brief shall contain an alphabetical index
of cited cases. Without prior leave of the
Trademark Trial and Appeal Board, a
main brief on the case shall not exceed
fifty-five pages in length in its entirety,
including the table of contents, index of
cases, description of the record,
statement of the issues, recitation of the
facts, argument, and summary; and a
reply brief shall not exceed twenty-five
pages in its entirety. Evidentiary
objections that may properly be raised
in a party’s brief on the case may
instead be raised in an appendix or by
way of a separate statement of
objections. The appendix or separate
statement is not included within the
page limit. Any brief beyond the page
limits and any brief with attachments
outside the stated requirements may not
be considered by the Board.
■ 29. Amend § 2.129 by revising
paragraphs (a) through (c) to read as
follows:
§ 2.129
Oral argument; reconsideration.
(a) If a party desires to have an oral
argument at final hearing, the party
shall request such argument by a
separate notice filed not later than ten
days after the due date for the filing of
the last reply brief in the proceeding.
Oral arguments will be heard by at least
three Administrative Trademark Judges
or other statutory members of the
Trademark Trial and Appeal Board at
the time specified in the notice of
hearing. If any party appears at the
specified time, that party will be heard.
Parties and members of the Board may
attend in person or, at the discretion of
the Board, remotely. If the Board is
prevented from hearing the case at the
specified time, a new hearing date will
be set. Unless otherwise permitted, oral
arguments in an inter partes case will be
limited to thirty minutes for each party.
A party in the position of plaintiff may
reserve part of the time allowed for oral
argument to present a rebuttal argument.
(b) The date or time of a hearing may
be reset, so far as is convenient and
proper, to meet the wishes of the parties
and their attorneys or other authorized
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representatives. The Board may,
however, deny a request to reset a
hearing date for lack of good cause or if
multiple requests for rescheduling have
been filed.
(c) Any request for rehearing or
reconsideration or modification of a
decision issued after final hearing must
be filed within one month from the date
of the decision. A brief in response must
be filed within twenty days from the
date of service of the request. The times
specified may be extended by order of
the Trademark Trial and Appeal Board
on motion for good cause.
*
*
*
*
*
■ 30. Revise § 2.130 to read as follows:
§ 2.130 New matter suggested by the
trademark examining attorney.
If, while an inter partes proceeding
involving an application under section
1 or 44 of the Act is pending, facts
appear which, in the opinion of the
examining attorney, render the mark in
the application unregistrable, the
examining attorney should request that
the Board remand the application. The
Board may suspend the proceeding and
remand the application to the trademark
examining attorney for an ex parte
determination of the question of
registrability. A copy of the trademark
examining attorney’s final action will be
furnished to the parties to the inter
partes proceeding following the final
determination of registrability by the
trademark examining attorney or the
Board on appeal. The Board will
consider the application for such further
inter partes action as may be
appropriate.
■ 31. Revise § 2.131 read as follows:
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§ 2.131 Remand after decision in inter
partes proceeding.
If, during an inter partes proceeding
involving an application under section
1 or 44 of the Act, facts are disclosed
which appear to render the mark
unregistrable, but such matter has not
been tried under the pleadings as filed
by the parties or as they might be
deemed to be amended under Rule 15(b)
of the Federal Rules of Civil Procedure
to conform to the evidence, the
Trademark Trial and Appeal Board, in
lieu of determining the matter in the
decision on the proceeding, may
remand the application to the trademark
examining attorney for reexamination in
the event the applicant ultimately
prevails in the inter partes proceeding.
Upon remand, the trademark examining
attorney shall reexamine the application
in light of the matter referenced by the
Board. If, upon reexamination, the
trademark examining attorney finally
refuses registration to the applicant, an
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appeal may be taken as provided by
§§ 2.141 and 2.142.
■ 32. Amend § 2.132 by revising
paragraphs (a) and (b) to read as follows:
§ 2.132 Involuntary dismissal for failure to
take testimony.
(a) If the time for taking testimony by
any party in the position of plaintiff has
expired and it is clear to the Board from
the proceeding record that such party
has not taken testimony or offered any
other evidence, the Board may grant
judgment for the defendant. Also, any
party in the position of defendant may,
without waiving the right to offer
evidence in the event the motion is
denied, move for dismissal on the
ground of the failure of the plaintiff to
prosecute. The party in the position of
plaintiff shall have twenty days from the
date of service of the motion to show
cause why judgment should not be
rendered dismissing the case. In the
absence of a showing of excusable
neglect, judgment may be rendered
against the party in the position of
plaintiff. If the motion is denied,
testimony periods will be reset for the
party in the position of defendant and
for rebuttal.
(b) If no evidence other than Office
records showing the current status and
title of plaintiff’s pleaded registration(s)
is offered by any party in the position
of plaintiff, any party in the position of
defendant may, without waiving the
right to offer evidence in the event the
motion is denied, move for dismissal on
the ground that upon the law and the
facts the party in the position of plaintiff
has shown no right to relief. The party
in the position of plaintiff shall have
twenty days from the date of service of
the motion to file a brief in response to
the motion. The Trademark Trial and
Appeal Board may render judgment
against the party in the position of
plaintiff, or the Board may decline to
render judgment until all testimony
periods have passed. If judgment is not
rendered on the motion to dismiss,
testimony periods will be reset for the
party in the position of defendant and
for rebuttal.
*
*
*
*
*
■ 33. Amend § 2.134 by revising
paragraph (b) to read as follows:
§ 2.134 Surrender or voluntary
cancellation of registration.
*
*
*
*
*
(b) After the commencement of a
cancellation proceeding, if it comes to
the attention of the Trademark Trial and
Appeal Board that the respondent has
permitted its involved registration to be
cancelled under section 8 or section 71
of the Act of 1946, or has failed to renew
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its involved registration under section 9
of the Act of 1946, or has allowed its
registered extension of protection to
expire under section 70(b) of the Act of
1946, an order may be issued allowing
respondent until a set time, not less
than fifteen days, in which to show
cause why such cancellation, failure to
renew, or expiration should not be
deemed to be the equivalent of a
cancellation by request of respondent
without the consent of the adverse party
and should not result in entry of
judgment against respondent as
provided by paragraph (a) of this
section. In the absence of a showing of
good and sufficient cause, judgment
may be entered against respondent as
provided by paragraph (a) of this
section.
■ 34. Revise § 2.136 to read as follows:
§ 2.136 Status of application on
termination of proceeding.
After the Board has issued its decision
in an opposition or concurrent use
proceeding, and after the time for filing
any appeal of the decision has expired,
or any appeal that was filed has been
decided and the Board’s decision
affirmed, the proceeding will be
terminated by the Board. On
termination of an opposition or
concurrent use proceeding, if the
judgment is not adverse to the
applicant, the application returns to the
status it had before the institution of the
proceeding. If the judgment is adverse to
the applicant, the application stands
refused without further action and all
proceedings thereon are considered
terminated.
■ 35. Amend § 2.142 by revising
paragraphs (b), (c), (d), (e), and (f)(1)
through (f)(4) and (f)(6) to read as
follows:
§ 2.142 Time and manner of ex parte
appeals.
*
*
*
*
*
(b)(1) The brief of appellant shall be
filed within sixty days from the date of
appeal. If the brief is not filed within the
time allowed, the appeal may be
dismissed. The examining attorney
shall, within sixty days after the brief of
appellant is sent to the examining
attorney, file with the Trademark Trial
and Appeal Board a written brief
answering the brief of appellant and
shall mail a copy of the brief to the
appellant. The appellant may file a
reply brief within twenty days from the
date of mailing of the brief of the
examining attorney.
(2) Briefs must be submitted in
written form and must meet the
requirements prescribed in § 2.126. Each
brief shall contain an alphabetical index
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of cited cases. Without prior leave of the
Trademark Trial and Appeal Board, a
brief shall not exceed twenty-five pages
in length in its entirety, including the
table of contents, index of cases,
description of the record, statement of
the issues, recitation of the facts,
argument, and summary. A reply brief
from the appellant, if any, shall not
exceed ten pages in length in its
entirety. Unless authorized by the
Board, no further briefs are permitted.
(3) Citation to evidence in briefs
should be to the documents in the
electronic application record by date,
the name of the paper under which the
evidence was submitted, and the page
number in the electronic record.
(c) All requirements made by the
examining attorney and not the subject
of appeal shall be complied with prior
to the filing of an appeal, and the
statement of issues in the brief should
note such compliance.
(d) Evidence shall not be submitted
after the filing of a notice of appeal. If
the appellant or the examining attorney
desires to introduce additional evidence
after an appeal is filed, the appellant or
the examining attorney must submit a
request to the Board to suspend the
appeal and to remand the application
for further examination.
(e)(1) If the appellant desires an oral
hearing, a request should be made by a
separate notice filed not later than ten
days after the due date for a reply brief.
Oral argument will be heard by at least
three Administrative Trademark Judges
or other statutory members of the
Trademark Trial and Appeal Board at
the time specified in the notice of
hearing, which may be reset if the Board
is prevented from hearing the argument
at the specified time or, so far as is
convenient and proper, to meet the wish
of the appellant or the appellant’s
attorney or other authorized
representative. Appellants, examining
attorneys, and members of the Board
may attend in person or, at the
discretion of the Board, remotely.
(2) If the appellant requests an oral
argument, the examining attorney who
issued the refusal of registration or the
requirement from which the appeal is
taken, or in lieu thereof another
examining attorney as designated by a
supervisory or managing attorney, shall
present an oral argument. If no request
for an oral hearing is made by the
appellant, the appeal will be decided on
the record and briefs.
(3) Oral argument will be limited to
twenty minutes by the appellant and ten
minutes by the examining attorney. The
appellant may reserve part of the time
allowed for oral argument to present a
rebuttal argument.
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(f)(1) If, during an appeal from a
refusal of registration, it appears to the
Trademark Trial and Appeal Board that
an issue not previously raised may
render the mark of the appellant
unregistrable, the Board may suspend
the appeal and remand the application
to the examining attorney for further
examination to be completed within the
time set by the Board.
(2) If the further examination does not
result in an additional ground for
refusal of registration, the examining
attorney shall promptly return the
application to the Board, for resumption
of the appeal, with a written statement
that further examination did not result
in an additional ground for refusal of
registration.
(3) If the further examination does
result in an additional ground for
refusal of registration, the examining
attorney and appellant shall proceed as
provided by §§ 2.61, 2.62, and 2.63. If
the ground for refusal is made final, the
examining attorney shall return the
application to the Board, which shall
thereupon issue an order allowing the
appellant sixty days from the date of the
order to file a supplemental brief
limited to the additional ground for the
refusal of registration. If the
supplemental brief is not filed by the
appellant within the time allowed, the
appeal may be dismissed.
(4) If the supplemental brief of the
appellant is filed, the examining
attorney shall, within sixty days after
the supplemental brief of the appellant
is sent to the examining attorney, file
with the Board a written brief answering
the supplemental brief of appellant and
shall mail a copy of the brief to the
appellant. The appellant may file a
reply brief within twenty days from the
date of mailing of the brief of the
examining attorney.
*
*
*
*
*
(6) If, during an appeal from a refusal
of registration, it appears to the
examining attorney that an issue not
involved in the appeal may render the
mark of the appellant unregistrable, the
examining attorney may, by written
request, ask the Board to suspend the
appeal and to remand the application to
the examining attorney for further
examination. If the request is granted,
the examining attorney and appellant
shall proceed as provided by §§ 2.61,
2.62, and 2.63. After the additional
ground for refusal of registration has
been withdrawn or made final, the
examining attorney shall return the
application to the Board, which shall
resume proceedings in the appeal and
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take further appropriate action with
respect thereto.
*
*
*
*
*
■ 36. Add and reserve § 2.143 to read as
follows:
§ 2.143
■
[Reserved]
37. Revise § 2.145 to read as follows:
§ 2.145
Appeal to court and civil action.
(a) For an Appeal to the United States
Court of Appeals for the Federal Circuit
under section 21(a) of the Act. (1) An
applicant for registration, or any party to
an interference, opposition, or
cancellation proceeding or any party to
an application to register as a
concurrent user, hereinafter referred to
as inter partes proceedings, who is
dissatisfied with the decision of the
Trademark Trial and Appeal Board and
any registrant who has filed an affidavit
or declaration under section 8 or section
71 of the Act or who has filed an
application for renewal and is
dissatisfied with the decision of the
Director (§§ 2.165, 2.184), may appeal to
the United States Court of Appeals for
the Federal Circuit. It is unnecessary to
request reconsideration by the Board
before filing any such appeal; however,
a party requesting reconsideration must
do so before filing a notice of appeal.
(2) In all appeals under section 21(a),
the appellant must take the following
steps:
(i) File the notice of appeal with the
Director, addressed to the Office of the
General Counsel, as provided in § 104.2
of this chapter;
(ii) File a copy of the notice of appeal
with the Trademark Trial and Appeal
Board via ESTTA; and
(iii) Comply with the requirements of
the Federal Rules of Appellate
Procedure and Rules for the United
States Court of Appeals for the Federal
Circuit, including serving the requisite
number of copies on the Court and
paying the requisite fee for the appeal.
(3) Additional requirements. (i) The
notice of appeal shall specify the party
or parties taking the appeal and shall
designate the decision or part thereof
appealed from.
(ii) In inter partes proceedings, the
notice of appeal must be served as
provided in § 2.119.
(b) For a notice of election under
section 21(a)(1) to proceed under
section 21(b) of the Act. (1) Any
applicant or registrant in an ex parte
case who takes an appeal to the United
States Court of Appeals for the Federal
Circuit waives any right to proceed
under section 21(b) of the Act.
(2) If an adverse party to an appeal
taken to the United States Court of
Appeals for the Federal Circuit by a
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defeated party in an inter partes
proceeding elects to have all further
review proceedings conducted under
section 21(b) of the Act, that party must
take the following steps:
(i) File a notice of election with the
Director, addressed to the Office of the
General Counsel, as provided in § 104.2
of this chapter;
(ii) File a copy of the notice of
election with the Trademark Trial and
Appeal Board via ESTTA; and
(iii) Serve the notice of election as
provided in § 2.119.
(c) For a civil action under section
21(b) of the Act. (1) Any person who
may appeal to the United States Court
of Appeals for the Federal Circuit
(paragraph (a) of this section), may have
remedy by civil action under section
21(b) of the Act. It is unnecessary to
request reconsideration by the Board
before filing any such civil action;
however, a party requesting
reconsideration must do so before filing
a civil action.
(2) Any applicant or registrant in an
ex parte case who seeks remedy by civil
action under section 21(b) of the Act
must serve the summons and complaint
pursuant to Rule 4(i) of the Federal
Rules of Civil Procedure with the copy
to the Director addressed to the Office
of the General Counsel as provided in
§ 104.2 of this chapter. A copy of the
complaint must also be filed with the
Trademark Trial and Appeal Board via
ESTTA.
(3) The party initiating an action for
review of a Board decision in an inter
partes case under section 21(b) of the
Act must file notice thereof with the
Trademark Trial and Appeal Board via
ESTTA no later than five business days
after filing the complaint in the district
court. The notice must identify the civil
action with particularity by providing
the case name, case number, and court
in which it was filed. A copy of the
complaint may be filed with the notice.
Failure to file the required notice can
result in termination of the Board
proceeding and further action within
the United States Patent and Trademark
Office consistent with the final Board
decision.
(d) Time for appeal or civil action. (1)
For an appeal under section 21(a). The
notice of appeal filed pursuant to
section 21(a) of the Act must be filed
with the Director no later than sixtythree (63) days from the date of the final
decision of the Trademark Trial and
Appeal Board or the Director. Any
notice of cross-appeal is controlled by
Rule 4(a)(3) of the Federal Rules of
Appellate Procedure, and any other
requirement imposed by the Rules of the
VerDate Sep<11>2014
19:30 Apr 01, 2016
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United States Court of Appeals for the
Federal Circuit.
(2) For a notice of election under
21(a)(1) and a civil action pursuant to
such notice of election. The times for
filing a notice of election under section
21(a)(1) and for commencing a civil
action pursuant to a notice of election
are governed by section 21(a)(1) of the
Act.
(3) For a civil action under section
21(b). A civil action must be
commenced no later than sixty-three
(63) days after the date of the final
decision of the Trademark Trial and
Appeal Board or Director.
(4) Time computation. (i) If a request
for rehearing or reconsideration or
modification of the Board decision is
filed within the time specified in
§§ 2.127(b), 2.129(c) or 2.144, or within
any extension of time granted
thereunder, the time for filing an appeal
or commencing a civil action shall
expire no later than sixty-three (63) days
after action on the request.
(ii) Holidays. The times specified in
this section in days are calendar days.
If the last day of time specified for an
appeal, notice of election, or
commencing a civil action falls on a
Saturday, Sunday or Federal holiday in
the District of Columbia, the time is
extended to the next day which is
neither a Saturday, Sunday nor a
Federal holiday in the District of
Columbia pursuant to § 2.196.
(e) Extension of time. (1) The Director,
or the Director’s designee, may extend
the time for filing an appeal, or
commencing a civil action, upon written
request if:
(i) Requested before the expiration of
the period for filing an appeal or
commencing a civil action, and upon a
showing of good cause; or
(ii) Requested after the expiration of
the period for filing an appeal or
commencing a civil action, and upon a
showing that the failure to act was the
result of excusable neglect.
(2) The request must be filed as
provided in § 104.2 of this chapter and
addressed to the attention of the Office
of the Solicitor. A copy of the request
should also be filed with the Trademark
Trial and Appeal Board via ESTTA.
■ 38. Amend § 2.190 by revising
paragraphs (a) through (c) to read as
follows:
§ 2.190 Addresses for trademark
correspondence with the United States
Patent and Trademark Office.
(a) Trademark correspondence. In
general. All trademark-related
documents filed on paper, except
documents sent to the Assignment
Recordation Branch for recordation;
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requests for copies of trademark
documents; and certain documents filed
under the Madrid Protocol as specified
in paragraph (e) of this section, should
be addressed to: Commissioner for
Trademarks, P.O. Box 1451, Alexandria,
VA 22313–1451. All trademark-related
documents may be delivered by hand,
during the hours the Office is open to
receive correspondence, to the
Trademark Assistance Center, James
Madison Building—East Wing,
Concourse Level, 600 Dulany Street,
Alexandria, Virginia 22314.
(b) Electronic trademark documents.
An applicant may transmit a trademark
document through TEAS, at https://
www.uspto.gov. Documents that relate
to proceedings before the Trademark
Trial and Appeal Board shall be filed
directly with the Board electronically
through ESTTA, at https://
estta.uspto.gov.
(c) Trademark Assignments. Requests
to record documents in the Assignment
Recordation Branch may be filed
through the Office’s Web site, at https://
www.uspto.gov. Paper documents and
cover sheets to be recorded in the
Assignment Recordation Branch should
be addressed to: Mail Stop Assignment
Recordation Services, Director of the
United States Patent and Trademark
Office, P.O. Box 1450, Alexandria,
Virginia 22313–1450. See § 3.27 of this
chapter.
*
*
*
*
*
■ 39. Revise § 2.191 to read as follows:
§ 2.191 Business to be transacted in
writing.
All business with the Office should be
transacted in writing. The personal
appearance of applicants or their
representatives at the Office is
unnecessary. The action of the Office
will be based exclusively on the written
record. No attention will be paid to any
alleged oral promise, stipulation, or
understanding in relation to which there
is disagreement or doubt. The Office
encourages parties to file documents
through TEAS wherever possible, or
through ESTTA for documents in
proceedings before the Trademark Trial
and Appeal Board.
Dated: March 18, 2016.
Michelle K. Lee,
Under Secretary of Commerce for Intellectual
Property and Director, United States Patent
and Trademark Office.
[FR Doc. 2016–06672 Filed 4–1–16; 8:45 am]
BILLING CODE 3510–16–P
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[FR Doc No: 2016-06672]
[[Page 19295]]
Vol. 81
Monday,
No. 64
April 4, 2016
Part II
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 of
Practice; Proposed Rules
Federal Register / Vol. 81 , No. 64 / Monday, April 4, 2016 /
Proposed Rules
[[Page 19296]]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 2
[Docket No. PTO-T-2009-0030]
RIN 0651-AC35
Miscellaneous Changes to Trademark Trial and Appeal Board Rules
of Practice
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of Proposed Rulemaking.
-----------------------------------------------------------------------
SUMMARY: The United States Patent and Trademark Office (``USPTO'' or
``Office'') proposes to amend the Trademark Rules of Practice
(``Trademark Rules'' or ``Rules''), in particular the rules pertinent
to practice before the Trademark Trial and Appeal Board (``Board''), to
benefit the public by providing for more efficiency and clarity in
inter partes and ex parte proceedings. Certain amendments are being
proposed to reduce the burden on the parties, to conform the rules to
current practice, to update references that have changed, to reflect
technologic changes, and to ensure the usage of standard, current
terminology. The proposed rules will also further strategic objectives
of the Office to increase the end-to-end electronic processing.
DATES: Comments must be received by June 3, 2016 to ensure
consideration.
ADDRESSES: The Office prefers that comments be submitted via electronic
mail message to TTABFRNotices@uspto.gov. Written comments also may be
submitted by mail to Trademark Trial and Appeal Board, P.O. Box 1451,
Alexandria, VA 22313-1451, attention Cheryl Butler; by hand delivery to
the Trademark Assistance Center, Concourse Level, James Madison
Building-East Wing, 600 Dulany Street, Alexandria, Virginia, attention
Cheryl Butler; or by electronic mail message via the Federal
eRulemaking Portal. See the Federal eRulemaking Portal Web site, https://www.regulations.gov, for additional instructions on providing comments
via the Federal eRulemaking Portal. Written comments will be available
for public inspection on the Office's Web site at https://www.uspto.gov,
on the Federal eRulemaking Portal, and at the Trademark Assistance
Center, Concourse Level, James Madison Building-East Wing, 600 Dulany
Street, Alexandria, Virginia.
FOR FURTHER INFORMATION CONTACT: Cheryl Butler, Trademark Trial and
Appeal Board, by email at TTABFRNotices@uspto.gov, or by telephone at
(571) 272-4259.
SUPPLEMENTARY INFORMATION:
Executive Summary: Purpose: The proposed amendments to the rules
emphasize the efficiency of electronic filing, which is already
utilized by most parties in Board proceedings. In particular, it is
proposed that all submissions will be filed through the Board's online
filing system, the Electronic System for Trademark Trials and Appeals
(``ESTTA'') (available at https://www.uspto.gov), except in certain
limited circumstances.
To simplify proceedings, the Office proposes to resume service
requirements for notices of opposition, petitions for cancellation, and
concurrent use proceedings, and proposes to require parties to serve
all other submissions and papers by email. The proposed amended rules
promote other efficiencies in proceedings, such as imposing discovery
limitations, and allowing parties to take testimony by affidavit or
declaration, with the option for oral cross-examination. It is being
proposed that the proportionality requirement implemented in the 2015
amendments to the Federal Rules of Civil Procedure be expressly
incorporated into the Board's proposed amended rules, which in-part
adapt to recent changes to the Federal Rules of Civil Procedure, while
taking into account the administrative nature of Board proceedings.
Other proposed amended rules address the Board's standard
protective order and codify recent case law, including the submission
of internet materials. Recognition of remote attendance at oral
hearings is proposed to be codified, and new requirements for
notification to the Office and the Board when review by way of civil
action is taken are proposed in order to avoid premature termination of
a Board proceeding. The proposed amendments also make minor changes to
correct or update certain rules so that they clearly reflect current
Board practice and terminology.
Costs and Benefits: This rulemaking is not economically significant
under Executive Order 12866 (Sept. 30, 1993).
References below to ``the Act,'' ``the Trademark Act,'' or ``the
statute'' refer to the Trademark Act of 1946, 15 U.S.C. 1051 et seq.,
as amended. References to ``TBMP'' refer to the June 2015 edition of
the Trademark Trial and Appeal Board Manual of Procedure.
Background
Reasons for Proposed Rule Changes
The last major set of rule changes at the Board took effect in
2007; the time is ripe for changes that will assist stakeholders in
achieving more efficient practice before the Board. In the years since
2007, technology changes have allowed Board operations to move much
closer toward the goal of realizing a fully integrated paperless filing
and docketing system. In addition, many stakeholders have embraced use
of the Board's Accelerated Case Resolution (``ACR'') procedures, which
has provided the Board with insight as to the effectiveness of the
various procedures to which users of ACR have agreed, and which can be
leveraged to benefit all parties involved in Board proceedings. The
Federal Rules of Civil Procedure have changed in ways that are
appropriate for codification into Board rules at this time, and the
Board rules must be updated to reflect precedential decisions of the
Board and the courts.
The revised rules would apply to every pending case and every new
case commenced on or after the effective date of the rulemaking. Any
issues that may arise concerning the transition to the revised rules
for cases pending as of the effective date of the rules would be
addressed by the Board and the parties on a case-by-case basis,
allowing for flexibility to respond to the unique needs in each case,
particularly with respect to scheduling matters.
Electronic Filing
The Board's electronic filing system, ESTTA, came online in 2002.
Since that time electronic filings with the Board have steadily
increased. Today well over 95 percent of filings are submitted via
ESTTA. In addition, during this time, the Board has effectively
communicated with parties through email for notices, orders, and
decisions when the party has provided an email address, and since 2006,
the Board institution order has included a link to the case file in
TTABVUE, the Board's database of electronic case files. In view of this
trend, and to further streamline proceedings, the proposed rules
require that all filings be made through ESTTA and provide that the
Board will send its notices, orders, and decisions via email. Eastern
Time continues to control the timeliness of filing dates.
ESTTA already requires plaintiffs commencing a trial proceeding to
select relevant grounds for opposition and cancellation, enhancing the
accuracy of notice pleading, and under the proposed rules defendants
would be required to
[[Page 19297]]
inform the Board of any other related proceeding that serves as, or in
essence could be viewed as, a counterclaim. In addition, under the
proposed rules plaintiffs in a cancellation proceeding would have to
include the name and address, including an email address, of any
attorney reasonably believed by the plaintiff to be a possible
representative of the owner in matters regarding the registration.
Cancellation plaintiffs often are privy to such information and have
traditionally provided it to the Board. The proposed rules codify this
practice; the goal of this requirement is simply to assist in locating
current owners of registrations, so that each cancellation case will
involve the real parties in interest. To be clear, any attorney so
identified is not considered counsel of record for the defendant until
and unless either a power of attorney is filed or an appearance is made
by the attorney in the proceeding.
The proposed rules codify that any notification of non-delivery of
the Board's electronic notice of institution may also prompt additional
notice of commencement of the case by publication in the USPTO Official
Gazette. The Board would continue its practice of using other
appropriate and available means to contact a party to ensure the real
party in interest is notified of the proceeding. These changes
recognize and embrace the shift by stakeholders from paper filing to
electronic filing.
The Board would continue to accept paper filing of a notice of
opposition or petition for cancellation in the rare circumstances when
filing through ESTTA is not possible; however, parties attempting to
commence a proceeding through a paper filing would have to concurrently
file, to the attention of the Board, a petition to the Director with a
showing that either ESTTA was unavailable due to technical problems or
extraordinary circumstances are present. This procedure for paper
filing would be required for all filings (e.g., motions, testimony, and
notices of reliance) with the Board.
In the event of more serious circumstances that could affect the
Office's filing systems, such as the disruption of Office systems in
December 2015, the Board will be flexible in making accommodation for
such an event.
Service and Electronic Communication
In 2007, the USPTO amended the rules to require each plaintiff to
serve the complaint on the defendant. This was a change from long-
standing practice where the Board served the complaint on the defendant
with the notice of institution. The proposed rules now shift the
responsibility for serving the complaint back to the Board. However, in
keeping with the progress toward complete use of electronic
communication, the Board would not forward a paper copy of the
complaint but rather would serve the complaint in the form of a link to
TTABVUE in the notice of institution. In addition, recognizing that the
correspondence address for a registered extension of protection under
the Madrid Protocol, 15 U.S.C. 1141i, is the international registration
holder's designated representative, the Board would forward the notice
of institution to the registrant's designated representative.
Under the 2007 rules, parties are allowed (and encouraged) to
stipulate to electronic service between the parties for all filings
with the Board. Over the last few years, this has become the common
practice, and the USPTO proposes to codify that practice by requiring
service between parties by email for all filings with the Board and any
other papers served on a party not required to be filed with the Board
(e.g., disclosures, discovery, etc.). The proposed rules nonetheless
allow for parties to stipulate otherwise, to accommodate other methods
of communication that may promote convenience and expediency (for
example, a file hosting service that provides cloud storage, delivery
of a USB drive, etc.). In addition, in the event service by email is
not possible due to technical problems or extraordinary circumstances,
and there is no stipulation to other methods, the party would have to
include a statement with its submission or paper explaining why service
by email was not possible, and the certificate of service would have to
reflect the manner in which service was made. The statement is meant to
assist the Board in ascertaining whether a repeating problem exists
that may be alleviated with Board guidance. The statement is not
intended to provide fertile ground for motion practice. In any event,
methods of service of discovery requests and responses and document
production remain subject to the parties' duty to cooperate under the
Federal Rules of Civil Procedure and the Trademark Rules and are to be
discussed during the settlement and discovery planning conference.
Parties may avail themselves of Board participation in these
conferences to ensure the most expeditious manner of service is
achieved.
In view of service by email, the additional five days previously
added to a prescribed period for response, to account for mail delays,
would be removed. The response period for a motion would be initiated
by its service date and would run for 20 days, except that the response
period for summary judgment motions would remain 30 days. Similarly, no
additional time would be available for the service of discovery
responses.
Streamlining Discovery and Pretrial Procedure
The proposed rules adopt amendments to the Federal Rules of Civil
Procedure by codifying the concept of ``proportionality'' in discovery.
In addition, the proposed rules codify the ability of parties to
stipulate to limit discovery by shortening the period, limiting
requests, using reciprocal disclosures in lieu of discovery, or
eliminating discovery altogether. To align further with the Federal
Rules, the proposed rules explicitly include reference to
electronically stored information (``ESI'') and tangible things as
subject matter for discovery. The Board continues to view the universe
of ESI within the context of its narrower scope of jurisdiction, as
compared to that of the federal district courts. The burden and expense
of e-discovery will weigh heavily in any consideration. See Frito-Lay
North America Inc. v. Princeton Vanguard LLC, 100 USPQ2d 1904, 1909
(TTAB 2011). The inclusion of ESI in the rule simply recognizes that
many relevant documents are now kept in electronic form.
Under the proposed amendments, motions to compel initial
disclosures must be filed within 30 days after the deadline for initial
disclosures.
The proposed rules limit the number of requests for production of
documents and requests for admissions to 75, the same as the current
limitation on interrogatories, and remove the option to request
additional interrogatories. In addition, the proposed rules allow for
each party that has received produced documents to serve one
comprehensive request for admission on the producing party, whereby the
producing party would authenticate all produced documents or specify
which documents cannot be authenticated. These proposed limitations on
discovery simply recognize general practice and are meant to curtail
abuse and restrain litigation expense for stakeholders. In view of the
Board's narrow jurisdiction, the need to move for additional requests
would be unlikely; however, the Office can revisit this issue based on
comments from stakeholders.
Many commenced trial cases are quickly settled, withdrawn, or
decided by default, and many others involve
[[Page 19298]]
cooperative parties who engage in useful settlement and discovery
planning conferences. For more contentious cases, involvement of a
Board Interlocutory Attorney in the conference is encouraged, and the
proposed rules codify the ability of the Interlocutory Attorneys to sua
sponte participate in a discovery conference when they consider it
useful. In addition, the circumstances under which telephone
conferences with Interlocutory Attorneys can be sought by a party or
initiated by the Interlocutory Attorney would be broadened to encompass
any circumstances in which they ``would be beneficial.''
Under the proposed rule changes, discovery must be served early
enough in the discovery period that responses will be provided and all
discovery will be complete by the close of discovery. This includes
production of documents, which would have to be produced or inspected
by the close of discovery.
Under the proposed rules, discovery disputes would have to be
resolved promptly following the close of discovery. The current
deadline for filing motions to compel is merely prior to the
commencement of the first trial period. Under the proposed revisions,
however, motions to compel discovery or to determine the sufficiency of
responses to requests for admissions must be filed prior to the
deadline for the plaintiff's pretrial disclosures for the first
testimony period. These revisions are intended to avoid the expense and
uncertainty that arise when discovery disputes erupt on the eve of
trial. These changes would also ensure that pretrial disclosures would
be made and trial preparation would be engaged in only after all
discovery issues have been resolved. In addition, the Board would be
able to reset the pretrial disclosure deadline and testimony periods
after resolving any motions relating to discovery and allowing time for
compliance with any orders requiring additional responses or
production.
Parties would also be subject to a requirement to inform adverse
parties when prospective witnesses located outside the United States
are expected to be present in the United States. This obligation would
continue through discovery (as well as during trial if the witness
could be called to testify), subject to the Board's determination of
whether the party has been reasonable in meeting this obligation.
In 2007, the rules were amended to make the Board's standard
protective order applicable in all proceedings, during disclosure,
discovery, and trial, though parties have been able to agree to
alternative orders, subject to Board approval. This has worked well,
and the proposed rules clarify that the protective order is imposed in
all inter partes proceedings. Parties would continue to have the
flexibility to move forward under an alternative order by stipulation
or motion approved by the Board. The proposed rules also codify
practice and precedent that the Board may treat as not confidential
material which cannot reasonably be considered confidential,
notwithstanding party designations. See Edwards Lifesciences Corp. v.
VigiLanz Corp., 94 USPQ2d 1399, 1402-03 (TTAB 2010).
Since 2007, several types of consented motions for extensions and
suspensions have been granted automatically by the Board's electronic
filing system and the proposed rules codify this practice, while
retaining the ability of Board personnel to require that certain
conditions be met prior to approval. Thus, the practice by which some
consented motions to extend or suspend are not automatically approved
and would be reviewed and processed by a Board paralegal or attorney
would continue. In addition, non-dispositive matters could be acted on
by paralegals, and the proposed rules clarify that orders on motions
under the designation, ``By the Trademark Trial and Appeal Board,''
have the same legal effect as orders by a panel of three judges.
To clarify the obligations of the parties and render the status and
timeline for a case more predictable, the proposed rules provide that a
trial proceeding is suspended upon filing of a timely potentially-
dispositive motion.
As with the timing of motions relating to discovery disputes that
remain unresolved by the parties at the close of discovery, referenced
above, motions for summary judgment also would have to be filed prior
to the deadline for plaintiff's pretrial disclosures for the first
testimony period. This would avoid disruption of trial planning and
preparation through the filing, as late as on the eve of trial, of
motions for summary judgment.
The existing rule for convening a pretrial conference because of
the complexity of issues is proposed to be limited to exercise only by
the Board, upon the Board's initiative.
Efficient Trial Procedures
For some time now parties have had the option to stipulate to ACR,
which can be adopted in various forms. A common approach is for parties
to stipulate that summary judgment cross motions will substitute for a
trial record and traditional briefs at final hearing and the Board may
resolve any issues of fact that otherwise might be considered subject
to dispute. Other approaches adopted by parties utilizing the
efficiencies of the ACR process have included agreements to limit
discovery, agreements to shorten trial periods or the time between
trial periods, stipulations to facts or to the admissibility of
documents or other evidence, and stipulations to proffers of testimony
by declaration or affidavit. These types of efficiencies would be
codified by specifically providing for such stipulations and, most
significantly, by allowing a unilateral option for trial testimony by
affidavit or declaration subject to the right of oral cross examination
by the adverse party or parties. Parties also would continue to be able
to stipulate to rely on summary judgment materials as trial evidence.
The proposed rules would codify two changes in recent years,
effected by case law and practice, expanding the option to submit
certain documents by notice of reliance. First, the proposed rules
codify existing law that pleaded registrations and registrations owned
by any party may be made of record via notice of reliance by submitting
therewith a current printout of information from the USPTO electronic
database records showing current status and title. The rules currently
allow for such printouts to be attached to the notice of opposition or
petition for cancellation; the proposed change specifically also allows
for such printouts to be submitted under notice of reliance. Second,
the proposed rules codify that internet materials also may be submitted
under a notice of reliance, as provided by Safer, Inc. v. OMS
Investments, Inc., 94 USPQ2d 1031 (TTAB 2010).
To alleviate any uncertainty, the proposed rules add a subsection
to the requirements for a notice of reliance, specifically, to require
that the notice indicate generally the relevance of the evidence and
associate it with one or more issues in the proceeding. In an effort to
curtail motion practice on this point, the proposed rule explicitly
states any failure of a notice of reliance to meet this requirement
would be considered a curable procedural defect. This codifies the
holding of FUJIFILM SonoSite, Inc. v. Sonoscape Co., 111 USPQ2d 1234,
1237 (TTAB 2014).
Under the proposed rule changes, a party must file any motion to
use a discovery deposition at trial along with its pretrial
disclosures. Also, an adverse party would be able to move to quash a
notice of testimony deposition if the witness was not included in the
pretrial
[[Page 19299]]
disclosures, and an adverse party would be able to move to strike
testimony presented by affidavit or declaration if the witness was not
included in the pretrial disclosure.
Similar to the above-referenced proposal in regard to taking
discovery from witnesses otherwise located outside the United States
but who may be present in the United States during discovery, the
proposed rules also provide that a party will have to inform adverse
parties when it knows a prospective trial witness otherwise located
outside the United States will be within the jurisdiction of the United
States during trial.
In response to Cold War Museum Inc. v. Cold War Air Museum Inc.,
586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009), the proposed
rules make clear that while the file history of the subject application
or registration is of record, statements in affidavits or declarations
in the file are not evidence.
The Board has seen an increase in testimony deposition transcripts
that do not include a word index, and the proposed rules would require
a word index for all testimony transcripts. For ease of review,
deposition transcripts also would have to be submitted in full-sized
format, not condensed with multiple pages per sheet. More broadly, the
proposed rules would make clear that it is the parties' responsibility
to ensure that all exhibits pertaining to an electronic submission must
be clear and legible.
The proposed rules codify case law and Board practice under which
the Board may sua sponte grant judgment for the defendant when the
plaintiff has not submitted evidence, even where the plaintiff has
responded to the Board's show cause order for failure to file a brief
but has either not moved to reopen its trial period or not been
successful in any such motion. Gaylord Entertainment Co. v. Calvin
Gilmore Productions. Inc., 59 USPQ2d 1369, 1372 (TTAB 2000).
To alleviate confusion and codify case law, the proposed rules
clarify that evidentiary objections may be set out in a separate
appendix that does not count against the page limit for a brief and
that briefs exceeding the page limit may not be considered by the
Board. Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d
1750, 1753-54 (TTAB 2013) (Appropriate evidentiary objections may be
raised in appendix or separate paper rather than in text of brief.),
aff'd, 565 F. App'x 900 (Fed. Cir. 2013) (mem.).
Remand Procedures/Appeal Procedures
Certain aspects of ex parte appeals procedure are clarified in the
proposed amendments. Under the proposed rules, evidence shall not be
submitted after the filing of the notice of appeal and may only be
added to the record when attached to a timely request for
reconsideration or via a request for remand. This is not a change to
the substance of the existing rule, but is designed to address a
recurring error by applicants during ex parte appeal.
Reply briefs in ex parte appeals would be limited to 10 pages. To
facilitate consideration and discussion of record evidence, citation to
evidence in all the briefs for the appeal, by the applicant and
examining attorney, would be to the documents in the electronic
application record by docket entry date and page number.
The proposed rules provide that, if during an inter partes
proceeding the examining attorney believes certain facts render an
applied-for mark unregistrable, the examining attorney should formally
request remand of the application to the Trademark Examining Operation
rather than simply notify the Board.
Other Clarification of Board Practice and Codification of Case Law
Correlative to electronic filing and communication, the Board also
has made it possible for parties, examining attorneys, and members of
the Board to attend hearings remotely through video conference. The
proposed rules codify that option.
In 2.106(a) and 2.114(a) the proposed rules codify case law and
practice to make it clear that when no answer has been filed, all other
deadlines are tolled. If the parties have continued to litigate after
an answer is late-filed, it would generally be viewed as a waiver of
the technical default.
The proposed rules provide that a Notice of Opposition to an
application under Trademark Act Sec. 66(a) must identify the goods and
services opposed and the grounds for opposition on the ESTTA cover
sheet and may not be amended to expand the opposition to cover goods or
services beyond those referenced on the ESTTA cover sheet. These
amendments codify the holding of Hunt Control Systems Inc. v.
Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1561-62 (TTAB
2011). In addition, the rules would clarify that after the close of the
time period for filing a Notice of Opposition, the notice may not be
amended to add a joint opposer.
Requirements for filing appeals of Board decisions are restructured
to align with the rules governing review of Patent Trial and Appeal
Board decisions. Further, all notices of appeal to the United States
Court of Appeals for the Federal Circuit must be filed with the USPTO's
Office of General Counsel and a copy filed with the Board via ESTTA.
When a party seeks review of a Board inter partes decision by
commencing a civil action, the proposed amendments clarify that a
notice of such commencement must be filed with the Board via ESTTA to
avoid premature termination of the Board proceeding during pendency of
the civil action. The proposed amendments further require that both a
notice and a copy of the complaint for review of an ex parte decision
by way of civil action are to be filed with the USPTO's Office of
General Counsel with a copy to be filed with the Board via ESTTA.
Public Participation
The Board began 2015 looking ahead to the implementation of changes
in the Federal Rules of Civil Procedure then scheduled to take effect
in December 2015. The Board also looked back on its multi-year campaign
to promote the use of Accelerated Case Resolution, to determine lessons
learned, and to identify ways to leverage the benefits of ACR into all
Board trial cases. For these and other reasons, it became clear that
the timing was right to consider updating the Board's rules. On January
29, 2015, the Board held an ESTTA Users Forum, directed to issues and
matters involving electronic filing. On February 19, 2015, the Board
held a Stakeholder Roundtable concerning matters of practice and
received comments and suggestions from various organizations
representing intellectual property user groups, including inside
counsel, outside counsel, and mark owners and applicants. That February
roundtable involved discussion of many of the provisions that are now
included in the proposed rule package. The Board also engaged in
significant stakeholder outreach throughout 2015, alerting users in
locations across the country about the issues that they could expect to
be addressed in prospective rulemaking. Finally, the Board engaged the
Trademark Public Advisory Committee on process and procedure changes
under consideration, on multiple occasions during the year. All of
these events have enriched the process through which the Board has
developed proposed rule changes and served as a precursor to the
continuing discussion with stakeholders that the Office seeks through
this Notice of Proposed Rulemaking.
[[Page 19300]]
Discussion of Proposed Rules Changes
The Office proposes to make the following amendments:
Interferences and Concurrent Use Proceedings
Preliminary to Interference
The Office proposes to amend Sec. 2.92 to incorporate a
nomenclature change from ``Examiner of Trademarks'' to ``examining
attorney.''
Adding Party to Interference
The Office proposes to amend Sec. 2.98 to incorporate a
nomenclature change from ``examiner'' to ``examining attorney.''
Application To Register as a Concurrent User
The Office proposes to amend Sec. 2.99(c) and (d) to change
``notification'' to ``notice of institution'' or ``notice,'' and to
specify that the notice will be transmitted via email.
The Office proposes to revise Sec. 2.99(d)(1) to remove the
service requirement for applicants for concurrent use registration and
to specify that the notice of institution will include a web link or
web address for the concurrent use proceeding.
The Office proposes to amend Sec. 2.99(d)(2) to clarify that an
answer to the notice of institution is not required by an applicant or
registrant whose application or registration is acknowledged in the
concurrent use application.
The Office proposes to amend Sec. 2.99(d)(3) to clarify that a
user who does not file an answer when required is in default, but the
burden of providing entitlement to registration(s) remains with the
concurrent use applicant(s).
The Office proposes to amend Sec. 2.99(f)(3) to incorporate a
nomenclature change from ``examiner'' to ``examining attorney.''
Opposition
Filing an Opposition
The Office proposes to amend Sec. 2.101(a) and (b) to remove the
opposer's requirement to serve a copy of the notice of opposition on
applicant.
The Office proposes to amend Sec. 2.101(b)(1) to require that
oppositions be filed through ESTTA. The proposed amendment continues
the existing unconditional requirement that an opposition to an
application based on Section 66(a) of the Trademark Act must be filed
through ESTTA, but provides that an opposition against an application
based on Section 1 or 44 of the Act may be filed in paper form in the
event that ESTTA is unavailable due to technical problems or when
extraordinary circumstances are present. The proposed amendment
codifies the use of electronic filing.
The Office proposes to amend Sec. 2.101(b)(2) to require that a
paper opposition to an application must be accompanied by a Petition to
the Director under Sec. 2.146(a)(5), with the required fees and
showing, and to add that timeliness of the submission will be
determined in accordance with Sec. Sec. 2.195 through 2.198.
The Office proposes to amend Sec. 2.101(c) by moving the content
of paragraph (d)(1) to the end of paragraph (c).
The Office proposes to amend Sec. 2.101(d) by removing paragraphs
(1), (3), and (4), but retaining the content in paragraph (d)(2) in an
undesignated paragraph, and providing that an ESTTA opposition cannot
be filed absent sufficient fees and a paper opposition accompanied by
insufficient fees may not be instituted, but a potential opposer may
resubmit the opposition with the required fee if time remains. The
proposed revisions are intended to simplify the rules pertaining to
insufficient fees.
The Office proposes to amend Sec. 2.101(d)(4) to rename it as
Sec. 2.101(e) and clarify that the filing date of an opposition is the
date of electronic receipt in the Office of the notice of opposition
and required fee and to add that the filing date for a paper filing,
where permitted, will be determined in accordance with Sec. Sec. 2.195
through 2.198.
Extension of Time for Filing an Opposition
The Office proposes to amend Sec. 2.102 to omit references to
``written'' requests for extensions of time, as it is unnecessary in
view of the requirement in Sec. 2.191 that all business be conducted
in writing.
The Office proposes to amend Sec. 2.102(a)(1) to require that
requests to extend the time for filing an opposition be filed through
ESTTA. The proposed amendment continues the existing requirement that
an opposition to an application based on Section 66(a) of the Act must
be filed through ESTTA, but provides that an opposition against an
application based on Section 1 or 44 of the Act may be filed in paper
form in the event that ESTTA is unavailable due to technical problems
or when extraordinary circumstances are present. The Office proposes to
amend Sec. 2.102(a)(2) to require that a paper request to extend the
opposition period must be accompanied by a Petition to the Director
under Sec. 2.146(a)(5), with the required fees and showing, and to add
that timeliness of the paper submission will be determined in
accordance with Sec. Sec. 2.195 through 2.198.
The Office proposes to amend Sec. 2.102(b) to clarify that an
opposition filed during an extension of time must be in the name of the
person to whom the extension was granted except in cases of
misidentification through mistake or where there is privity.
The Office proposes to amend Sec. 2.102(c)(1) to clarify that a
sixty-day extension is not available as a first extension of time to
oppose. The Office proposes to amend Sec. 2.102(c)(3) to clarify that
only a sixty-day time period is allowed for a final extension of the
opposition period.
The Office proposes to add new Sec. 2.102(d), which clarifies that
the filing date of a request to extend the time for filing an
opposition is the date of electronic receipt in the Office of the
notice of opposition and that the filing date for a paper filing, where
permitted, will be determined in accordance with Sec. Sec. 2.195
through 2.198.
Contents of Opposition
The Office proposes to amend Sec. 2.104(a) to specify that ESTTA
requires the opposer to select relevant grounds for opposition, and the
accompanying required statement supports and explains the grounds. The
proposed amendment codifies current Office practice.
The Office proposes to add new Sec. 2.104(c) to clarify that with
respect to an opposition to an application filed under Section 66(a) of
the Trademark Act, both the ESTTA cover sheet and accompanying
statement must identify the goods and/or services opposed and the
grounds for opposition and such an opposition may not be amended to
include goods, services, or grounds beyond those set forth in the cover
sheet. The proposed amendment conforms with Section 68(c)(3) of the
Act, is consistent with the proposed amendment to Sec. 2.107(b), and
codifies current case law and practice.
Notification to Parties of Opposition Proceeding(s)
The Office proposes to amend Sec. 2.105(a) to remove the service
requirement for opposers and to specify that the notice of institution
constitutes service and will include a web link or web address to
access the electronic proceeding record.
The Office proposes to amend Sec. Sec. 2.105(b) and (c) to provide
that it will effect service of the notice of opposition at the email or
correspondence address
[[Page 19301]]
of record for the parties, their attorneys, or their domestic
representatives.
Answer
The Office proposes to amend Sec. 2.106(a) to add that default may
occur after the time to answer is reset and that failure to file a
timely answer tolls all deadlines until the issue of default is
resolved. The proposed amendment codifies current Office practice and
is consistent with the Office's proposed amendment to Sec. 2.114(a).
The Office proposes to amend Sec. 2.106(b)(1) to specify that a
reply to an affirmative defense shall not be filed.
The Office proposes to amend Sec. 2.106(b)(2)(i) to add a
requirement that an applicant subject to an opposition proceeding must
promptly inform the Board of the filing of another proceeding between
the same parties or anyone in privity therewith.
The Office proposes to amend Sec. 2.106(b)(2)(iv) to clarify that
the Board may sua sponte reset the times for pleading, discovery,
testimony, briefs, or oral argument.
Amendment of Pleadings in an Opposition Proceeding
The Office proposes to amend Sec. 2.107(a) to add that an
opposition proceeding may not be amended to add a joint opposer.
The Office proposes to amend Sec. 2.107(b) to clarify that, with
respect to an opposition to an application filed under Section 66(a) of
the Trademark Act, pleadings may not be amended to add grounds for
opposition or goods or services beyond those set forth in the cover
sheet, or to add a joint opposer. The proposed amendment conforms with
Section 68(c)(3) of the Act, is consistent with the proposed amendment
to Sec. 2.104(c), and codifies current case law and practice.
Cancellation
Filing a Petition for Cancellation
The Office proposes to amend Sec. 2.111(a) and (b) to remove the
petitioner's requirement to serve a copy of the petition to cancel on
registrant.
The Office proposes to amend Sec. 2.111(c)(1) to require that a
petition to cancel a registration be filed through ESTTA. The proposed
amendment provides that a petition to cancel may be filed in paper form
in the event that ESTTA is unavailable due to technical problems or
when extraordinary circumstances are present. The Office proposes to
amend Sec. 2.111(c)(2) to require that a paper petition to cancel a
registration must be accompanied by a Petition to the Director under
Sec. 2.146(a)(5), with the required fees and showing, and to add that
timeliness of the submission, if relevant to a ground asserted in the
petition to cancel, will be determined in accordance with Sec. Sec.
2.195 through 2.198. The proposed amendments codify the use of
electronic filing.
The Office proposes to delete Sec. 2.111(c)(3) and add a new Sec.
2.111(d), which provides that a petition for cancellation cannot be
filed via ESTTA absent sufficient fees and a paper petition accompanied
by insufficient fees may not be instituted. The proposed revisions are
intended to simplify the rules pertaining to insufficient fees.
The Office proposes to amend Sec. 2.111(c)(4) to renumber it as
Sec. 2.111(e), which clarifies that the filing date of a petition for
cancellation is the date of electronic receipt in the Office of the
petition and required fee and adds that the filing date for a paper
petition for cancellation, where permitted, is the date identified in
Sec. 2.198.
Contents of Petition for Cancellation
The Office proposes to amend Sec. 2.112(a) to add that the
petition for cancellation must indicate, to the best of petitioner's
knowledge, a current email address(es) of the current owner of the
registration and of any attorney, as specified in Sec. Sec. 11.14(a)
and (c) of this Chapter, reasonably believed by the petitioner to be a
possible representative of the owner in matters regarding the
registration.
The Office proposes to further amend Sec. 2.112(a) to specify that
ESTTA requires the petitioner to select relevant grounds for
cancellation, and the required accompanying statement supports and
explains the grounds. The proposed amendment codifies current Office
practice.
Notification of Cancellation Proceeding
The Office proposes to amend Sec. 2.113(a) to remove the service
requirement for petitioners and to specify that the notice of
institution constitutes service and will include a web link or web
address to access the electronic proceeding record.
The Office proposes to amend Sec. Sec. 2.113(b) and (c) to provide
that it will effect service of the petition for cancellation at the
email or correspondence address of record for the parties, their
attorneys, or their domestic representatives. The Office further
proposes to amend Sec. 2.113(c) to insert subheadings (1), (2), and
(3) for clarity and to provide in newly designated paragraph (3) that,
in the case of a registration issued under 15 U.S.C. 1141(i), notice
will be sent to the international registration holder's designated
representative and constitutes service.
The Office proposes to amend Sec. 2.113(d) to remove ``petition
for cancellation'' and to provide that the courtesy copy of the notice
of institution that shall be forwarded to the alleged current owner of
the registration will include a web link or web address to access the
electronic proceeding record.
Answer
The Office proposes to amend Sec. 2.114(a) to add that default may
occur after the time to answer is reset and that failure to file a
timely answer tolls all deadlines until the issue of default is
resolved. The proposed revision codifies current Office practice and is
consistent with the Office's proposed amendment to Sec. 2.106(a).
The Office proposes to amend Sec. 2.114(b)(1) to add that a
pleaded registration is a registration identified by number by the
party in the position of plaintiff in an original or counterclaim
petition for cancellation.
The Office proposes to amend Sec. 2.114(b)(2)(i) to add a
requirement that a party in the position of respondent and counterclaim
plaintiff must promptly inform the Board of the filing of another
proceeding between the same parties or anyone in privity therewith.
The Office proposes to amend Sec. 2.114(b)(2)(iii) to clarify that
the Board may sua sponte reset the period for filing an answer to a
counterclaim. The Office proposes to amend Sec. 2.114(b)(2)(iv) to
clarify that the Board may sua sponte reset the times for pleading,
discovery, testimony, briefs, or oral argument.
The Office proposes to amend Sec. 2.114(c) to add that
counterclaim petitions for cancellation may be withdrawn without
prejudice before an answer is filed.
Procedure in Inter Partes Proceedings
Federal Rules of Civil Procedure
The Office proposes to amend Sec. 2.116(e) to add that the
submission of notices of reliance, declarations, and affidavits, as
well as the taking of depositions, during the testimony period
corresponds to the trial in court proceedings. The proposed revision
codifies current Office practice and is consistent with proposed
amendments relating to declarations and affidavits.
The Office proposes to amend Sec. 2.116(g) to clarify that the
Board's standard protective order, which is available on the Office's
Web site, is automatically imposed throughout all
[[Page 19302]]
inter partes proceedings. The Office proposes to further amend Sec.
2.116(g) to add that the Board may treat as not confidential material
which cannot reasonably be considered confidential, notwithstanding a
party's designation. The proposed revisions codify current case law and
Office practice.
Suspension of Proceedings
The Office proposes to amend Sec. 2.117(c) to clarify that the
Board may suspend proceedings sua sponte and retains discretion to
condition approval of consented or stipulated motions to suspend on the
provision by parties of necessary information about the status of
settlement talks or discovery or trial activities.
Undelivered Office Notices
The Office proposes to amend Sec. 2.118 to add notification of
non-delivery in paper or electronic form of Board notices and to delete
the time period prescribed by the Director.
Service and Signing
The Office proposes to incorporate the word ``submissions''
throughout Sec. 2.119 to codify the use of electronic filing. The
proposed amendment codifies the use of electronic filing.
The Office proposes to amend Sec. 2.119(a) to remove the service
requirements for notices of opposition and petitions to cancel,
consistent with proposed amendments to Sec. Sec. 2.101(a) and (b) and
2.111(a) and (b).
The Office proposes to amend Sec. 2.119(b) to require that all
submissions filed with the Board and any other papers served on a party
be served by email, unless otherwise stipulated or service by email
cannot be made due to technical problems or extraordinary
circumstances.
The Office proposes to amend Sec. 2.119(b)(3) to revise the manner
of service on a person's residence by stating that a copy of a
submission may be left with some person of suitable age and discretion
who resides there. The proposed amendment is consistent with both the
Patent Rules of Practice and the Federal Rules of Civil Procedure.
The Office proposes to amend Sec. 2.119(b)(6) to remove the
requirement for mutual agreement by the parties for service by other
forms of electronic transmission and to remove service by notice
published in the Official Gazette.
The Office proposes to amend Sec. 2.119(c) to remove the provision
adding five days to the prescribed period for action after service by
the postal service or overnight courier. All fifteen-day response dates
initiated by a service date would be amended to twenty days.
The Office proposes to amend Sec. 2.119(d) to add that no party
may serve submissions by means of the postal service if a party to an
inter partes proceeding is not domiciled in the United States and is
not represented by an attorney or other authorized representative
located in the United States.
Discovery
The Office proposes to amend Sec. 2.120(a)(1) to add the concept
of proportionality in discovery, in conformance with the 2015
amendments to the Federal Rules of Civil Procedure, and to reorganize
portions of the text for clarity.
The Office proposes to amend Sec. 2.120(a)(2) to add headings for
subparts (i) through (v) and to reorganize portions of the text for
clarity.
The Office proposes to amend renumbered Sec. 2.120(a)(2)(i) to
specify that a Board Interlocutory Attorney or Administrative Trademark
Judge will participate in a discovery conference when the Board deems
it useful. The proposed revision codifies current Office practice.
The Office proposes to amend renumbered Sec. 2.120(a)(2)(iii) to
add that the Board may issue an order regarding expert discovery either
on its own initiative or on notice from a party of the disclosure of
expert testimony.
The Office proposes to amend renumbered Sec. 2.120(a)(2)(iv) to
add that parties may stipulate that there will be no discovery, that
the number of discovery requests or depositions be limited, or that
reciprocal disclosures be used in place of discovery. The proposed
amendment codifies some of the stipulations successfully used by
parties in ACR procedures and other proceedings incorporating ACR-type
efficiencies. The Office proposes to further amend Sec.
2.120(a)(2)(iv) to clarify that extensions of the discovery period
granted by the Board will be limited. The Office proposes to further
amend Sec. 2.120(a)(2)(iv) to require that an expert disclosure
deadline must always be scheduled prior to the close of discovery.
The Office proposes to amend Sec. 2.120(a)(3) to require that
discovery requests be served early enough in the discovery period that
responses will be due no later than the close of discovery, and when
the time to respond is extended, discovery responses may not be due
later than the close of discovery. The proposed amendment is intended
to alleviate motion practice prompted by responses to discovery
requests served after discovery has closed.
The Office proposes to amend Sec. 2.120(b) to require that any
agreement by the parties as to the location of a discovery deposition
shall be made in writing.
The Office proposes to amend the title of Sec. 2.120(c) to clarify
that it applies to foreign parties within the jurisdiction of the
United States. The Office proposes to amend Sec. 2.120(c)(2) to
require that a party must inform every adverse party whenever a foreign
party has or will have, during a time set for discovery, an officer,
director, managing agent, or other person who consents to testify on
its behalf present within the United States.
The Office proposes to amend Sec. 2.120(d) to remove motions for
leave to serve additional interrogatories. The Office proposes to
revise Sec. 2.120(d) such that it addresses only interrogatories,
deleting subsections (1) and (2). Provisions relating to requests for
production are moved to revised Sec. 2.120(e), and Sec. Sec. 2.120(f)
through (k) are renumbered in conformance.
The Office proposes to amend Sec. 2.120(e) to limit the total
number of requests for production to seventy-five and to provide a
mechanism for objecting to requests exceeding the limitation parallel
to Sec. 2.120(d). The Office proposes to further amend Sec. 2.120(e)
to clarify that the rule applies to electronically stored information
as well as documents and tangible things; to provide that the time,
place, and manner for production shall comport with the provisions of
Rule 34 of the Federal Rules of Civil Procedure, or be made pursuant to
agreement of the parties; and to delete that production will be made at
the place where the documents and things are usually kept.
The Office proposes to amend renumbered Sec. 2.120(f)(1) to
clarify that the rule applies to electronically stored information as
well as documents and tangible things. The Office proposes to further
amend Sec. 2.120(f)(1) to require that a motion to compel initial
disclosures must be filed within thirty days after the deadline
therefor and include a copy of the disclosures. The Office proposes to
further amend Sec. 2.120(f)(1) to require that a motion to compel
discovery must be filed prior to the deadline for pretrial disclosures
for the first testimony period, rather than the commencement of that
period. The Office proposes to further amend Sec. 2.120(f)(1) to
clarify that the request for designation pertains to a witness. The
Office proposes to further amend Sec. 2.120(f)(1) to require a showing
from the moving party that the party has
[[Page 19303]]
made a good faith effort to resolve the issues presented in the motion.
The Office proposes to amend renumbered Sec. 2.120(f)(2) to
clarify that when a motion to compel is filed after the close of
discovery, the parties need not make pretrial disclosures until
directed to do so by the Board.
The Office proposes to amend renumbered Sec. 2.120(g) to conform
to Federal Rule of Civil Procedure 26(c).
The Office proposes to amend renumbered Sec. 2.120(i) to limit the
total number of requests for admission to seventy-five and to provide a
mechanism for objecting to requests exceeding the limitation parallel
to Sec. Sec. 2.120(d) and (e). The Office proposes to further amend
Sec. 2.120(i) to permit a party to make one comprehensive request for
an admission authenticating documents produced by an adverse party.
The Office proposes to amend renumbered Sec. 2.120(i)(1) to
require that any motion to test the sufficiency of any objection,
including a general objection on the ground of excessive number, must
be filed prior to the deadline for pretrial disclosures for the first
testimony period, rather than the commencement of that period. The
Office proposes to further amend Sec. 2.120(i)(1) to require a showing
from the moving party that the party has made a good faith effort to
resolve the issues presented in the motion.
The Office proposes to amend renumbered Sec. 2.120(i)(2) to
clarify that when a motion to determine the sufficiency of an answer or
objection to a request for admission is filed after the close of
discovery, the parties need not make pretrial disclosures until
directed to do so by the Board.
The Office proposes to amend renumbered Sec. 2.120(j)(1) to state
more generally that the Board may schedule a telephone conference
whenever it appears that a stipulation or motion is of such nature that
a telephone conference would be beneficial. The Office proposes to
amend Sec. 2.120(j)(2) to remove provisions allowing parties to move
for an in-person meeting with the Board during the interlocutory phase
of an inter partes proceeding and the requirement that any such meeting
directed by the Board be at its offices. The Board proposes to add new
Sec. 2.120(j)(3) to codify existing practice that parties may not make
a recording of the conferences referenced in Sec. Sec. 2.120(j)(1) and
(2).
The Office proposes to amend renumbered Sec. 2.120(k)(2) to change
the time for a motion to use a discovery deposition to when the
offering party makes its pretrial disclosures and to clarify that the
exceptional circumstances standard applies when this deadline has
passed.
The Office proposes to amend renumbered Sec. 2.120(k)(3)(i) to
clarify that the disclosures referenced are initial disclosures, to
remove the exclusion of disclosed documents, and to incorporate a
reference to new Sec. 2.122(g).
The Office proposes to amend renumbered Sec. 2.120(k)(3)(ii) to
add that a party may make documents produced by another party of record
by notice of reliance alone if the party has obtained an admission or
stipulation from the producing party that authenticates the documents.
This amendment is consistent with the proposed amendment in renumbered
Sec. 2.120(i) permitting a party to make one comprehensive request for
an admission authenticating documents produced by an adverse party.
The Office proposes to amend renumbered Sec. 2.120(k)(7) to add an
authenticated produced document to the list of evidence that may be
referred to by any party when it has been made of record.
Assignment of Times for Taking Testimony and Presenting Evidence
The Office proposes to amend Sec. 2.121(a) to clarify that
evidence must be presented during a party's testimony period. The
Office proposes to further amend Sec. 2.121(a) to add that the
resetting of a party's testimony period will result in the rescheduling
of the remaining pretrial disclosure deadlines without action by any
party. These amendments codify current Office practice.
The Office proposes to amend Sec. 2.121(c) to add that testimony
periods may be shortened by stipulation of the parties approved by the
Board or may be extended on motion granted by the Board or order of the
Board. The Office proposes to further amend Sec. 2.121(c) to add that
the pretrial disclosure deadlines associated with testimony periods may
remain as set if a motion for an extension is denied. These amendments
codify current Office practice.
The Office proposes to amend Sec. 2.121(d) to add that
stipulations to reschedule the deadlines for the closing date of
discovery, pretrial disclosures, and testimony periods must be
submitted through ESTTA with the relevant dates set forth and an
express statement that all parties agree to the new dates. The proposed
amendment codifies the use of electronic filing.
The Office proposes to amend Sec. 2.121(e) to add that the
testimony of a witness may be either taken on oral examination and
transcribed or presented in the form of an affidavit or declaration, as
provided in proposed amendments to Sec. 2.123.
The Office proposes to further amend Sec. 2.121(e) to add that a
party may move to quash a noticed testimony deposition of a witness not
identified or improperly identified in pretrial disclosures before the
deposition. The proposed amendment codifies current Office practice.
The Office proposes to further amend Sec. 2.121(e) to add that
when testimony has been presented by affidavit or declaration, but was
not covered by an earlier pretrial disclosure, the remedy for any
adverse party is the prompt filing of a motion to strike, as provided
in Sec. Sec. 2.123 and 2.124. The proposed amendment aligns the remedy
for undisclosed testimony by affidavit or declaration with the remedy
for undisclosed deposition testimony.
Matters in Evidence
The Office proposes to amend Sec. 2.122(a) to clarify the title of
the subsection and to specify that parties may stipulate to rules of
evidence for proceedings before the Board. The Office proposes to
further amend Sec. 2.122(a), consistent with Sec. 2.120(k)(7), to add
that when evidence has been made of record by one party in accordance
with these rules, it may be referred to by any party for any purpose
permitted by the Federal Rules of Evidence. The proposed amendments
codify current Office practice.
The Office proposes to amend Sec. 2.122(b)(2) to clarify the title
of the subsection and to clarify that statements made in an affidavit
or declaration in the file of an application for registration or in the
file of a registration are not evidence on behalf of the applicant or
registrant and must be established by competent evidence.
The Office proposes to amend Sec. 2.122(d)(2) to add a cross-
reference to new Sec. 2.122(g) and to specify that a registration
owned by a party may be made of record via notice of reliance
accompanied by a current printout of information from the electronic
database records of the Office showing the current status and title of
the registration. The proposed amendment codifies current case law and
Office practice.
The Office proposes to amend Sec. 2.122(e) to designate a new
paragraph (e)(1), clarify that printed publications must be relevant to
a particular proceeding, and add a cross-reference to new Sec.
2.122(g).
[[Page 19304]]
The Office proposes to add new Sec. 2.122(e)(2) permitting
admission of internet materials into evidence by notice of reliance and
providing requirements for their identification. The proposed amendment
codifies current case law and Office practice.
The Office proposes to add new Sec. 2.122(g) detailing the
requirements for admission of evidence by notice of reliance. Section
2.122(g) provides that a notice must indicate generally the relevance
of the evidence offered and associate it with one or more issues in the
proceeding, but failure to do so with sufficient specificity is a
procedural defect that can be cured by the offering party within the
time set by Board order. The proposed amendment codifies current case
law and Office practice.
Trial Testimony in Inter Partes Cases
The Office proposes to amend Sec. 2.123(a)(1) to permit submission
of witness testimony by affidavit or declaration, subject to the right
of any adverse party to take and bear the expense of oral cross-
examination of that witness, as provided in proposed amendments to
Sec. 2.121(e), and to add that the offering party must make that
witness available. The proposed amendment is intended to promote
efficient trial procedure.
The Office proposes to further amend Sec. 2.123(a)(1) to move to
Sec. 2.123(a)(2) a provision permitting a motion for deposition on
oral examination of a witness in the United States whose testimonial
deposition on written questions has been noticed.
The Office proposes to further amend Sec. 2.123(a)(2) to add that
the party which has proffered a witness for testimonial deposition on
written questions must inform every adverse party when it knows that
such witness will be within the jurisdiction of the United States
during such party's testimony period. The proposed amendment is
consistent with the proposed amendment to Sec. 2.120(c)(2) and is
intended to promote efficient trial procedure by facilitating the use
of deposition on oral examination instead of written questions when
permissible.
The Office proposes to amend Sec. 2.123(b) to remove the
requirement for written agreement of the parties to submit testimony in
the form of an affidavit, as provided in proposed amendments to Sec.
2.123(a)(1), and to clarify that parties may stipulate to any relevant
facts.
The Office proposes to amend Sec. 2.123(c) to remove the option of
identifying a witness by description in a notice of examination and to
clarify that such notice shall be given to adverse parties before oral
depositions.
The Office proposes to further amend Sec. 2.123(c) to add that,
when a party elects to take oral cross-examination of an affiant or
declarant, the notice of such election must be served on the adverse
party and a copy filed with the Board within 10 days from the date of
service of the affidavit or declaration and completed within 20 days
from the date of service of the notice of election.
The Office proposes to further amend Sec. 2.123(c) to add that the
Board may extend the periods for electing and taking oral cross-
examination and, when necessary, shall suspend or reschedule
proceedings in the matter to allow for the orderly completion of the
oral cross-examination(s) that cannot be completed within a testimony
period.
The Office proposes to amend Sec. 2.123(e)(1) to specify that a
witness must be sworn before providing oral testimony. The Office
proposes to further amend Sec. 2.123(e)(1) to move from Sec.
2.123(e)(3) the provision that cross-examination is available on oral
depositions. The Office proposes to further amend Sec. 2.123(e)(1) to
add that, where testimony is proffered by affidavit or declaration,
cross-examination is available for any witness within the jurisdiction
of the United States, as provided in proposed amendments to Sec.
2.123(a)(1).
The Office proposes to amend Sec. 2.123(e)(2) to remove provisions
permitting depositions to be taken in longhand, by typewriting, or
stenographically and to specify that testimony depositions shall be
recorded.
The Office proposes to amend Sec. 2.123(e)(3) to delete the
provision that cross-examination is available on oral depositions,
which the Office proposes to move to Sec. 2.123(e)(1), and to insert
subheadings (i) and (ii) for clarity.
The Office proposes to amend Sec. 2.123(e)(4) to specify that the
rule regarding objections pertains to oral examination.
The Office proposes to amend Sec. 2.123(e)(5) to clarify that the
rule regarding witness signature relates to the transcript of an oral
deposition.
The Office proposes to amend Sec. 2.123(f)(2) to require that
deposition transcripts and exhibits shall be filed in electronic form
using ESTTA. If the weight or bulk of an exhibit prevents its uploading
to ESTTA, it shall be transmitted in a separate package, including an
explanation as to why it could not be submitted electronically. The
proposed amendment codifies the use of electronic filing.
The Office proposes to amend Sec. 2.123(g)(1) to add that
deposition transcripts must be submitted in full-sized format (one page
per sheet), not condensed (multiple pages per sheet). The Office
proposes to amend Sec. 2.123(g)(3) to add that deposition transcripts
must contain a word index, giving the pages where the words appear in
the deposition.
The Office proposes to remove Sec. 2.123(i), which permits
inspection by parties and printing by the Office of depositions after
they are filed in the Office. Subsections 2.123(j) through (l) are
renumbered Sec. Sec. 2.123(i) through (k) in conformance.
The Office proposes to amend renumbered Sec. 2.123(j) to add that
objection may be made to receiving in evidence any declaration or
affidavit. The Office proposes to further amend renumbered Sec.
2.123(j) to provide that objections may not be considered until final
hearing.
Depositions Upon Written Questions
The Office proposes to add new Sec. 2.124(b)(3) to provide that a
party desiring to take cross-examination by written questions of a
witness who has provided testimony by affidavit or declaration shall
serve notice on each adverse party and file a copy of the notice with
the Board.
The Office proposes to amend Sec. 2.124(d)(1) to clarify that the
procedures for examination on written questions apply to both direct
testimony and cross-examination. The Office proposes to further amend
Sec. 2.124(d)(1) to specify procedure for cross-examination by written
questions of a witness who has provided testimony by affidavit or
declaration.
The Office proposes to add new Sec. 2.124(d)(3) to provide that
service of written questions, responses, and cross-examination
questions shall be in accordance with Sec. 2.119(b).
Filing and Service of Testimony
The Office proposes to amend Sec. 2.125 to renumber paragraphs (a)
through (e) to (b) through (f) and to add new Sec. 2.125(a) to require
that one copy of a declaration or affidavit prepared in accordance with
Sec. 2.123, with exhibits, shall be served on each adverse party at
the time the declaration or affidavit is submitted to the Board during
the assigned testimony period.
The Office proposes to amend renumbered Sec. 2.125(b) to add a
cross-reference to Sec. 2.124 and to clarify that the subsection
applies to testimony depositions, including depositions on written
questions.
The Office proposes to amend renumbered Sec. 2.125(f) to permit
sealing of a part of an affidavit or declaration.
[[Page 19305]]
Form of Submissions to the Trademark Trial and Appeal Board
The Office proposes to amend Sec. 2.126 to renumber paragraph (a)
to (b) and to add new paragraph (a) to require that submissions to the
Board shall be made via ESTTA. The proposed amendment codifies the use
of electronic filing.
The Office proposes to add new Sec. 2.126(a)(1) to require that
text in an electronic submission must be filed in at least 12-point
type and double-spaced. The proposed amendment is consistent with the
proposed amendment to Sec. 2.126(b)(1).
The Office proposes to add new Sec. 2.126(a)(2) to require that
exhibits pertaining to an electronic submission must be made
electronically as an attachment to the submission and must be clear and
legible. The proposed amendment codifies the use of electronic filing.
The Office proposes to amend renumbered Sec. 2.126(b) to permit
submissions in paper form in the event that ESTTA is unavailable due to
technical problems or when extraordinary circumstances are present. The
Office proposes to further amend renumbered Sec. 2.126(b) to require
that submissions in paper form must be accompanied by a Petition to the
Director under Sec. 2.146(a)(5), with the required fees and showing.
The Office proposes to amend renumbered Sec. 2.126(b)(1) to
require that text in a paper submission must be filed in at least 12-
point type. The proposed amendment is consistent with the proposed
amendment to Sec. 2.126(a)(1).
The Office proposes to remove the subsection previously designated
Sec. 2.126(b).
The Office proposes to amend Sec. 2.126(c) to provide that
submissions to the Board that are confidential in whole or part must be
submitted using the ``Confidential'' selection available in ESTTA or,
where appropriate, under a separate paper cover. The Office proposes to
further amend Sec. 2.126(c) to clarify that a redacted copy must be
submitted concurrently for public viewing.
Motions
The Office proposes to amend Sec. 2.127(a) to reflect that all
response dates initiated by a service date are twenty days. The Office
proposes to further amend Sec. 2.127(a) to add that the time for
filing a reply brief will not be reopened.
The Office proposes to amend Sec. 2.127(b) to reflect that all
response dates initiated by a service date are twenty days.
The Office proposes to amend Sec. 2.127(c) to add that conceded
matters and other matters not dispositive of a proceeding may be acted
on by a Paralegal of the Board or by ESTTA and that motions disposed of
by orders entitled ``By the Trademark Trial and Appeal Board'' have the
same legal effect as orders by a panel of three Administrative
Trademark Judges of the Board. The proposed amendments codify current
Office practice.
The Office proposes to amend Sec. 2.127(d) to clarify that a case
is suspended when a party timely files any potentially dispositive
motion.
The Office proposes to amend Sec. 2.127(e)(1) to require that a
motion for summary judgment must be filed prior to the deadline for
pretrial disclosures for the first testimony period, rather than the
commencement of that period. The Office proposes to further amend Sec.
2.127(e)(1) to change references to Rule 56(f) to 56(d) in conformance
with amendments to the Federal Rules of Civil Procedure. The Office
proposes to further amend Sec. 2.127(e)(1) to reflect that the reply
in support of a motion for summary judgment is due twenty days after
service of the response. The Office proposes to further amend Sec.
2.127(e)(1) to add that the time for filing a motion under Rule 56(d)
and a reply brief will not be reopened.
The Office proposes to amend Sec. 2.127(e)(2) to add that if a
motion for summary judgment is denied, the parties may stipulate that
the materials submitted with briefs on the motion shall be considered
at trial as trial evidence, which may be supplemented by additional
evidence during trial. The proposed revision codifies an approach used
by parties in proceedings incorporating ACR-type efficiencies at trial.
Briefs at Final Hearing
The Office proposes to amend Sec. 2.128(a)(3) to add that, when
the Board issues a show cause order for failure to file a brief and
there is no evidence of record, if the party responds to the order
showing good cause why judgment should not be entered based on loss of
interest but does not move to reopen its testimony period based on
demonstrable excusable neglect, judgment may be entered against the
plaintiff for failure to take testimony or submit evidence. The
proposed amendment codifies current case law and practice and is
consistent with TBMP Sec. 536 (2015).
The Office proposes to amend Sec. 2.128(b) to add that evidentiary
objections may be set out in a separate appendix that does not count
against the briefing page limit. The proposed amendment codifies
current case law and practice and is consistent with TBMP Sec. 801.03.
The Office proposes to further amend Sec. 2.128(b) to add that briefs
exceeding the page limits may not be considered by the Board, and this
also codifies existing practice.
Oral Argument; Reconsideration
The Office proposes to amend Sec. 2.129(a) to clarify that all
statutory members of the Board may hear oral argument. The Office
proposes to further amend Sec. 2.129(a) to add that parties and
members of the Board may attend oral argument in person or, at the
discretion of the Board, remotely. The proposed amendment codifies
current Office practices and is consistent with the Office's proposed
amendments to Sec. 2.142(e)(1).
The Office proposes to amend Sec. 2.129(b) to add that the Board
may deny a request to reset a hearing date for lack of good cause or if
multiple requests for rescheduling have been filed.
The Office proposes to amend Sec. 2.129(c) to reflect that all
response dates initiated by a service date are twenty days.
New Matter Suggested by the Trademark Examining Attorney
The Office proposes to amend Sec. 2.130 to add that if during an
inter partes proceeding involving an application the examining attorney
believes certain facts render the mark unregistrable the examining
attorney should formally request remand of the application rather than
simply notify the Board.
Involuntary Dismissal for Failure To Take Testimony
The Office proposes to amend Sec. 2.132(a) to clarify that, if a
plaintiff has not submitted evidence and its time for taking testimony
has expired, the Board may grant judgment for the defendant sua sponte.
The Office proposes to further amend Sec. 2.132(a) to reflect that all
response dates initiated by a service date are twenty days. The Office
proposes to amend further Sec. 2.132(a) to clarify the standard for
the showing required not to render judgment dismissing the case is
excusable neglect.
The Office proposes to amend Sec. 2.132(b) to limit evidence to
Office records showing the current status and title of a plaintiff's
pleaded registrations. The Office proposes to further amend Sec.
2.132(b) to reflect that all response dates initiated by a service date
are twenty days. The Office proposes to further amend Sec. 2.132(b) to
clarify that the Board may decline to render
[[Page 19306]]
judgment on a motion to dismiss until all testimony periods have
passed.
Surrender or Voluntary Cancellation of Registration
The Office proposes to amend Sec. 2.134(b) to clarify that the
subsection is applicable to extensions of protection in accordance with
the Madrid Protocol.
Status of Application on Termination of Proceeding
The Office proposes to amend Sec. 2.136 to specify when a
proceeding will be terminated by the Board and the status of an
application on termination of an opposition or concurrent use
proceeding.
Appeals
Time and Manner of Ex Parte Appeals
The Office proposes to amend Sec. 2.142 to incorporate a
nomenclature change from ``examiner'' to ``examining attorney.''
The Office proposes to amend Sec. 2.142(b)(2) to add that a reply
brief from an appellant shall not exceed ten pages in length and that
no further briefs are permitted unless authorized by the Board.
The Office proposes to add new Sec. 2.142(b)(3) to specify that
citation to evidence in briefs should be to the documents in the
electronic application record by date, the name of the paper under
which the evidence was submitted, and the page number in the electronic
record. The proposed amendment is intended to facilitate review of
record evidence by the applicant, the examining attorney, the Board,
and the public.
The Office proposes to amend Sec. 2.142(c) to add that the
statement of issues in a brief should note that the applicant has
complied with all requirements made by the examining attorney and not
the subject of appeal.
The Office proposes to amend Sec. 2.142(d) to clarify that
evidence shall not be submitted after a notice of appeal is filed. The
proposed amendment more directly states the existing rule. The Office
proposes to further amend Sec. 2.142(d) for clarity, including by
specifying that an appellant or examining attorney who desires to
introduce additional evidence after an appeal is filed must submit a
request to the Board to suspend the appeal and remand the application
for further examination.
The Office proposes to amend Sec. 2.142(e)(1) to clarify that all
statutory members of the Board may hear oral argument. The Office
proposes to further amend Sec. 2.142(e)(1) to add that appellants,
examining attorneys, and members of the Board may attend oral argument
in person or, at the discretion of the Board, remotely. The proposed
amendment codifies current Office practice and is consistent with the
Office's proposed amendments to Sec. 2.129(a).
The Office proposes to amend Sec. 2.142(e)(2) to add that a
supervisory or managing attorney may designate an examining attorney to
present oral argument and to delete the provision that the examining
attorney designated must be from the same examining division.
The Office proposes to amend Sec. 2.142(f)(1) to change the time
for further examination of an application on remand from thirty days to
the time set by the Board.
Appeal to Court and Civil Action
The Office proposes to amend Sec. 2.145 by reorganizing the
subjects covered and rewording some provisions to improve the clarity
and structure of the rule and to align the provisions with the
analogous rules governing judicial review of Patent Trial and Appeal
Board decisions in 37 CFR part 90.
From a restructuring standpoint, certain proposed amendments result
in existing provisions being moved to a different subsection of the
rule. Specifically, provisions regarding appeals to the U.S. Court of
Appeals for the Federal Circuit, which currently appear in subparts (a)
and (b), are proposed to be grouped together under subpart (a).
Provisions regarding the process provided for in Section 21(a)(1) of
the Act, whereby an adverse party to a Federal Circuit appeal of an
inter partes Board decision may file notice of its election to have
proceedings conducted by way of a civil action, are proposed to be
moved from subpart (c), which concerns civil actions, to revised
subpart (b), with the subheading ``For a notice of election under
section 21(a)(1) to proceed under section 21(b) of the Act.''
Substantively, throughout Sec. 2.145, the Office proposes to
remove specific references to times for taking action or other
requirements that are specified in the Act or another set of rules
(e.g., Federal Rules of Appellate Procedure) and replace them with
references to the applicable section of the Act or rules that set the
time or requirements for the specified action. These changes will help
ensure that parties consult the applicable statute or rule itself and
avoid the need for the USPTO to amend its regulations if the applicable
provision of the statute or rule changes.
The Office also proposes to amend the provisions in Sec. 2.145
that require copies of notices of appeal, notices of election, and
notices of civil action to be filed with the Trademark Trial and Appeal
Board to specify that such notices must be filed with the Board via
ESTTA. These proposed amendments codify the use of electronic filing
and enhance the Office's ability to handle properly applications,
registrations, and proceedings while on review in federal court.
Regarding amendments to the requirements for appeals to the Federal
Circuit, the Office proposes to amend Sec. 2.145(a) to add subsections
(1)-(3). The Office proposes to move the language currently in Sec.
2.145 (a) to new (a)(1) and to amend it, in accordance with Section
21(a) of the Act, to include that a registrant who has filed an
affidavit or declaration under Section 71 of the Trademark Act and is
dissatisfied with the decision of the Director may appeal. The Office
proposes to further amend Sec. 2.145(a)(1) to add that it is
unnecessary to request reconsideration before filing an appeal of a
Board decision, but a party requesting reconsideration must do so
before filing a notice of appeal. Proposed Sec. Sec. 2.145(a)(2) and
(3) specify the requirements contained in current Sec. Sec. 2.145(a)
and (b) for filing an appeal to the Federal Circuit.
Regarding amendments to the requirements for filing a civil action
in district court in Sec. 2.145(c), the Office proposes to add in
Sec. 2.145(c)(1) an amendment corresponding to the amendment to Sec.
2.145(a)(1) that it is unnecessary for a party to request
reconsideration before filing a civil action seeking judicial review of
a Board decision, but a party requesting reconsideration must do so
before filing the civil action. The Office proposes to replace current
Sec. 2.145(c)(2) with a provision that specifies the requirements for
serving the Director with a complaint by an applicant or registrant in
an ex parte case who seeks remedy by civil action under section 21(b)
of the Act. The proposed amendment, which references Federal Rule of
Civil Procedure 4(i) and Sec. 104.2, is intended to facilitate proper
service of complaints in such actions on the Director. The Office
proposes to replace current Sec. 2.145(c)(3) with a modified version
of the provision currently in Sec. 2.145(c)(4), to specify that the
party who commences a civil action for review of a Board decision in an
inter partes case must file notice thereof with the Trademark Trial and
Appeal Board via ESTTA no later than five business days after filing
the complaint in district
[[Page 19307]]
court. The addition of a time frame for filing the notice of the civil
action with the Board, and explicitly stating that the notice must
identify the civil action with particularity, is necessary to ensure
that the Board is timely notified when parties seek judicial review of
its decisions and to avoid premature termination of a proceeding.
The Office proposes to amend Sec. 2.145(d) regarding time for
appeal or civil action by restructuring the subsections by the type of
action (i.e., (1) for an appeal to the Federal Circuit, (2) for a
notice of election, or (3) for a civil action) and to add a new
subsection (d)(4)(i) regarding time computation if a request for
reconsideration is filed. The Office proposes to move the time
computation provision currently in (d)(2) regarding when the last day
of time falls on a holiday to new subsection (d)(4)(ii) and to omit the
addition of one day to any two-month time that includes February 28.
The Office also proposes to change the times for filing a notice of
appeal or commencing a civil action from two months to sixty-three days
(i.e., nine weeks) from the date of the final decision of the Board.
The proposed amendment aligns the times for appeal from Board action
with those for the Patent Trial and Appeal Board in Part 90 of Title 37
of the Code of Federal Regulations and is intended to simplify
calculation of the deadlines for taking action.
The Office proposes to amend Sec. 2.145(e) to specify that a
request for extension of time to seek judicial review must be filed as
provided in Sec. 104.2 and addressed to the attention of the Office of
the Solicitor, to which the Director has delegated his or her authority
to decide such requests, with a copy filed with the Board via ESTTA.
The proposed amendment is intended to facilitate proper filing of and
timely action upon extension requests and to avoid premature
termination of a Board proceeding.
General Information and Correspondence in Trademark Cases
Addresses for Trademark Correspondence With the United States Patent
and Trademark Office
The Office proposes to amend Sec. Sec. 2.190(a) and (c) to reflect
a nomenclature change from the Assignment Services Division to the
Assignment Recordation Branch. The Office proposes to amend Sec.
2.190(b) to direct that documents in proceedings before the Board be
filed through ESTTA. The proposed amendment codifies the use of
electronic filing.
Business To Be Transacted in Writing
The Office proposes to amend Sec. 2.191 to direct that documents
in proceedings before the Board be filed through ESTTA. The proposed
amendment codifies the use of electronic filing.
Rulemaking Considerations
Administrative Procedure Act: The changes in this rulemaking
involve rules of agency practice and procedure and/or interpretive
rules. See National Organization of Veterans' Advocates v. Secretary of
Veterans Affairs, 260 F.3d 1365, 1375 (Fed. Cir. 2001) (Rule that
clarifies interpretation of a statute is interpretive.); Bachow
Communications Inc. v. FCC, 237 F.3d 683, 690 (D.C. Cir. 2001) (Rules
governing an application process are procedural under the
Administrative Procedure Act.); Inova Alexandria Hospital v. Shalala,
244 F.3d 342, 350 (4th Cir. 2001) (Rules for handling appeals were
procedural where they did not change the substantive standard for
reviewing claims.).
Accordingly, prior notice and opportunity for public comment for
the rule changes are not required pursuant to 5 U.S.C. 553(b) or (c),
or any other law. See Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-
37 (Fed. Cir. 2008) (stating that 5 U.S.C. 553, and thus 35 U.S.C.
2(b)(2), does not require notice and comment rulemaking for
``interpretative rules, general statements of policy, or rules of
agency organization, procedure, or practice'' (quoting 5 U.S.C.
553(b)(A))). However, the Office chose to seek public comment before
implementing the rule to benefit from the public's input.
Regulatory Flexibility Act: Under the Regulatory Flexibility Act
(RFA) (5 U.S.C. 601 et seq.), whenever an agency is required by 5
U.S.C. 553 (or any other law) to publish a notice of proposed
rulemaking (NPRM), the agency must prepare and make available for
public comment an Initial Regulatory Flexibility Analysis, unless the
agency certifies under 5 U.S.C. 605(b) that the proposed rule, if
implemented, will not have a significant economic impact on a
substantial number of small entities. 5 U.S.C. 603, 605.
For the reasons set forth herein, the Deputy General Counsel for
General Law of the United States Patent and Trademark Office has
certified to the Chief Counsel for Advocacy of the Small Business
Administration that this rule will not have a significant economic
impact on a substantial number of small entities. See 5 U.S.C. 605(b).
The proposed rules involve changes to rules of agency practice and
procedure in matters before the Trademark Trial and Appeal Board. The
primary changes are to codify certain existing practices, increase
efficiency and streamline proceedings, and provide greater clarity as
to certain requirements in Board proceedings. The proposed rules do not
alter any substantive criteria used to decide cases.
The proposed rules will apply to all persons appearing before the
Board. Applicants for a trademark are not industry specific and may
consist of individuals, small businesses, non-profit organizations, and
large corporations. The USPTO does not collect or maintain statistics
in Board cases on small- versus large-entity applicants, and this
information would be required in order to determine the number of small
entities that would be affected by the proposed rules.
The burdens, if any, to all entities, including small entities,
imposed by these rule changes will be minor and consist of additional
responsibilities and procedural requirements on parties appearing
before the Board. Two possible sources of burden may come from the
proposed requirement that all submissions will be filed through the
Board's online filing system, the Electronic System for Trademark
Trials and Appeals (``ESTTA''), except in certain limited
circumstances, and the requirement that service between parties be
conducted by email for all filings with the Board and any other papers.
For impacted entities that do not have the necessary equipment and
internet service, this may result in additional costs to obtain this
ability or to petition to file on paper. However, the USPTO does not
anticipate this requirement to impact a significant number of entities
impacted by this rule as well over 95 percent of filings are already
submitted electronically, and it is common practice among parties to
use electronic service for all filings with the Board.
In most instances the rule changes will lessen the burdens on
parties, including small entities. For example, the Office proposes
shifting away from the parties to itself the obligation to serve
notices of opposition, petitions for cancellation, and concurrent use
proceedings. Moreover, the proposed rules provide for the option of
electronic service of other documents among the parties to a
proceeding, thereby eliminating the existing need to arrange for the
mailing or hand delivery of these documents. Also, the Office proposes
making discovery less onerous for the parties by imposing limitations
on the volume of discovery, incorporating a proportionality
requirement, and allowing parties to present direct
[[Page 19308]]
testimony by affidavit or declaration. The proposed rules also keep
burdens and costs lower for the parties by permitting remote attendance
at oral hearings, thereby eliminating the need for travel to appear in
person. Overall, the proposed rules will have a net benefit to the
parties to proceedings by increasing convenience, providing efficiency
and clarity in the process, and streamlining the procedures. Therefore,
this action will not have a significant economic impact on a
substantial number of small entities.
Executive Order 12866: This rule has been determined not to be
significant for purposes of Executive Order 12866.
Executive Order 13563 (Improving Regulation and Regulatory Review):
The Office has complied with Executive Order 13563 (Jan. 18, 2011).
Specifically, the Office has, to the extent feasible and applicable:
(1) Made a reasoned determination that the benefits justify the costs
of the rule changes; (2) tailored the rule to impose the least burden
on society consistent with obtaining the regulatory objectives; (3)
selected a regulatory approach that maximizes net benefits; (4)
specified performance objectives; (5) identified and assessed available
alternatives; (6) provided the public with a meaningful opportunity to
participate in the regulatory process, including soliciting the views
of those likely affected prior to issuing a notice of proposed
rulemaking, and provided online access to the rulemaking docket; (7)
attempted to promote coordination, simplification, and harmonization
across government agencies and identified goals designed to promote
innovation; (8) considered approaches that reduce burdens and maintain
flexibility and freedom of choice for the public; and (9) ensured the
objectivity of scientific and technological information and processes,
to the extent applicable.
Executive Order 13132: This rule does not contain policies with
federalism implications sufficient to warrant preparation of a
Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).
Congressional Review Act: Under the Congressional Review Act
provisions of the Small Business Regulatory Enforcement Fairness Act of
1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the
Office will submit a report containing the final rule and other
required information to the U.S. Senate, the U.S. House of
Representatives, and the Comptroller General of the Government
Accountability Office. The changes in this rule are not expected to
result in an annual effect on the economy of 100 million dollars or
more, a major increase in costs or prices, or significant adverse
effects on competition, employment, investment, productivity,
innovation, or the ability of U.S.-based enterprises to compete with
foreign-based enterprises in domestic and export markets. Therefore,
this rule change is not expected to result in a ``major rule'' as
defined in 5 U.S.C. 804(2).
Unfunded Mandate Reform Act of 1995: The Unfunded Mandates Reform
Act (2 U.S.C. 1501 et seq.) requires that agencies prepare an
assessment of anticipated costs and benefits before issuing any rule
that may result in expenditure by State, local, and tribal governments,
in the aggregate, or by the private sector, of $100 million or more
(adjusted annually for inflation) in any given year. This rule will
have no such effect on State, local, and tribal governments or the
private sector.
Paperwork Reduction Act: The Paperwork Reduction Act of 1995 (44
U.S.C. 3501-3549) requires that the Office consider the impact of
paperwork and other information collection burdens imposed on the
public. This proposed rule involves information collection requirements
that are subject to review by the Office of Management and Budget (OMB)
under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501-3549). The
collections of information involved in this rulemaking have been
reviewed and previously approved by OMB under control numbers 0651-
0054. This proposed rule, if adopted, would shift a greater portion of
paper filings to electronic filings. However, this rulemaking would not
add any additional information requirements or fees for parties before
the Board, and therefore, it would not materially change the
information collection burdens approved under the OMB control number
0651-0054. If the proposed rule is adopted, the Office will submit a
change worksheet to the information collection to recognize the greater
shift of filings to an electronic format and enter any related
adjustments. Notwithstanding any other provision of law, no person is
required to respond to, nor shall any person be subject to, a penalty
for failure to comply with a collection of information subject to the
requirements of the Paperwork Reduction Act unless that collection of
information displays a currently valid OMB control number.
List of Subjects
37 CFR Part 2
Administrative practice and procedure, Trademarks.
For the reasons given in the preamble and under the authority
contained in 15 U.S.C. 1113, 15 U.S.C. 1123, and 35 U.S.C. 2, as
amended, the Office proposes to amend part 2 of title 37 as follows:
PART 2--RULES OF PRACTICE IN TRADEMARK CASES
0
1. The authority citation for 37 CFR part 2 continues to read as
follows:
Authority: 15 U.S.C. 1113, 15 U.S.C. 1123, 35 U.S.C. 2, Section
10(c) of Pub. L. 112-29, unless otherwise noted.
0
2. Revise Sec. 2.92 to read as follows:
Sec. 2.92 Preliminary to interference.
An interference which has been declared by the Director will not be
instituted by the Trademark Trial and Appeal Board until the examining
attorney has determined that the marks which are to form the subject
matter of the controversy are registrable, and all of the marks have
been published in the Official Gazette for opposition.
0
3. In Sec. 2.98 revise the second sentence to read as follows:
Sec. 2.98 Adding party to interference.
* * * If an application which is or might be the subject of a
petition for addition to an interference is not added, the examining
attorney may suspend action on the application pending termination of
the interference proceeding.
0
4. In Sec. 2.99 revise paragraphs (c), (d)(1), (d)(2), (d)(3), and
(f)(3) to read as follows:
Sec. 2.99 Application to register as concurrent user.
* * * * *
(c) If no opposition is filed, or if all oppositions that are filed
are dismissed or withdrawn, the Trademark Trial and Appeal Board will
send a notice of institution to the applicant for concurrent use
registration (plaintiff) and to each applicant, registrant or user
specified as a concurrent user in the application (defendants). The
notice for each defendant shall state the name and address of the
plaintiff and of the plaintiff's attorney or other authorized
representative, if any, together with the serial number and filing date
of the application. If a party has provided the Office with an email
address, the notice will be transmitted via email.
(d)(1) The Board's notice of institution will include a web link or
web address for the concurrent use application proceeding contained in
Office records.
(2) An answer to the notice is not required in the case of an
applicant or registrant whose application or
[[Page 19309]]
registration is acknowledged by the concurrent use applicant in the
concurrent use application, but a statement, if desired, may be filed
within forty days after the issuance of the notice; in the case of any
other party specified as a concurrent user in the application, an
answer must be filed within forty days after the issuance of the
notice.
(3) If an answer, when required, is not filed, judgment will be
entered precluding the defaulting user from claiming any right more
extensive than that acknowledged in the application(s) for concurrent
use registration, but the burden of proving entitlement to
registration(s) will remain with the concurrent use applicant(s).
* * * * *
(f) * * *
(3) A true copy of the court decree is submitted to the examining
attorney; and
* * * * *
0
5. Revise Sec. 2.101 to read as follows:
Sec. 2.101 Filing an opposition.
(a) An opposition proceeding is commenced by filing in the Office a
timely notice of opposition with the required fee.
(b) Any person who believes that he, she or it would be damaged by
the registration of a mark on the Principal Register may file an
opposition addressed to the Trademark Trial and Appeal Board. The
opposition need not be verified, but must be signed by the opposer or
the opposer's attorney, as specified in Sec. 11.1 of this chapter, or
other authorized representative, as specified in Sec. 11.14(b) of this
chapter. Electronic signatures pursuant to Sec. 2.193(c) are required
for oppositions filed through ESTTA under paragraphs (b)(1) or (2) of
this section.
(1) An opposition to an application must be filed through ESTTA. In
the event that ESTTA is unavailable due to technical problems, or when
extraordinary circumstances are present, an opposition against an
application based on Section 1 or 44 of the Act may be filed in paper
form. An opposition to an application based on Section 66(a) of the Act
must be filed through ESTTA and may not under any circumstances be
filed in paper form.
(2) A paper opposition to an application based on Section 1 or 44
of the Act must be filed by the due date set forth in paragraph (c) of
this section and be accompanied by a Petition to the Director under
Sec. 2.146(a)(5), with the fees therefor and the showing required
under paragraph (b)(1) of this section. Timeliness of the paper
submission will be determined in accordance with Sec. Sec. 2.195
through 2.198.
(c) The opposition must be filed within thirty days after
publication (Sec. 2.80) of the application being opposed or within an
extension of time (Sec. 2.102) for filing an opposition. The
opposition must be accompanied by the required fee for each party
joined as opposer for each class in the application for which
registration is opposed (see Sec. 2.6).
(d) An otherwise timely opposition cannot be filed via ESTTA unless
the opposition is accompanied by a fee that is sufficient to pay in
full for each named party opposer to oppose the registration of a mark
in each class specified in the opposition. A paper opposition that is
not accompanied by the required fee sufficient to pay in full for each
named party opposer for each class in the application for which
registration is opposed may not be instituted. If time remains in the
opposition period as originally set or as extended by the Board, the
potential opposer may resubmit the opposition with the required fee.
(e) The filing date of an opposition is the date of electronic
receipt in the Office of the notice of opposition, and required fee. In
the rare instances that filing by paper is permitted under these rules,
the filing date will be determined in accordance with Sec. Sec. 2.195
through 2.198.
0
6. Amend Sec. 2.102 by revising:
0
a. Paragraphs (a), (b), (c)(1), and (c)(2);
0
b. Add a new second sentence after the first sentence in paragraph
(c)(3);
0
c. Add new paragraph (d), and;
0
d. Add and reserve paragraph (e) to read as follows:
Sec. 2.102 Extension of time for filing an opposition.
(a) Any person who believes that he, she or it would be damaged by
the registration of a mark on the Principal Register may file a request
with the Trademark Trial and Appeal Board to extend the time for filing
an opposition. The request need not be verified, but must be signed by
the potential opposer or by the potential opposer's attorney, as
specified in Sec. 11.1 of this chapter, or authorized representative,
as specified in Sec. 11.14(b) of this chapter. Electronic signatures
pursuant to Sec. 2.193(c) are required for electronically filed
extension requests.
(1) A request to extend the time for filing an opposition to an
application must be filed through ESTTA. In the event that ESTTA is
unavailable due to technical problems, or when extraordinary
circumstances are present, a request to extend the opposition period
for an application based on Section 1 or 44 of the Act may be filed in
paper form by the opposition due date set forth in Sec. 2.101(c). A
request to extend the opposition period for an application based on
Section 66(a) of the Act must be filed through ESTTA and may not under
any circumstances be filed in paper form.
(2) A paper request to extend the opposition period for an
application based on Section 1 or 44 of the Act must be filed by the
due date set forth in Sec. 2.101(c) and be accompanied by a Petition
to the Director under Sec. 2146(a)(5), with the fees therefor and the
showing required under paragraph (a)(1) of this section. Timeliness of
the paper submission will be determined in accordance with Sec. Sec.
2.195 through 2.198.
(b) A request to extend the time for filing an opposition must
identify the potential opposer with reasonable certainty. Any
opposition filed during an extension of time must be in the name of the
person to whom the extension was granted, except that an opposition may
be accepted if the person in whose name the extension was requested was
misidentified through mistake or if the opposition is filed in the name
of a person in privity with the person who requested and was granted
the extension of time.
(c) * * *
(1) A person may file a first request for (i) either a thirty-day
extension of time, which will be granted upon request, or (ii) a
ninety-day extension of time, which will be granted only for good cause
shown. A sixty-day extension is not available as a first extension of
time to oppose.
(2) If a person was granted an initial thirty-day extension of
time, that person may file a request for an additional sixty-day
extension of time, which will be granted only for good cause shown.
(3) * * * No other time period will be allowed for a final
extension of the opposition period. * * *
(d) The filing date of a request to extend the time for filing an
opposition is the date of electronic receipt in the Office of the
request. In the rare instance that filing by paper is permitted under
these rules, the filing date will be determined in accordance with
Sec. Sec. 2.195 through 2.198.
(e) Fees. [Reserved]
0
7. Add and reserve Sec. 2.103 to read as follows:
Sec. 2.103 [Reserved]
0
8. Amend Sec. 2.104 by revising paragraph (a), and adding new
paragraph (c) to read as follows:
Sec. 2.104 Contents of opposition.
(a) The opposition must set forth a short and plain statement
showing why
[[Page 19310]]
the opposer believes he, she or it would be damaged by the registration
of the opposed mark and state the grounds for opposition. ESTTA
requires the opposer to select relevant grounds for opposition. The
required accompanying statement supports and explains the grounds.
* * * * *
(c) An opposition to an application filed under Section 66(a) of
the Act must identify the goods and/or services opposed and the grounds
for opposition on the ESTTA cover sheet as well as in the accompanying
statement. Opposition to a Section 66(a) application may not be amended
to include goods, services or grounds beyond those set forth in the
ESTTA cover sheet.
0
9. Revise Sec. 2.105 to read as follows:
Sec. 2.105 Notification to parties of opposition proceeding(s).
(a) When an opposition in proper form (see Sec. Sec. 2.101 and
2.104) has been filed with the correct fee(s), and the opposition has
been determined to be timely and complete, the Trademark Trial and
Appeal Board shall prepare a notice of institution, which shall
identify the proceeding as an opposition, number of the proceeding, and
the application(s) involved; and the notice shall designate a time, not
less than thirty days from the mailing date of the notice, within which
an answer must be filed. If a party has provided the Office with an
email address, the notice will be transmitted via email. The notice,
which will include a web link or web address to access the electronic
proceeding record, constitutes service of the notice of opposition to
the applicant.
(b) The Board shall forward a copy of the notice to opposer, as
follows:
(1) If the opposition is transmitted by an attorney, or a written
power of attorney is filed, the Board will send the notice to the
attorney transmitting the opposition or to the attorney designated in
the power of attorney, provided that the person is an ``attorney'' as
defined in Sec. 11.1 of this chapter, at the email or correspondence
address for the attorney.
(2) If opposer is not represented by an attorney in the opposition,
but opposer has appointed a domestic representative, the Board will
send the notice to the domestic representative, at the email or
correspondence address of record for the domestic representative,
unless opposer designates in writing another correspondence address.
(3) If opposer is not represented by an attorney in the opposition,
and no domestic representative has been appointed, the Board will send
the notice directly to opposer at the email or correspondence address
of record for opposer, unless opposer designates in writing another
correspondence address.
(c) The Board shall forward a copy of the notice to applicant, as
follows:
(1) If the opposed application contains a clear indication that the
application is being prosecuted by an attorney, as defined in Sec.
11.1 of this chapter, the Board shall send the notice described in this
section to applicant's attorney at the email or correspondence address
of record for the attorney.
(2) If the opposed application is not being prosecuted by an
attorney but a domestic representative has been appointed, the Board
will send the notice described in this section to the domestic
representative, at the email or correspondence address of record for
the domestic representative, unless applicant designates in writing
another correspondence address.
(3) If the opposed application is not being prosecuted by an
attorney, and no domestic representative has been appointed, the Board
will send the notice described in this section directly to applicant,
at the email or correspondence address of record for the applicant,
unless applicant designates in writing another correspondence address.
0
10. Amend Sec. 2.106 by revising paragraphs (a) and (b) to read as
follows:
Sec. 2.106 Answer.
(a) If no answer is filed within the time initially set, or as may
later be reset by the Board, the opposition may be decided as in case
of default. The failure to file a timely answer tolls all deadlines,
including the discovery conference, until the issue of default is
resolved.
(b)(1) An answer shall state in short and plain terms the
applicant's defenses to each claim asserted and shall admit or deny the
averments upon which the opposer relies. If the applicant is without
knowledge or information sufficient to form a belief as to the truth of
an averment, applicant shall so state and this will have the effect of
a denial. Denials may take any of the forms specified in Rule 8(b) of
the Federal Rules of Civil Procedure. An answer may contain any
defense, including the affirmative defenses of unclean hands, laches,
estoppel, acquiescence, fraud, mistake, prior judgment, or any other
matter constituting an avoidance or affirmative defense. When pleading
special matters, the Federal Rules of Civil Procedure shall be
followed. A reply to an affirmative defense shall not be filed. When a
defense attacks the validity of a registration pleaded in the
opposition, paragraph (b)(2) of this section shall govern. A pleaded
registration is a registration identified by number by the party in the
position of plaintiff in an original notice of opposition or in any
amendment thereto made under Rule 15 of the Federal Rules of Civil
Procedure.
(2)(i) A defense attacking the validity of any one or more of the
registrations pleaded in the opposition shall be a compulsory
counterclaim if grounds for such counterclaim exist at the time when
the answer is filed. If grounds for a counterclaim are known to the
applicant when the answer to the opposition is filed, the counterclaim
shall be pleaded with or as part of the answer. If grounds for a
counterclaim are learned during the course of the opposition
proceeding, the counterclaim shall be pleaded promptly after the
grounds therefor are learned. A counterclaim need not be filed if the
claim is the subject of another proceeding between the same parties or
anyone in privity therewith; but the applicant must promptly inform the
Board, in the context of the opposition proceeding, of the filing of
the other proceeding.
(ii) An attack on the validity of a registration pleaded by an
opposer will not be heard unless a counterclaim or separate petition is
filed to seek the cancellation of such registration.
(iii) The provisions of Sec. Sec. 2.111 through 2.115, inclusive,
shall be applicable to counterclaims. A time, not less than thirty
days, will be designated by the Board within which an answer to the
counterclaim must be filed.
(iv) The times for pleading, discovery, testimony, briefs or oral
argument may be reset or extended when necessary, upon motion by a
party, or as the Board may deem necessary, to enable a party fully to
present or meet a counterclaim or separate petition for cancellation of
a registration.
* * * * *
0
11. Revise Sec. 2.107 to read as follows:
Sec. 2.107 Amendment of pleadings in an opposition proceeding.
(a) Pleadings in an opposition proceeding against an application
filed under section 1 or 44 of the Act may be amended in the same
manner and to the same extent as in a civil action in a United States
district court, except that, after the close of the time period for
filing an opposition including any extension of time for filing an
opposition, an opposition may not be amended to add to the goods or
services opposed, or to add a joint opposer.
[[Page 19311]]
(b) Pleadings in an opposition proceeding against an application
filed under section 66(a) of the Act may be amended in the same manner
and to the same extent as in a civil action in a United States district
court, except that, once filed, the opposition may not be amended to
add grounds for opposition or goods or services beyond those identified
in the notice of opposition, or to add a joint opposer. The grounds for
opposition, the goods or services opposed, and the named opposers are
limited to those identified in the ESTTA cover sheet regardless of what
is contained in any attached statement.
0
12. Revise Sec. 2.111 to read as follows:
Sec. 2.111 Filing petition for cancellation.
(a) A cancellation proceeding is commenced by filing in the Office
a timely petition for cancellation with the required fee.
(b) Any person who believes that he, she or it is or will be
damaged by a registration may file a petition, addressed to the
Trademark Trial and Appeal Board, for cancellation of the registration
in whole or in part. The petition for cancellation need not be
verified, but must be signed by the petitioner or the petitioner's
attorney, as specified in Sec. 11.1 of this chapter, or other
authorized representative, as specified in Sec. 11.14(b) of this
chapter. Electronic signatures pursuant to Sec. 2.193(c) are required
for petitions submitted electronically via ESTTA. The petition for
cancellation may be filed at any time in the case of registrations on
the Supplemental Register or under the Act of 1920, or registrations
under the Act of 1881 or the Act of 1905 which have not been published
under section 12(c) of the Act, or on any ground specified in section
14(3) or (5) of the Act. In all other cases, the petition for
cancellation and the required fee must be filed within five years from
the date of registration of the mark under the Act or from the date of
publication under section 12(c) of the Act.
(c)(1) A petition to cancel a registration must be filed through
ESTTA. In the event that ESTTA is unavailable due to technical
problems, or when extraordinary circumstances are present, a petition
to cancel may be filed in paper form as provided in paragraph (c)(2) of
this section.
(2) A paper petition to cancel a registration must be accompanied
by a Petition to the Director under Sec. 2.146(a)(5), with the fees
therefor and the showing required under paragraph (c)(1) of this
section. Timeliness of the paper submission, if relevant to a ground
asserted in the petition to cancel, will be determined in accordance
with Sec. Sec. 2.195 through 2.198.
(d) The petition for cancellation must be accompanied by the
required fee for each party joined as petitioner for each class in the
registration(s) for which cancellation is sought (see Sec. 2.6). A
petition cannot be filed via ESTTA unless the petition is accompanied
by a fee that is sufficient to pay in full for each named petitioner to
seek cancellation of the registration(s) in each class specified in the
petition. A petition filed in paper form that is not accompanied by a
fee sufficient to pay in full for each named petitioner for each class
in the registration(s) for which cancellation is sought may not be
instituted.
(e) The filing date of a petition for cancellation is the date of
electronic receipt in the Office of the petition and required fee. In
the rare instances that filing by paper is permitted under these rules,
the filing date of a petition for cancellation is the date identified
in Sec. 2.198.
0
13. Revise Sec. 2.112 to read as follows:
Sec. 2.112 Contents of petition for cancellation.
(a) The petition for cancellation must set forth a short and plain
statement showing why the petitioner believes he, she or it is or will
be damaged by the registration, state the ground for cancellation, and
indicate, to the best of petitioner's knowledge, the name and address,
and a current email address(es), of the current owner of the
registration, and of any attorney, as specified in Sec. Sec. 11.14(a)
and (c) of this Chapter, reasonably believed by the petitioner to be a
possible representative of the owner in matters regarding the
registration. ESTTA requires the petitioner to select relevant grounds
for petition to cancel. The required accompanying statement supports
and explains the grounds.
(b) When appropriate, petitions for cancellation of different
registrations owned by the same party may be joined in a consolidated
petition for cancellation. The required fee must be included for each
party joined as a petitioner for each class sought to be cancelled in
each registration against which the petition for cancellation has been
filed.
0
14. Revise Sec. 2.113 to read as follows:
Sec. 2.113 Notification of cancellation proceeding.
(a) When a petition for cancellation in proper form (see Sec. Sec.
2.111 and 2.112) has been filed and the correct fee has been submitted,
the Trademark Trial and Appeal Board shall prepare a notice of
institution which shall identify the proceeding as a cancellation,
number of the proceeding and the registration(s) involved; and shall
designate a time, not less than thirty days from the mailing date of
the notice, within which an answer must be filed. If a party has
provided the Office with an email address, the notice will be
transmitted via email. The notice, which will include a web link or web
address to access the electronic proceeding record, constitutes service
to the registrant of the petition to cancel.
(b) The Board shall forward a copy of the notice to petitioner, as
follows:
(1) If the petition for cancellation is transmitted by an attorney,
or a written power of attorney is filed, the Board will send the notice
to the attorney transmitting the petition for cancellation or to the
attorney designated in the power of attorney, provided that person is
an ``attorney'' as defined in Sec. 11.1 of this chapter, to the
attorney's email or correspondence address of record for the attorney.
(2) If petitioner is not represented by an attorney in the
cancellation proceeding, but petitioner has appointed a domestic
representative, the Board will send the notice to the domestic
representative, at the email or correspondence address of record for
the domestic representative, unless petitioner designates in writing
another correspondence address.
(3) If petitioner is not represented by an attorney in the
cancellation proceeding, and no domestic representative has been
appointed, the Board will send the notice directly to petitioner, at
the email or correspondence address of record for petitioner, unless
petitioner designates in writing another correspondence address.
(c)(1) The Board shall forward a copy of the notice to the party
shown by the records of the Office to be the current owner of the
registration(s) sought to be cancelled, except that the Board, in its
discretion, may join or substitute as respondent a party who makes a
showing of a current ownership interest in such registration(s).
(2) If the respondent has appointed a domestic representative, and
such appointment is reflected in the Office's records, the Board will
send the notice only to the domestic representative at the email or
correspondence address of record for the domestic representative.
(3) In the case of a registration issued under 15 U.S.C. 1141i,
notice will be sent to the international registration holder's
designated representative. The notice, which will include a web link or
web address to access the electronic
[[Page 19312]]
proceeding record, constitutes service to respondent of the petition to
cancel.
(d) When the party alleged by the petitioner, pursuant to Sec.
2.112(a), as the current owner of the registration(s) is not the record
owner, a courtesy copy of the notice with a web link or web address to
access the electronic proceeding record shall be forwarded to the
alleged current owner. The alleged current owner may file a motion to
be joined or substituted as respondent.
0
15. Revise Sec. 2.114 to read as follows:
Sec. 2.114 Answer.
(a) If no answer is filed within the time initially set, or as may
later be reset by the Board, the petition may be decided as in case of
default. The failure to file a timely answer tolls all deadlines,
including the discovery conference, until the issue of default is
resolved.
(b)(1) An answer shall state in short and plain terms the
respondent's defenses to each claim asserted and shall admit or deny
the averments upon which the petitioner relies. If the respondent is
without knowledge or information sufficient to form a belief as to the
truth of an averment, respondent shall so state and this will have the
effect of a denial. Denials may take any of the forms specified in Rule
8(b) of the Federal Rules of Civil Procedure. An answer may contain any
defense, including the affirmative defenses of unclean hands, laches,
estoppel, acquiescence, fraud, mistake, prior judgment, or any other
matter constituting an avoidance or affirmative defense. When pleading
special matters, the Federal Rules of Civil Procedure shall be
followed. A reply to an affirmative defense need not be filed. When a
defense attacks the validity of a registration pleaded in the petition,
paragraph (b)(2) of this section shall govern. A pleaded registration
is a registration identified by number by the party in position of
plaintiff in an original petition for cancellation, or a counterclaim
petition for cancellation, or in any amendment thereto made under Rule
15 of the Federal Rules of Civil Procedure.
(2)(i) A defense attacking the validity of any one or more of the
registrations pleaded in the petition shall be a compulsory
counterclaim if grounds for such counterclaim exist at the time when
the answer is filed. If grounds for a counterclaim are known to
respondent when the answer to the petition is filed, the counterclaim
shall be pleaded with or as part of the answer. If grounds for a
counterclaim are learned during the course of the cancellation
proceeding, the counterclaim shall be pleaded promptly after the
grounds therefor are learned. A counterclaim need not be filed if the
claim is the subject of another proceeding between the same parties or
anyone in privity therewith; but the party in position of respondent
and counterclaim plaintiff must promptly inform the Board, in the
context of the primary cancellation proceeding, of the filing of the
other proceeding.
(ii) An attack on the validity of a registration pleaded by a
petitioner for cancellation will not be heard unless a counterclaim or
separate petition is filed to seek the cancellation of such
registration.
(iii) The provisions of Sec. Sec. 2.111 through 2.115, inclusive,
shall be applicable to counterclaims. A time, not less than thirty
days, will be designated by the Board within which an answer to the
counterclaim must be filed. Such response period may be reset as
necessary by the Board, for a time period to be determined by the
Board.
(iv) The times for pleading, discovery, testimony, briefs, or oral
argument may be reset or extended when necessary, upon motion by a
party, or as the Board may deem necessary, to enable a party fully to
present or meet a counterclaim or separate petition for cancellation of
a registration.
(c) The petition for cancellation or counterclaim petition for
cancellation may be withdrawn without prejudice before the answer is
filed. After the answer is filed, such petition or counterclaim
petition may not be withdrawn without prejudice except with the written
consent of the registrant or the registrant's attorney or other
authorized representative.
0
16. Amend Sec. 2.116 by revising paragraphs (c) and (e) through (g) to
read as follows:
Sec. 2.116 Federal Rules of Civil Procedure.
* * * * *
(c) The notice of opposition or the petition for cancellation and
the answer correspond to the complaint and answer in a court
proceeding.
* * * * *
(e) The submission of notices of reliance, declarations and
affidavits, as well as the taking of depositions, during the assigned
testimony periods correspond to the trial in court proceedings.
(f) Oral hearing, if requested, of arguments on the record and
merits corresponds to oral summation in court proceedings.
(g) The Trademark Trial and Appeal Board's standard protective
order is automatically imposed in all inter partes proceedings unless
the parties, by stipulation approved by the Board, agree to an
alternative order, or a motion by a party to use an alternative order
is granted by the Board. The standard protective order is available at
the Office's Web site. No material disclosed or produced by a party,
presented at trial, or filed with the Board, including motions or
briefs which discuss such material, shall be treated as confidential or
shielded from public view unless designated as protected under the
Board's standard protective order, or under an alternative order
stipulated to by the parties and approved by the Board, or under an
order submitted by motion of a party granted by the Board. The Board
may treat as not confidential that material which cannot reasonably be
considered confidential, notwithstanding a designation as such by a
party.
0
17. Amend by revising Sec. 2.117 paragraph (c) to read as follows:
Sec. 2.117 Suspension of proceedings.
* * * * *
(c) Proceedings may also be suspended sua sponte by the Board, or,
for good cause, upon motion or a stipulation of the parties approved by
the Board. Many consented or stipulated motions to suspend are suitable
for automatic approval by ESTTA, but the Board retains discretion to
condition approval on the party or parties providing necessary
information about the status of settlement talks, discovery activities,
or trial activities, as may be appropriate.
0
18. Revise Sec. 2.118 to read as follows:
Sec. 2.118 Undelivered Office notices.
When a notice sent by the Office to any registrant or applicant is
returned to the Office undelivered, including notification to the
Office of non-delivery in paper or electronic form, additional notice
may be given by publication in the Official Gazette.
0
19. Revise Sec. 2.119 and the heading to read as follows:
Sec. 2.119 Service and signing.
(a) Except for the notice of opposition or the petition to cancel,
every submission filed in the Office in inter partes cases, including
notices of appeal to the courts, must be served upon the other party or
parties. Proof of such service must be made before the submission will
be considered by the Office. A statement signed by the attorney or
other authorized representative, attached to or appearing on the
original submission when filed, clearly stating the date and manner in
which service was made will be accepted as prima facie proof of
service.
[[Page 19313]]
(b) Service of submissions filed with the Board and any other
papers served on a party not required to be filed with the Board, must
be on the attorney or other authorized representative of the party if
there be such or on the party if there is no attorney or other
authorized representative, and must be made by email, unless otherwise
stipulated, or if the serving party can show by written explanation
accompanying the submission or paper, or in a subsequent amended
certificate of service, that service by email was attempted but could
not be made due to technical problems or extraordinary circumstances,
then service may be made in any of the following ways:
(1) By delivering a copy of the submission or paper to the person
served;
(2) By leaving a copy at the usual place of business of the person
served, with someone in the person's employment;
(3) When the person served has no usual place of business, by
leaving a copy at the person's residence, with some person of suitable
age and discretion who resides there;
(4) Transmission by the Priority Mail Express[supreg] Post Office
to Addressee service of the United States Postal Service or by first-
class mail, which may also be certified or registered;
(5) Transmission by overnight courier;
(6) Other forms of electronic transmission.
(c) When service is made by first-class mail, Priority Mail
Express[supreg], or overnight courier, the date of mailing or of
delivery to the overnight courier will be considered the date of
service.
(d) If a party to an inter partes proceeding is not domiciled in
the United States and is not represented by an attorney or other
authorized representative located in the United States, none of the
parties to the proceeding is eligible to use the service option under
paragraph (b)(4) of this section. The party not domiciled in the United
States may designate by submission filed in the Office the name and
address of a person residing in the United States on whom may be served
notices or process in the proceeding. If the party has appointed a
domestic representative, official communications of the Office will be
addressed to the domestic representative unless the proceeding is being
prosecuted by an attorney at law or other qualified person duly
authorized under Sec. 11.14(c) of this subchapter. If the party has
not appointed a domestic representative and the proceeding is not being
prosecuted by an attorney at law or other qualified person, the Office
will send correspondence directly to the party, unless the party
designates in writing another address to which correspondence is to be
sent. The mere designation of a domestic representative does not
authorize the person designated to prosecute the proceeding unless
qualified under Sec. 11.14(a), or qualified under Sec. 11.14(b) and
authorized under Sec. 2.17(f).
(e) Every submission filed in an inter partes proceeding, and every
request for an extension of time to file an opposition, must be signed
by the party filing it, or by the party's attorney or other authorized
representative, but an unsigned submission will not be refused
consideration if a signed copy is submitted to the Office within the
time limit set in the notification of this defect by the Office.
0
20. Revise Sec. 2.120 to read as follows:
Sec. 2.120 Discovery.
(a) In general. (1) Except as otherwise provided in this section,
and wherever appropriate, the provisions of the Federal Rules of Civil
Procedure relating to disclosure and discovery shall apply in
opposition, cancellation, interference and concurrent use registration
proceedings. The provisions of Rule 26 of the Federal Rules of Civil
Procedure relating to required disclosures, the conference of the
parties to discuss settlement and to develop a disclosure and discovery
plan, the scope, proportionality, timing and sequence of discovery,
protective orders, signing of disclosures and discovery responses, and
supplementation of disclosures and discovery responses, are applicable
to Board proceedings in modified form, as noted in these rules and as
may be detailed in any order instituting an inter partes proceeding or
subsequent scheduling order. The Board will specify the deadline for a
discovery conference, the opening and closing dates for the taking of
discovery, and the deadlines within the discovery period for making
initial disclosures and expert disclosure. The trial order setting
these deadlines and dates will be included within the notice of
institution of the proceeding.
(2)(i) The discovery conference shall occur no later than the
opening of the discovery period, and the parties must discuss the
subjects set forth in Rule 26(f) of the Federal Rules of Civil
Procedure and any subjects set forth in the Board's institution order.
A Board Interlocutory Attorney or Administrative Trademark Judge will
participate in the conference upon request of any party made after
answer but no later than ten days prior to the deadline for the
conference, or when the Board deems it useful for the parties to have
Board involvement. The participating attorney or judge may expand or
reduce the number or nature of subjects to be discussed in the
conference as may be deemed appropriate. The discovery period will be
set for a period of 180 days.
(ii) Initial disclosures must be made no later than thirty days
after the opening of the discovery period.
(iii) Disclosure of expert testimony must occur in the manner and
sequence provided in Rule 26(a)(2) of the Federal Rules of Civil
Procedure, unless alternate directions have been provided by the Board
in an institution order or any subsequent order resetting disclosure,
discovery or trial dates. If the expert is retained after the deadline
for disclosure of expert testimony, the party must promptly file a
motion for leave to use expert testimony. Upon disclosure by any party
of plans to use expert testimony, whether before or after the deadline
for disclosing expert testimony, the Board, either on its own
initiative or on notice from either party of the disclosure of expert
testimony, may issue an order regarding expert discovery and/or set a
deadline for any other party to disclose plans to use a rebuttal
expert.
(iv) The parties may stipulate to a shortening of the discovery
period, that there will be no discovery, that the number of discovery
requests or depositions be limited, or that reciprocal disclosures be
used in place of discovery. Limited extensions of the discovery period
may be granted upon stipulation of the parties approved by the Board,
or upon motion granted by the Board, or by order of the Board. If a
motion for an extension is denied, the discovery period may remain as
originally set or as reset. Disclosure deadlines and obligations may be
modified upon written stipulation of the parties approved by the Board,
or upon motion granted by the Board, or by order of the Board, but the
expert disclosure deadline must always be scheduled prior to the close
of discovery. If a stipulation or motion for modification is denied,
discovery disclosure deadlines may remain as originally set or reset
and obligations may remain unaltered.
(v) The parties are not required to prepare or transmit to the
Board a written report outlining their discovery conference
discussions, unless the parties have agreed to alter disclosure or
discovery obligations set forth by these rules or applicable Federal
Rules of Civil Procedure, or unless directed to file such a report by a
participating
[[Page 19314]]
Board Interlocutory Attorney or Administrative Trademark Judge.
(3) A party must make its initial disclosures prior to seeking
discovery, absent modification of this requirement by a stipulation of
the parties approved by the Board, or a motion granted by the Board, or
by order of the Board. Discovery depositions must be properly noticed
and taken during the discovery period. Interrogatories, requests for
production of documents and things, and requests for admission must be
served early enough in the discovery period, as originally set or as
may have been reset by the Board, so that responses will be due no
later than the close of discovery. Responses to interrogatories,
requests for production of documents and things, and requests for
admission must be served within thirty days from the date of service of
such discovery requests. The time to respond may be extended upon
stipulation of the parties, or upon motion granted by the Board, or by
order of the Board, but the response may not be due later than the
close of discovery. The resetting of a party's time to respond to an
outstanding request for discovery will not result in the automatic
rescheduling of the discovery and/or testimony periods; such dates will
be rescheduled only upon stipulation of the parties approved by the
Board, or upon motion granted by the Board, or by order of the Board.
(b) Discovery deposition within the United States. The deposition
of a natural person shall be taken in the Federal judicial district
where the person resides or is regularly employed or at any place on
which the parties agree in writing. The responsibility rests wholly
with the party taking discovery to secure the attendance of a proposed
deponent other than a party or anyone who, at the time set for the
taking of the deposition, is an officer, director, or managing agent of
a party, or a person designated under Rule 30(b)(6) or Rule 31(a) of
the Federal Rules of Civil Procedure. (See 35 U.S.C. 24.)
(c) Discovery deposition in foreign countries; or of foreign party
within jurisdiction of the United States. (1) The discovery deposition
of a natural person residing in a foreign country who is a party or
who, at the time set for the taking of the deposition, is an officer,
director, or managing agent of a party, or a person designated under
Rule 30(b)(6) or Rule 31(a) of the Federal Rules of Civil Procedure,
shall, if taken in a foreign country, be taken in the manner prescribed
by Sec. 2.124 unless the Trademark Trial and Appeal Board, upon motion
for good cause, orders that the deposition be taken by oral
examination, or the parties so stipulate.
(2) Whenever a foreign party is or will be, during a time set for
discovery, present within the United States or any territory which is
under the control and jurisdiction of the United States, such party may
be deposed by oral examination upon notice by the party seeking
discovery. Whenever a foreign party has or will have, during a time set
for discovery, an officer, director, managing agent, or other person
who consents to testify on its behalf, present within the United States
or any territory which is under the control and jurisdiction of the
United States, the party must inform every adverse party of such
presence and such officer, director, managing agent, or other person
who consents to testify in its behalf may be deposed by oral
examination upon notice by the party seeking discovery. The party
seeking discovery may have one or more officers, directors, managing
agents, or other persons who consent to testify on behalf of the
adverse party, designated under Rule 30(b)(6) of the Federal Rules of
Civil Procedure. The deposition of a person under this paragraph shall
be taken in the Federal judicial district where the witness resides or
is regularly employed, or, if the witness neither resides nor is
regularly employed in a Federal judicial district, where the witness is
at the time of the deposition. This paragraph does not preclude the
taking of a discovery deposition of a foreign party by any other
procedure provided by paragraph (c)(1) of this section.
(d) Interrogatories. The total number of written interrogatories
which a party may serve upon another party pursuant to Rule 33 of the
Federal Rules of Civil Procedure, in a proceeding, shall not exceed
seventy-five, counting subparts. If a party upon which interrogatories
have been served believes that the number of interrogatories exceeds
the limitation specified in this paragraph, and is not willing to waive
this basis for objection, the party shall, within the time for (and
instead of) serving answers and specific objections to the
interrogatories, serve a general objection on the ground of their
excessive number. If the inquiring party, in turn, files a motion to
compel discovery, the motion must be accompanied by a copy of the
set(s) of the interrogatories which together are said to exceed the
limitation, and must otherwise comply with the requirements of
paragraph (f) of this section.
(e) Requests for production. The total number of requests for
production which a party may serve upon another party pursuant to Rule
34 of the Federal Rules of Civil Procedure, in a proceeding, shall not
exceed seventy-five, counting subparts. If a party upon which requests
have been served believes that the number of requests exceeds the
limitation specified in this paragraph, and is not willing to waive
this basis for objection, the party shall, within the time for (and
instead of) serving responses and specific objections to the requests,
serve a general objection on the ground of their excessive number. If
the inquiring party, in turn, files a motion to compel discovery, the
motion must be accompanied by a copy of the set(s) of the requests
which together are said to exceed the limitation, and must otherwise
comply with the requirements of paragraph (f) of this section. The
time, place, and manner for production of documents, electronically
stored information, and tangible things shall comport with the
provisions of Rule 34 of the Federal Rules of Civil Procedure, or be
made pursuant to agreement of the parties, or where and in the manner
which the Trademark Trial and Appeal Board, upon motion, orders.
(f) Motion for an order to compel disclosure or discovery. (1) If a
party fails to make required initial disclosures or expert testimony
disclosure, or fails to designate a person pursuant to Rule 30(b)(6) or
Rule 31(a) of the Federal Rules of Civil Procedure, or if a party, or
such designated person, or an officer, director or managing agent of a
party fails to attend a deposition or fails to answer any question
propounded in a discovery deposition, or any interrogatory, or fails to
produce and permit the inspection and copying of any document,
electronically stored information, or tangible thing, the party
entitled to disclosure or seeking discovery may file a motion to compel
disclosure, a designation, or attendance at a deposition, or an answer,
or production and an opportunity to inspect and copy. A motion to
compel initial disclosures must be filed within thirty days after the
deadline therefor and include a copy of the disclosure(s), if any, and
a motion to compel an expert testimony disclosure must be filed prior
to the close of the discovery period. A motion to compel discovery must
be filed prior to the deadline for pretrial disclosures for the first
testimony period as originally set or as reset. A motion to compel
discovery shall include a copy of the request for designation of a
witness or of the relevant portion of the discovery deposition; or a
copy of the interrogatory with any answer or objection that was made;
or a copy of
[[Page 19315]]
the request for production, any proffer of production or objection to
production in response to the request, and a list and brief description
of the documents, electronically stored information, or tangible things
that were not produced for inspection and copying. A motion to compel
initial disclosures, expert testimony disclosure, or discovery must be
supported by a showing from the moving party that such party or the
attorney therefor has made a good faith effort, by conference or
correspondence, to resolve with the other party or the attorney
therefor the issues presented in the motion but the parties were unable
to resolve their differences. If issues raised in the motion are
subsequently resolved by agreement of the parties, the moving party
should inform the Board in writing of the issues in the motion which no
longer require adjudication.
(2) When a party files a motion for an order to compel initial
disclosures, expert testimony disclosure, or discovery, the case will
be suspended by the Board with respect to all matters not germane to
the motion. After the motion to compel is filed and served, no party
should file any paper that is not germane to the motion, except as
otherwise specified in the Board's suspension order. Nor may any party
serve any additional discovery until the period of suspension is lifted
or expires by or under order of the Board. The filing of a motion to
compel any disclosure or discovery shall not toll the time for a party
to comply with any disclosure requirement or to respond to any
outstanding discovery requests or to appear for any noticed discovery
deposition. If discovery has closed, however, the parties need not make
pretrial disclosures until directed to do so by the Board.
(g) Motion for a protective order. Upon motion by a party obligated
to make initial disclosures or expert testimony disclosure or from whom
discovery is sought, and for good cause, the Trademark Trial and Appeal
Board may make any order which justice requires to protect a party from
annoyance, embarrassment, oppression, or undue burden or expense,
including one or more of the types of orders provided by clauses (A)
through (H), inclusive, of Rule 26(c)(1) of the Federal Rules of Civil
Procedure. If the motion for a protective order is denied in whole or
in part, the Board may, on such conditions (other than an award of
expenses to the party prevailing on the motion) as are just, order that
any party comply with disclosure obligations or provide or permit
discovery.
(h) Sanctions. (1) If a party fails to participate in the required
discovery conference, or if a party fails to comply with an order of
the Trademark Trial and Appeal Board relating to disclosure or
discovery, including a protective order, the Board may make any
appropriate order, including those provided in Rule 37(b)(2) of the
Federal Rules of Civil Procedure, except that the Board will not hold
any person in contempt or award expenses to any party. The Board may
impose against a party any of the sanctions provided in Rule 37(b)(2)
in the event that said party or any attorney, agent, or designated
witness of that party fails to comply with a protective order made
pursuant to Rule 26(c) of the Federal Rules of Civil Procedure. A
motion for sanctions against a party for its failure to participate in
the required discovery conference must be filed prior to the deadline
for any party to make initial disclosures.
(2) If a party fails to make required initial disclosures or expert
testimony disclosure, and such party or the party's attorney or other
authorized representative informs the party or parties entitled to
receive disclosures that required disclosures will not be made, the
Board may make any appropriate order, as specified in paragraph (h)(1)
of this section. If a party, or an officer, director, or managing agent
of a party, or a person designated under Rule 30(b)(6) or 31(a) of the
Federal Rules of Civil Procedure to testify on behalf of a party, fails
to attend the party's or person's discovery deposition, after being
served with proper notice, or fails to provide any response to a set of
interrogatories or to a set of requests for production of documents and
things, and such party or the party's attorney or other authorized
representative informs the party seeking discovery that no response
will be made thereto, the Board may make any appropriate order, as
specified in paragraph (h)(1) of this section.
(i) Requests for admission. The total number of requests for
admission which a party may serve upon another party pursuant to Rule
36 of the Federal Rules of Civil Procedure, in a proceeding, shall not
exceed seventy-five, counting subparts. If a party upon which requests
for admission have been served believes that the number of requests for
admission exceeds the limitation specified in this paragraph, and is
not willing to waive this basis for objection, the party shall, within
the time for (and instead of) serving answers and specific objections
to the requests for admission, serve a general objection on the ground
of their excessive number. However, independent of this limit, a party
may make one comprehensive request for admission of any adverse party
that has produced documents for an admission authenticating such
documents, or specifying which documents cannot be authenticated.
(1) Any motion by a party to determine the sufficiency of an answer
or objection, including testing the sufficiency of a general objection
on the ground of excessive number, to a request made by that party for
an admission must be filed prior to the deadline for pretrial
disclosures for the first testimony period, as originally set or as
reset. The motion shall include a copy of the request for admission and
any exhibits thereto and of the answer or objection. The motion must be
supported by a written statement from the moving party showing that
such party or the attorney therefor has made a good faith effort, by
conference or correspondence, to resolve with the other party or the
attorney therefor the issues presented in the motion and has been
unable to reach agreement. If issues raised in the motion are
subsequently resolved by agreement of the parties, the moving party
should inform the Board in writing of the issues in the motion which no
longer require adjudication.
(2) When a party files a motion to determine the sufficiency of an
answer or objection to a request for an admission, the case will be
suspended by the Board with respect to all matters not germane to the
motion. After the motion is filed and served, no party should file any
paper that is not germane to the motion, except as otherwise specified
in the Board's suspension order. Nor may any party serve any additional
discovery until the period of suspension is lifted or expires by or
under order of the Board. The filing of a motion to determine the
sufficiency of an answer or objection to a request for admission shall
not toll the time for a party to comply with any disclosure requirement
or to respond to any outstanding discovery requests or to appear for
any noticed discovery deposition. If discovery has closed, however, the
parties need not make pretrial disclosures until directed to do so by
the Board.
(j) Telephone and pretrial conferences. (1) Whenever it appears to
the Trademark Trial and Appeal Board that a stipulation or motion filed
in an inter partes proceeding is of such nature that a telephone
conference would be beneficial, the Board may, upon its own initiative
or upon request made by one or both of the parties, schedule a
telephone conference.
(2) Whenever it appears to the Trademark Trial and Appeal Board
that
[[Page 19316]]
questions or issues arising during the interlocutory phase of an inter
partes proceeding have become so complex that their resolution by
correspondence or telephone conference is not practical and that
resolution would likely be facilitated by a conference in person of the
parties or their attorneys with an Administrative Trademark Judge or an
Interlocutory Attorney of the Board, the Board may, upon its own
initiative, direct that the parties and/or their attorneys meet with
the Board for a disclosure, discovery or pretrial conference on such
terms as the Board may order.
(3) Parties may not make a recording of the conferences referenced
in paragraphs (j)(1) and (j)(2) of this section.
(k) Use of discovery deposition, answer to interrogatory, admission
or written disclosure. (1) The discovery deposition of a party or of
anyone who at the time of taking the deposition was an officer,
director or managing agent of a party, or a person designated by a
party pursuant to Rule 30(b)(6) or Rule 31(a) of the Federal Rules of
Civil Procedure, may be offered in evidence by an adverse party.
(2) Except as provided in paragraph (k)(1) of this section, the
discovery deposition of a witness, whether or not a party, shall not be
offered in evidence unless the person whose deposition was taken is,
during the testimony period of the party offering the deposition, dead;
or out of the United States (unless it appears that the absence of the
witness was procured by the party offering the deposition); or unable
to testify because of age, illness, infirmity, or imprisonment; or
cannot be served with a subpoena to compel attendance at a testimonial
deposition; or there is a stipulation by the parties; or upon a showing
that such exceptional circumstances exist as to make it desirable, in
the interest of justice, to allow the deposition to be used. The use of
a discovery deposition by any party under this paragraph will be
allowed only by stipulation of the parties approved by the Trademark
Trial and Appeal Board, or by order of the Board on motion, which shall
be filed when the party makes its pretrial disclosures, unless the
motion is based upon a claim that such exceptional circumstances exist
as to make it desirable, in the interest of justice, to allow the
deposition to be used, even though such deadline has passed, in which
case the motion shall be filed promptly after the circumstances claimed
to justify use of the deposition became known.
(3)(i) A discovery deposition, an answer to an interrogatory, an
admission to a request for admission, or a written initial disclosure,
which may be offered in evidence under the provisions of paragraph (k)
of this section, may be made of record in the case by filing the
deposition or any part thereof with any exhibit to the part that is
filed, or a copy of the interrogatory and answer thereto with any
exhibit made part of the answer, or a copy of the request for admission
and any exhibit thereto and the admission (or a statement that the
party from which an admission was requested failed to respond thereto),
or a copy of the written initial disclosure, together with a notice of
reliance in accordance with Sec. 2.122(g). The notice of reliance and
the material submitted thereunder should be filed during the testimony
period of the party that files the notice of reliance. An objection
made at a discovery deposition by a party answering a question subject
to the objection will be considered at final hearing.
(ii) A party that has obtained documents from another party through
disclosure or under Rule 34 of the Federal Rules of Civil Procedure may
not make the documents of record by notice of reliance alone, except to
the extent that they are admissible by notice of reliance under the
provisions of Sec. 2.122(e), or the party has obtained an admission or
stipulation from the producing party that authenticates the documents.
(4) If only part of a discovery deposition is submitted and made
part of the record by a party, an adverse party may introduce under a
notice of reliance any other part of the deposition which should in
fairness be considered so as to make not misleading what was offered by
the submitting party. A notice of reliance filed by an adverse party
must be supported by a written statement explaining why the adverse
party needs to rely upon each additional part listed in the adverse
party's notice, failing which the Board, in its discretion, may refuse
to consider the additional parts.
(5) Written disclosures, an answer to an interrogatory, or an
admission to a request for admission, may be submitted and made part of
the record only by the receiving or inquiring party except that, if
fewer than all of the written disclosures, answers to interrogatories,
or fewer than all of the admissions, are offered in evidence by the
receiving or inquiring party, the disclosing or responding party may
introduce under a notice of reliance any other written disclosures,
answers to interrogatories, or any other admissions, which should in
fairness be considered so as to make not misleading what was offered by
the receiving or inquiring party. The notice of reliance filed by the
disclosing or responding party must be supported by a written statement
explaining why the disclosing or responding party needs to rely upon
each of the additional written disclosures or discovery responses
listed in the disclosing or responding party's notice, and absent such
statement, the Board, in its discretion, may refuse to consider the
additional written disclosures or responses.
(6) Paragraph (k) of this section will not be interpreted to
preclude reading or use of written disclosures or documents, a
discovery deposition, or answer to an interrogatory, or admission as
part of the examination or cross-examination of any witness during the
testimony period of any party.
(7) When a written disclosure, a discovery deposition, or a part
thereof, or an answer to an interrogatory, or an admission, or an
authenticated produced document has been made of record by one party in
accordance with the provisions of paragraph (k)(3) of this section, it
may be referred to by any party for any purpose permitted by the
Federal Rules of Evidence.
(8) Written disclosures or disclosed documents, requests for
discovery, responses thereto, and materials or depositions obtained
through the disclosure or discovery process should not be filed with
the Board, except when submitted with a motion relating to disclosure
or discovery, or in support of or in response to a motion for summary
judgment, or under a notice of reliance, when permitted, during a
party's testimony period.
0
21. Amend Sec. 2.121 by revising the heading and paragraphs (a), (c)
through (e) to read as follows:
Sec. 2.121 Assignment of times for taking testimony and presenting
evidence.
(a) The Trademark Trial and Appeal Board will issue a trial order
setting a deadline for each party's required pretrial disclosures and
assigning to each party its time for taking testimony and presenting
evidence (``testimony period''). No testimony shall be taken or
evidence presented except during the times assigned, unless by
stipulation of the parties approved by the Board, or upon motion
granted by the Board, or by order of the Board. The deadlines for
pretrial disclosures and the testimony periods may be rescheduled by
stipulation of the parties approved by the Board, or upon motion
granted by the Board, or by order of the Board. If a motion to
reschedule any pretrial disclosure deadline and/or testimony period is
denied, the pretrial disclosure deadline or testimony period and any
[[Page 19317]]
subsequent remaining periods may remain as set. The resetting of the
closing date for discovery will result in the rescheduling of pretrial
disclosure deadlines and testimony periods without action by any party.
The resetting of a party's testimony period will result in the
rescheduling of the remaining pretrial disclosure deadlines without
action by any party.
* * * * *
(c) A testimony period which is solely for rebuttal will be set for
fifteen days. All other testimony periods will be set for thirty days.
The periods may be shortened or extended by stipulation of the parties
approved by the Trademark Trial and Appeal Board, or may be extended
upon motion granted by the Board, or by order of the Board. If a motion
for an extension is denied, the testimony periods and their associated
pretrial disclosure deadlines may remain as set.
(d) When parties stipulate to the rescheduling of a deadline for
pretrial disclosures and subsequent testimony periods or to the
rescheduling of the closing date for discovery and the rescheduling of
subsequent deadlines for pretrial disclosures and testimony periods, a
stipulation presented in the form used in a trial order, signed by the
parties, or a motion in said form signed by one party and including a
statement that every other party has agreed thereto, shall be submitted
to the Board through ESTTA, with the relevant dates set forth and an
express statement that all parties agree to the new dates.
(e) A party need not disclose, prior to its testimony period, any
notices of reliance it intends to file during its testimony period.
However, no later than fifteen days prior to the opening of each
testimony period, or on such alternate schedule as may be provided by
order of the Board, the party scheduled to present evidence must
disclose the name and, if not previously provided, the telephone number
and address of each witness from whom it intends to take testimony, or
may take testimony if the need arises, general identifying information
about the witness, such as relationship to any party, including job
title if employed by a party, or, if neither a party nor related to a
party, occupation and job title, a general summary or list of subjects
on which the witness is expected to testify, and a general summary or
list of the types of documents and things which may be introduced as
exhibits during the testimony of the witness. The testimony of a
witness may be taken upon oral examination and transcribed, or
presented in the form of an affidavit or declaration, as provided in
Sec. 2.123. Pretrial disclosure of a witness under this subsection
does not substitute for issuance of a proper notice of examination
under Sec. 2.123(c) or Sec. 2.124(b). If a party does not plan to
take testimony from any witnesses, it must so state in its pretrial
disclosure. When a party fails to make required pretrial disclosures,
any adverse party or parties may have remedy by way of a motion to the
Board to delay or reset any subsequent pretrial disclosure deadlines
and/or testimony periods. A party may move to quash a noticed testimony
deposition of a witness not identified or improperly identified in
pretrial disclosures before the deposition. When testimony has been
presented by affidavit or declaration, but was not covered by an
earlier pretrial disclosure, the remedy for any adverse party is the
prompt filing of a motion to strike, as provided in Sec. Sec. 2.123
and 2.124.
0
22. Amend Sec. 2.122 by revising paragraphs (a) through (e), and
addingparagraph (g), to read as follows:
Sec. 2.122 Matters in evidence.
(a) Applicable Rules. Unless the parties otherwise stipulate, the
rules of evidence for proceedings before the Trademark Trial and Appeal
Board are the Federal Rules of Evidence, the relevant provisions of the
Federal Rules of Civil Procedure, the relevant provisions of Title 28
of the United States Code, and the provisions of this Part of Title 37
of the Code of Federal Regulations. When evidence has been made of
record by one party in accordance with these rules, it may be referred
to by any party for any purpose permitted by the Federal Rules of
Evidence.
(b) Application and registration files. (1) The file of each
application or registration specified in a notice of interference, of
each application or registration specified in the notice of a
concurrent use registration proceeding, of the application against
which a notice of opposition is filed, or of each registration against
which a petition or counterclaim for cancellation is filed forms part
of the record of the proceeding without any action by the parties and
reference may be made to the file for any relevant and competent
purpose.
(2) The allegation in an application for registration, or in a
registration, of a date of use is not evidence on behalf of the
applicant or registrant; a date of use of a mark must be established by
competent evidence. Specimens in the file of an application for
registration, or in the file of a registration, are not evidence on
behalf of the applicant or registrant unless identified and introduced
in evidence as exhibits during the period for the taking of testimony.
Statements made in an affidavit or declaration in the file of an
application for registration, or in the file of a registration, are not
evidence on behalf of the applicant or registrant and must be
established by competent evidence.
(c) Exhibits to pleadings. Except as provided in paragraph (d)(1)
of this section, an exhibit attached to a pleading is not evidence on
behalf of the party to whose pleading the exhibit is attached, and must
be identified and introduced in evidence as an exhibit during the
period for the taking of testimony.
(d) Registrations. (1) A registration of the opposer or petitioner
pleaded in an opposition or petition to cancel will be received in
evidence and made part of the record if the opposition or petition is
accompanied by an original or photocopy of the registration prepared
and issued by the Office showing both the current status of and current
title to the registration, or by a current printout of information from
the electronic database records of the Office showing the current
status and title of the registration. For the cost of a copy of a
registration showing status and title, see Sec. 2.6(b)(4).
(2) A registration owned by any party to a proceeding may be made
of record in the proceeding by that party by appropriate identification
and introduction during the taking of testimony or by filing a notice
of reliance in accordance with paragraph (g) of this section, which
shall be accompanied by a copy (original or photocopy) of the
registration prepared and issued by the Office showing both the current
status of and current title to the registration, or by a current
printout of information from the electronic database records of the
Office showing the current status and title of the registration. The
notice of reliance shall be filed during the testimony period of the
party that files the notice.
(e) Printed publications and official records. (1) Printed
publications, such as books and periodicals, available to the general
public in libraries or of general circulation among members of the
public or that segment of the public which is relevant in a particular
proceeding, and official records, if the publication or official record
is competent evidence and relevant to an issue, may be introduced in
evidence by filing a notice of reliance on the material being offered
in accordance with paragraph (g) of this section. The notice
[[Page 19318]]
of reliance shall specify the printed publication (including
information sufficient to identify the source and the date of the
publication) or the official record and the pages to be read; and be
accompanied by the official record or a copy thereof whose authenticity
is established under the Federal Rules of Evidence, or by the printed
publication or a copy of the relevant portion thereof. A copy of an
official record of the Office need not be certified to be offered in
evidence.
(2) Internet materials may be admitted into evidence under a notice
of reliance in accordance with paragraph (g) of this section, in the
same manner as a printed publication in general circulation, so long as
the date the internet materials were accessed and their source (e.g.,
URL) are provided.
* * * * *
(g) Notices of reliance. The types of evidence admissible by notice
of reliance are identified in paragraphs (d)(2), (e)(1), and (e)(2) of
this section and Sec. 2.120(k). A notice of reliance shall be filed
during the testimony period of the party that files the notice. For all
evidence offered by notice of reliance, the notice must indicate
generally the relevance of the evidence and associate it with one or
more issues in the proceeding. Failure to identify the relevance of the
evidence, or associate it with issues in the proceeding, with
sufficient specificity is a procedural defect that can be cured by the
offering party within the time set by Board order.
0
23. Amend Sec. 2.123 by revising paragraphs (a) through (c), (e)
through (k), and removing paragraph (l) to read as follows:
Sec. 2.123 Trial testimony in inter partes cases.
(a)(1) The testimony of witnesses in inter partes cases may be
submitted in the form of an affidavit or a declaration pursuant to
Sec. 2.20, filed during the proffering party's testimony period,
subject to the right of any adverse party to elect to take and bear the
expense of oral cross-examination of that witness as provided under
paragraph (c) of this section if such witness is within the
jurisdiction of the United States, or conduct cross-examination by
written questions as provided in Sec. 2.124 if such witness is outside
the jurisdiction of the United States, and the offering party must make
that witness available; or taken by deposition upon oral examination as
provided by this section; or by deposition upon written questions as
provided by Sec. 2.124.
(2) A testimonial deposition taken in a foreign country shall be
taken by deposition upon written questions as provided by Sec. 2.124,
unless the Board, upon motion for good cause, orders that the
deposition be taken by oral examination or by affidavit or declaration,
subject to the right of any adverse party to elect to take and bear the
expense of cross-examination by written questions of that witness, or
the parties so stipulate. If a party serves notice of the taking of a
testimonial deposition upon written questions of a witness who is, or
will be at the time of the deposition, present within the United States
or any territory which is under the control and jurisdiction of the
United States, any adverse party may, within twenty days from the date
of service of the notice, file a motion with the Trademark Trial and
Appeal Board, for good cause, for an order that the deposition be taken
by oral examination. The proffering party must inform every adverse
party when it knows that such witness will be within the jurisdiction
of the United States during such party's testimony period.
(b) Stipulations. If the parties so stipulate in writing,
depositions may be taken before any person authorized to administer
oaths, at any place, upon any notice, and in any manner, and when so
taken may be used like other depositions. The parties may stipulate in
writing what a particular witness would testify to if called; or any
relevant facts in the case may be stipulated in writing.
(c) Notice of examination of witnesses. Before the oral depositions
of witnesses shall be taken by a party, due notice in writing shall be
given to the adverse party or parties, as provided in Sec. 2.119(b),
of the time when and place where the depositions will be taken, of the
cause or matter in which they are to be used, and the name and address
of each witness to be examined. Depositions may be noticed for any
reasonable time and place in the United States. A deposition may not be
noticed for a place in a foreign country except as provided in
paragraph (a)(2) of this section. No party shall take depositions in
more than one place at the same time, nor so nearly at the same time
that reasonable opportunity for travel from one place of examination to
the other is not available. When a party elects to take oral cross-
examination of an affiant or declarant, the notice of such election
must be served on the adverse party and a copy filed with the Board
within 10 days from the date of service of the affidavit or declaration
and completed within 20 days from the date of service of the notice of
election. Upon motion for good cause by any party, or upon its own
initiative, the Board may extend the periods for electing and taking
oral cross-examination. When such election has been made but cannot be
completed within that testimony period, the Board, after the close of
that testimony period, shall suspend or reschedule other proceedings in
the matter to allow for the orderly completion of the oral cross-
examination(s).
* * * * *
(e) Examination of witnesses. (1) Each witness before providing
oral testimony shall be duly sworn according to law by the officer
before whom the deposition is to be taken. Where oral depositions are
taken, every adverse party shall have a full opportunity to cross-
examine each witness. When testimony is proffered by affidavit or
declaration, every adverse party will have the right to elect oral
cross-examination of any witness within the jurisdiction of the United
States. For examination of witnesses outside the jurisdiction of the
United States, see Sec. 2.124.
(2) The deposition shall be taken in answer to questions, with the
questions and answers recorded in their regular order by the officer,
or by some other person (who shall be subject to the provisions of Rule
28 of the Federal Rules of Civil Procedure) in the presence of the
officer except when the officer's presence is waived on the record by
agreement of the parties. The testimony shall be recorded and
transcribed, unless the parties present agree otherwise. Exhibits which
are marked and identified at the deposition will be deemed to have been
offered into evidence, without any formal offer thereof, unless the
intention of the party marking the exhibits is clearly expressed to the
contrary.
(3) If pretrial disclosures or the notice of examination of
witnesses served pursuant to paragraph (c) of this section are improper
or inadequate with respect to any witness, an adverse party may cross-
examine that witness under protest while reserving the right to object
to the receipt of the testimony in evidence. Promptly after the
testimony is completed, the adverse party, to preserve the objection,
shall move to strike the testimony from the record, which motion will
be decided on the basis of all the relevant circumstances.
(i) A motion to strike the testimony of a witness for lack of
proper or adequate pretrial disclosure may seek exclusion of the entire
testimony, when there was no pretrial disclosure, or may seek exclusion
of that portion of the testimony that was not adequately disclosed in
accordance with Sec. 2.121(e).
(ii) A motion to strike the testimony of a witness for lack of
proper or
[[Page 19319]]
adequate notice of examination must request the exclusion of the entire
testimony of that witness and not only a part of that testimony.
(4) All objections made at the time of an oral examination to the
qualifications of the officer taking the deposition, or to the manner
of taking it, or to the evidence presented, or to the conduct of any
party, and any other objection to the proceedings, shall be noted by
the officer upon the deposition. Evidence objected to shall be taken
subject to the objections.
(5) When the oral deposition has been transcribed, the deposition
transcript shall be carefully read over by the witness or by the
officer to the witness, and shall then be signed by the witness in the
presence of any officer authorized to administer oaths unless the
reading and the signature be waived on the record by agreement of all
parties.
(f) Certification and filing of deposition.
(1) The officer shall annex to the deposition his or her
certificate showing:
(i) Due administration of the oath by the officer to the witness
before the commencement of his or her deposition;
(ii) The name of the person by whom the deposition was taken down,
and whether, if not taken down by the officer, it was taken down in his
or her presence;
(iii) The presence or absence of the adverse party;
(iv) The place, day, and hour of commencing and taking the
deposition;
(v) The fact that the officer was not disqualified as specified in
Rule 28 of the Federal Rules of Civil Procedure.
(2) If any of the foregoing requirements in paragraph (f)(1) of
this section are waived, the certificate shall so state. The officer
shall sign the certificate and affix thereto his or her seal of office,
if he or she has such a seal. The party taking the deposition, or its
attorney or other authorized representative, shall then promptly file
the transcript and exhibits in electronic form using ESTTA. If the
weight or bulk of an exhibit shall exclude it from such filing or
prevent its uploading to ESTTA, it shall be transmitted by the party
taking the deposition, or its attorney or other authorized
representative, in a separate package marked and addressed as provided
in this section, including an explanation as to why it could not be
submitted electronically.
(g) Form of deposition. (1) The pages of each deposition must be
numbered consecutively, and the name of the witness plainly and
conspicuously written at the top of each page. A deposition must be in
written form. The questions propounded to each witness must be
consecutively numbered unless the pages have numbered lines. Each
question must be followed by its answer. The deposition transcript must
be submitted in full-sized format (one page per sheet), not condensed
(multiple pages per sheet).
(2) Exhibits must be numbered or lettered consecutively and each
must be marked with the number and title of the case and the name of
the party offering the exhibit. Entry and consideration may be refused
to improperly marked exhibits.
(3) Each deposition must contain a word index and an index of the
names of the witnesses, giving the pages where the words appear in the
deposition and where witness examination and cross-examination begin,
and an index of the exhibits, briefly describing their nature and
giving the pages at which they are introduced and offered in evidence.
(h) Depositions must be filed. All depositions which are taken must
be duly filed in the Office. On refusal to file, the Office at its
discretion will not further hear or consider the contestant with whom
the refusal lies; and the Office may, at its discretion, receive and
consider a copy of the withheld deposition, attested by such evidence
as is procurable.
(i) Effect of errors and irregularities in depositions. Rule
32(d)(1), (2), and (3)(A) and (B) of the Federal Rules of Civil
Procedure shall apply to errors and irregularities in depositions.
Notice will not be taken of merely formal or technical objections which
shall not appear to have wrought a substantial injury to the party
raising them; and in case of such injury it must be made to appear that
the objection was raised at the time specified in said rule.
(j) Objections to admissibility. Subject to the provisions of
paragraph (i) of this section, objection may be made to receiving in
evidence any declaration, affidavit, or deposition, or part thereof, or
any other evidence, for any reason which would require the exclusion of
the evidence from consideration. Objections to the competency of a
witness or to the competency, relevancy, or materiality of testimony
must be raised at the time specified in Rule 32(d)(3)(A) of the Federal
Rules of Civil Procedure. Such objections may not be considered until
final hearing.
(k) Evidence not considered. Evidence not obtained and filed in
compliance with these sections will not be considered.
0
24. Amend Sec. 2.124 by revising paragraphs (b)(2), (d)(1), and (f),
and adding paragraphs (b)(3), (d)(3) to read as follows:
Sec. 2.124 Depositions upon written questions.
* * * * *
(b)(1) * * *
(2) A party desiring to take a discovery deposition upon written
questions shall serve notice thereof upon each adverse party and shall
file a copy of the notice, but not copies of the questions, with the
Board. The notice shall state the name and address, if known, of the
person whose deposition is to be taken. If the name of the person is
not known, a general description sufficient to identify the witness or
the particular class or group to which he or she belongs shall be
stated in the notice, and the party from whom the discovery deposition
is to be taken shall designate one or more persons to be deposed in the
same manner as is provided by Rule 30(b)(6) of the Federal Rules of
Civil Procedure.
(3) A party desiring to take cross-examination, by written
questions, of a witness who has provided testimony by affidavit or
declaration shall serve notice thereof upon each adverse party and
shall file a copy of the notice, but not copies of the questions, with
the Board.
* * * * *
(d)(1) Every notice served on any adverse party under the
provisions of paragraph (b) of this section, for the taking of direct
testimony, shall be accompanied by the written questions to be
propounded on behalf of the party who proposes to take the deposition.
Every notice served on any adverse party under the provisions of
paragraph (b)(3) of this section, for the taking of cross-examination,
shall be accompanied by the written questions to be propounded on
behalf of the party who proposes to take the cross-examination. Within
twenty days from the date of service of the notice of taking direct
testimony, any adverse party may serve cross questions upon the party
who proposes to take the deposition. Any party who serves cross
questions, whether in response to direct examination questions or under
paragraph (b)(3) of this section, shall also serve every other adverse
party. Within ten days from the date of service of the cross questions,
the party who proposes to take the deposition, or who earlier offered
testimony of the witness by affidavit or declaration, may serve
redirect questions on every adverse party. Within ten days from the
date of service of the redirect questions, any party who served cross
questions may serve recross questions upon the party
[[Page 19320]]
who proposes to take the deposition; any party who serves recross
questions shall also serve every other adverse party. Written
objections to questions may be served on a party propounding questions;
any party who objects shall serve a copy of the objections on every
other adverse party. In response to objections, substitute questions
may be served on the objecting party within ten days of the date of
service of the objections; substitute questions shall be served on
every other adverse party.
* * * * *
(3) Service of written questions, responses, and cross-examination
questions shall be in accordance with Sec. 2.119(b).
* * * * *
(f) The party who took the deposition shall promptly serve a copy
of the transcript, copies of documentary exhibits, and duplicates or
photographs of physical exhibits on every adverse party. It is the
responsibility of the party who takes the deposition to assure that the
transcript is correct (see Sec. 2.125(b)). If the deposition is a
discovery deposition, it may be made of record as provided by Sec.
2.120(k). If the deposition is a testimonial deposition, the original,
together with copies of documentary exhibits and duplicates or
photographs of physical exhibits, shall be filed promptly with the
Trademark Trial and Appeal Board.
* * * * *
0
25. Revise Sec. 2.125 to read as follows:
Sec. 2.125 Filing and service of testimony.
(a) One copy of the declaration or affidavit prepared in accordance
with Sec. 2.123, together with copies of documentary exhibits and
duplicates or photographs of physical exhibits, shall be served on each
adverse party at the time the declaration or affidavit is submitted to
the Trademark Trial and Appeal Board during the assigned testimony
period.
(b) One copy of the transcript of each testimony deposition taken
in accordance with Sec. Sec. 2.123 or 2.124, together with copies of
documentary exhibits and duplicates or photographs of physical
exhibits, shall be served on each adverse party within thirty days
after completion of the taking of that testimony. If the transcript
with exhibits is not served on each adverse party within thirty days or
within an extension of time for the purpose, any adverse party which
was not served may have remedy by way of a motion to the Trademark
Trial and Appeal Board to reset such adverse party's testimony and/or
briefing periods, as may be appropriate. If the deposing party fails to
serve a copy of the transcript with exhibits on an adverse party after
having been ordered to do so by the Board, the Board, in its
discretion, may strike the deposition, or enter judgment as by default
against the deposing party, or take any such other action as may be
deemed appropriate.
(c) The party who takes testimony is responsible for having all
typographical errors in the transcript and all errors of arrangement,
indexing and form of the transcript corrected, on notice to each
adverse party, prior to the filing of one certified transcript with the
Trademark Trial and Appeal Board. The party who takes testimony is
responsible for serving on each adverse party one copy of the corrected
transcript or, if reasonably feasible, corrected pages to be inserted
into the transcript previously served.
(d) One certified transcript and exhibits shall be filed with the
Trademark Trial and Appeal Board. Notice of such filing shall be served
on each adverse party and a copy of each notice shall be filed with the
Board.
(e) Each transcript shall comply with Sec. 2.123(g) with respect
to arrangement, indexing and form.
(f) Upon motion by any party, for good cause, the Trademark Trial
and Appeal Board may order that any part of an affidavit or declaration
or a deposition transcript or any exhibits that directly disclose any
trade secret or other confidential research, development, or commercial
information may be filed under seal and kept confidential under the
provisions of Sec. 2.27(e). If any party or any attorney or agent of a
party fails to comply with an order made under this paragraph, the
Board may impose any of the sanctions authorized by Sec. 2.120(h).
0
26. Revise Sec. 2.126 to read as follows:
Sec. 2.126 Form of submissions to the Trademark Trial and Appeal
Board.
(a) Submissions shall be made to the Trademark Trial and Appeal
Board via ESTTA.
(1) Text in an electronic submission must be filed in at least 12-
point type and double-spaced.
(2) Exhibits pertaining to an electronic submission must be made
electronically as an attachment to the submission and must be clear and
legible.
(b) In the event that ESTTA is unavailable due to technical
problems, or when extraordinary circumstances are present, submissions
may be filed in paper form. Submissions in paper form must be
accompanied by a Petition to the Director under Sec. 2.146(a)(5), with
the fees therefor and the showing required under this paragraph. A
paper submission, including exhibits and depositions, must meet the
following requirements:
(1) A paper submission must be printed in at least 12-point type
and double-spaced, with text on one side only of each sheet;
(2) A paper submission must be 8 to 8.5 inches (20.3 to 21.6 cm.)
wide and 11 to 11.69 inches (27.9 to 29.7 cm.) long, and contain no
tabs or other such devices extending beyond the edges of the paper;
(3) If a paper submission contains dividers, the dividers must not
have any extruding tabs or other devices, and must be on the same size
and weight paper as the submission;
(4) A paper submission must not be stapled or bound;
(5) All pages of a paper submission must be numbered and exhibits
shall be identified in the manner prescribed in Sec. 2.123(g)(2);
(6) Exhibits pertaining to a paper submission must be filed on
paper and comply with the requirements for a paper submission.
(c) To be handled as confidential, submissions to the Trademark
Trial and Appeal Board that are confidential in whole or part pursuant
to Sec. 2.125(e) must be submitted using the ``Confidential''
selection available in ESTTA or, where appropriate, under a separate
paper cover. Both the submission and its cover must be marked
confidential and must identify the case number and the parties. A copy
of the submission for public viewing with the confidential portions
redacted must be submitted concurrently.
0
27. Amend Sec. 2.127 by revising paragraphs (a) through (e) to read as
follows:
Sec. 2.127 Motions.
(a) Every motion must be submitted in written form and must meet
the requirements prescribed in Sec. 2.126. It shall contain a full
statement of the grounds, and shall embody or be accompanied by a
brief. Except as provided in paragraph (e)(1) of this section, a brief
in response to a motion shall be filed within twenty days from the date
of service of the motion unless another time is specified by the
Trademark Trial and Appeal Board, or the time is extended by
stipulation of the parties approved by the Board, or upon motion
granted by the Board, or upon order of the Board. If a motion for an
extension is denied, the time for responding to the motion remains as
specified under this section, unless otherwise ordered. Except as
provided in paragraph (e)(1) of this section, a reply brief, if filed,
shall be filed within
[[Page 19321]]
twenty days from the date of service of the brief in response to the
motion. The time for filing a reply brief will not be extended or
reopened. The Board will consider no further papers in support of or in
opposition to a motion. Neither the brief in support of a motion nor
the brief in response to a motion shall exceed twenty-five pages in
length in its entirety, including table of contents, index of cases,
description of the record, statement of the issues, recitation of the
facts, argument, and summary. A reply brief shall not exceed ten pages
in length in its entirety. Exhibits submitted in support of or in
opposition to a motion are not considered part of the brief for
purposes of determining the length of the brief. When a party fails to
file a brief in response to a motion, the Board may treat the motion as
conceded. An oral hearing will not be held on a motion except on order
by the Board.
(b) Any request for reconsideration or modification of an order or
decision issued on a motion must be filed within one month from the
date thereof. A brief in response must be filed within twenty days from
the date of service of the request.
(c) Interlocutory motions, requests, conceded matters, and other
matters not actually or potentially dispositive of a proceeding may be
acted upon by a single Administrative Trademark Judge of the Trademark
Trial and Appeal Board, or by an Interlocutory Attorney or Paralegal of
the Board to whom authority to act has been delegated, or by ESTTA.
Motions disposed of by orders entitled ``By the Trademark Trial and
Appeal Board'' have the same legal effect as orders by a panel of three
Administrative Trademark Judges of the Board.
(d) When any party timely files a potentially dispositive motion,
including, but not limited to, a motion to dismiss, a motion for
judgment on the pleadings, or a motion for summary judgment, the case
is suspended by the Trademark Trial and Appeal Board with respect to
all matters not germane to the motion and no party should file any
paper which is not germane to the motion except as otherwise may be
specified in a Board order. If the case is not disposed of as a result
of the motion, proceedings will be resumed pursuant to an order of the
Board when the motion is decided.
(e)(1) A party may not file a motion for summary judgment until the
party has made its initial disclosures, except for a motion asserting
claim or issue preclusion or lack of jurisdiction by the Trademark
Trial and Appeal Board. A motion for summary judgment must be filed
prior to the deadline for pretrial disclosures for the first testimony
period, as originally set or as reset. A motion under Rule 56(d) of the
Federal Rules of Civil Procedure, if filed in response to a motion for
summary judgment, shall be filed within thirty days from the date of
service of the summary judgment motion. The time for filing a motion
under Rule 56(d) will not be extended or reopened. If no motion under
Rule 56(d) is filed, a brief in response to the motion for summary
judgment shall be filed within thirty days from the date of service of
the motion unless the time is extended by stipulation of the parties
approved by the Board, or upon motion granted by the Board, or upon
order of the Board. If a motion for an extension is denied, the time
for responding to the motion for summary judgment may remain as
specified under this section. A reply brief, if filed, shall be filed
within twenty days from the date of service of the brief in response to
the motion. The time for filing a reply brief will not be extended or
reopened. The Board will consider no further papers in support of or in
opposition to a motion for summary judgment.
(2) For purposes of summary judgment only, the Board will consider
any of the following, if a copy is provided with the party's brief on
the summary judgment motion: Written disclosures or disclosed
documents, a discovery deposition or any part thereof with any exhibit
to the part that is filed, an interrogatory and answer thereto with any
exhibit made part of the answer, a request for production and the
documents or things produced in response thereto, or a request for
admission and any exhibit thereto and the admission (or a statement
that the party from which an admission was requested failed to respond
thereto). If any motion for summary judgment is denied, the parties may
stipulate that the materials submitted with briefs on the motion shall
be considered at trial as trial evidence, which may be supplemented by
additional evidence during trial.
0
28. Amend Sec. 2.128 by revising paragraphs (a)(3) and (b) to read as
follows:
Sec. 2.128 Briefs at final hearing.
(a)(1) * * *
(3) When a party in the position of plaintiff fails to file a main
brief, an order may be issued allowing plaintiff until a set time, not
less than fifteen days, in which to show cause why the Board should not
treat such failure as a concession of the case. If plaintiff fails to
file a response to the order, or files a response indicating that
plaintiff has lost interest in the case, judgment may be entered
against plaintiff. If a plaintiff files a response to the order showing
good cause, but does not have any evidence of record and does not move
to reopen its testimony period and make a showing of excusable neglect
sufficient to support such reopening, judgment may be entered against
plaintiff for failure to take testimony or submit any other evidence.
(b) Briefs must be submitted in written form and must meet the
requirements prescribed in Sec. 2.126. Each brief shall contain an
alphabetical index of cited cases. Without prior leave of the Trademark
Trial and Appeal Board, a main brief on the case shall not exceed
fifty-five pages in length in its entirety, including the table of
contents, index of cases, description of the record, statement of the
issues, recitation of the facts, argument, and summary; and a reply
brief shall not exceed twenty-five pages in its entirety. Evidentiary
objections that may properly be raised in a party's brief on the case
may instead be raised in an appendix or by way of a separate statement
of objections. The appendix or separate statement is not included
within the page limit. Any brief beyond the page limits and any brief
with attachments outside the stated requirements may not be considered
by the Board.
0
29. Amend Sec. 2.129 by revising paragraphs (a) through (c) to read as
follows:
Sec. 2.129 Oral argument; reconsideration.
(a) If a party desires to have an oral argument at final hearing,
the party shall request such argument by a separate notice filed not
later than ten days after the due date for the filing of the last reply
brief in the proceeding. Oral arguments will be heard by at least three
Administrative Trademark Judges or other statutory members of the
Trademark Trial and Appeal Board at the time specified in the notice of
hearing. If any party appears at the specified time, that party will be
heard. Parties and members of the Board may attend in person or, at the
discretion of the Board, remotely. If the Board is prevented from
hearing the case at the specified time, a new hearing date will be set.
Unless otherwise permitted, oral arguments in an inter partes case will
be limited to thirty minutes for each party. A party in the position of
plaintiff may reserve part of the time allowed for oral argument to
present a rebuttal argument.
(b) The date or time of a hearing may be reset, so far as is
convenient and proper, to meet the wishes of the parties and their
attorneys or other authorized
[[Page 19322]]
representatives. The Board may, however, deny a request to reset a
hearing date for lack of good cause or if multiple requests for
rescheduling have been filed.
(c) Any request for rehearing or reconsideration or modification of
a decision issued after final hearing must be filed within one month
from the date of the decision. A brief in response must be filed within
twenty days from the date of service of the request. The times
specified may be extended by order of the Trademark Trial and Appeal
Board on motion for good cause.
* * * * *
0
30. Revise Sec. 2.130 to read as follows:
Sec. 2.130 New matter suggested by the trademark examining attorney.
If, while an inter partes proceeding involving an application under
section 1 or 44 of the Act is pending, facts appear which, in the
opinion of the examining attorney, render the mark in the application
unregistrable, the examining attorney should request that the Board
remand the application. The Board may suspend the proceeding and remand
the application to the trademark examining attorney for an ex parte
determination of the question of registrability. A copy of the
trademark examining attorney's final action will be furnished to the
parties to the inter partes proceeding following the final
determination of registrability by the trademark examining attorney or
the Board on appeal. The Board will consider the application for such
further inter partes action as may be appropriate.
0
31. Revise Sec. 2.131 read as follows:
Sec. 2.131 Remand after decision in inter partes proceeding.
If, during an inter partes proceeding involving an application
under section 1 or 44 of the Act, facts are disclosed which appear to
render the mark unregistrable, but such matter has not been tried under
the pleadings as filed by the parties or as they might be deemed to be
amended under Rule 15(b) of the Federal Rules of Civil Procedure to
conform to the evidence, the Trademark Trial and Appeal Board, in lieu
of determining the matter in the decision on the proceeding, may remand
the application to the trademark examining attorney for reexamination
in the event the applicant ultimately prevails in the inter partes
proceeding. Upon remand, the trademark examining attorney shall
reexamine the application in light of the matter referenced by the
Board. If, upon reexamination, the trademark examining attorney finally
refuses registration to the applicant, an appeal may be taken as
provided by Sec. Sec. 2.141 and 2.142.
0
32. Amend Sec. 2.132 by revising paragraphs (a) and (b) to read as
follows:
Sec. 2.132 Involuntary dismissal for failure to take testimony.
(a) If the time for taking testimony by any party in the position
of plaintiff has expired and it is clear to the Board from the
proceeding record that such party has not taken testimony or offered
any other evidence, the Board may grant judgment for the defendant.
Also, any party in the position of defendant may, without waiving the
right to offer evidence in the event the motion is denied, move for
dismissal on the ground of the failure of the plaintiff to prosecute.
The party in the position of plaintiff shall have twenty days from the
date of service of the motion to show cause why judgment should not be
rendered dismissing the case. In the absence of a showing of excusable
neglect, judgment may be rendered against the party in the position of
plaintiff. If the motion is denied, testimony periods will be reset for
the party in the position of defendant and for rebuttal.
(b) If no evidence other than Office records showing the current
status and title of plaintiff's pleaded registration(s) is offered by
any party in the position of plaintiff, any party in the position of
defendant may, without waiving the right to offer evidence in the event
the motion is denied, move for dismissal on the ground that upon the
law and the facts the party in the position of plaintiff has shown no
right to relief. The party in the position of plaintiff shall have
twenty days from the date of service of the motion to file a brief in
response to the motion. The Trademark Trial and Appeal Board may render
judgment against the party in the position of plaintiff, or the Board
may decline to render judgment until all testimony periods have passed.
If judgment is not rendered on the motion to dismiss, testimony periods
will be reset for the party in the position of defendant and for
rebuttal.
* * * * *
0
33. Amend Sec. 2.134 by revising paragraph (b) to read as follows:
Sec. 2.134 Surrender or voluntary cancellation of registration.
* * * * *
(b) After the commencement of a cancellation proceeding, if it
comes to the attention of the Trademark Trial and Appeal Board that the
respondent has permitted its involved registration to be cancelled
under section 8 or section 71 of the Act of 1946, or has failed to
renew its involved registration under section 9 of the Act of 1946, or
has allowed its registered extension of protection to expire under
section 70(b) of the Act of 1946, an order may be issued allowing
respondent until a set time, not less than fifteen days, in which to
show cause why such cancellation, failure to renew, or expiration
should not be deemed to be the equivalent of a cancellation by request
of respondent without the consent of the adverse party and should not
result in entry of judgment against respondent as provided by paragraph
(a) of this section. In the absence of a showing of good and sufficient
cause, judgment may be entered against respondent as provided by
paragraph (a) of this section.
0
34. Revise Sec. 2.136 to read as follows:
Sec. 2.136 Status of application on termination of proceeding.
After the Board has issued its decision in an opposition or
concurrent use proceeding, and after the time for filing any appeal of
the decision has expired, or any appeal that was filed has been decided
and the Board's decision affirmed, the proceeding will be terminated by
the Board. On termination of an opposition or concurrent use
proceeding, if the judgment is not adverse to the applicant, the
application returns to the status it had before the institution of the
proceeding. If the judgment is adverse to the applicant, the
application stands refused without further action and all proceedings
thereon are considered terminated.
0
35. Amend Sec. 2.142 by revising paragraphs (b), (c), (d), (e), and
(f)(1) through (f)(4) and (f)(6) to read as follows:
Sec. 2.142 Time and manner of ex parte appeals.
* * * * *
(b)(1) The brief of appellant shall be filed within sixty days from
the date of appeal. If the brief is not filed within the time allowed,
the appeal may be dismissed. The examining attorney shall, within sixty
days after the brief of appellant is sent to the examining attorney,
file with the Trademark Trial and Appeal Board a written brief
answering the brief of appellant and shall mail a copy of the brief to
the appellant. The appellant may file a reply brief within twenty days
from the date of mailing of the brief of the examining attorney.
(2) Briefs must be submitted in written form and must meet the
requirements prescribed in Sec. 2.126. Each brief shall contain an
alphabetical index
[[Page 19323]]
of cited cases. Without prior leave of the Trademark Trial and Appeal
Board, a brief shall not exceed twenty-five pages in length in its
entirety, including the table of contents, index of cases, description
of the record, statement of the issues, recitation of the facts,
argument, and summary. A reply brief from the appellant, if any, shall
not exceed ten pages in length in its entirety. Unless authorized by
the Board, no further briefs are permitted.
(3) Citation to evidence in briefs should be to the documents in
the electronic application record by date, the name of the paper under
which the evidence was submitted, and the page number in the electronic
record.
(c) All requirements made by the examining attorney and not the
subject of appeal shall be complied with prior to the filing of an
appeal, and the statement of issues in the brief should note such
compliance.
(d) Evidence shall not be submitted after the filing of a notice of
appeal. If the appellant or the examining attorney desires to introduce
additional evidence after an appeal is filed, the appellant or the
examining attorney must submit a request to the Board to suspend the
appeal and to remand the application for further examination.
(e)(1) If the appellant desires an oral hearing, a request should
be made by a separate notice filed not later than ten days after the
due date for a reply brief. Oral argument will be heard by at least
three Administrative Trademark Judges or other statutory members of the
Trademark Trial and Appeal Board at the time specified in the notice of
hearing, which may be reset if the Board is prevented from hearing the
argument at the specified time or, so far as is convenient and proper,
to meet the wish of the appellant or the appellant's attorney or other
authorized representative. Appellants, examining attorneys, and members
of the Board may attend in person or, at the discretion of the Board,
remotely.
(2) If the appellant requests an oral argument, the examining
attorney who issued the refusal of registration or the requirement from
which the appeal is taken, or in lieu thereof another examining
attorney as designated by a supervisory or managing attorney, shall
present an oral argument. If no request for an oral hearing is made by
the appellant, the appeal will be decided on the record and briefs.
(3) Oral argument will be limited to twenty minutes by the
appellant and ten minutes by the examining attorney. The appellant may
reserve part of the time allowed for oral argument to present a
rebuttal argument.
(f)(1) If, during an appeal from a refusal of registration, it
appears to the Trademark Trial and Appeal Board that an issue not
previously raised may render the mark of the appellant unregistrable,
the Board may suspend the appeal and remand the application to the
examining attorney for further examination to be completed within the
time set by the Board.
(2) If the further examination does not result in an additional
ground for refusal of registration, the examining attorney shall
promptly return the application to the Board, for resumption of the
appeal, with a written statement that further examination did not
result in an additional ground for refusal of registration.
(3) If the further examination does result in an additional ground
for refusal of registration, the examining attorney and appellant shall
proceed as provided by Sec. Sec. 2.61, 2.62, and 2.63. If the ground
for refusal is made final, the examining attorney shall return the
application to the Board, which shall thereupon issue an order allowing
the appellant sixty days from the date of the order to file a
supplemental brief limited to the additional ground for the refusal of
registration. If the supplemental brief is not filed by the appellant
within the time allowed, the appeal may be dismissed.
(4) If the supplemental brief of the appellant is filed, the
examining attorney shall, within sixty days after the supplemental
brief of the appellant is sent to the examining attorney, file with the
Board a written brief answering the supplemental brief of appellant and
shall mail a copy of the brief to the appellant. The appellant may file
a reply brief within twenty days from the date of mailing of the brief
of the examining attorney.
* * * * *
(6) If, during an appeal from a refusal of registration, it appears
to the examining attorney that an issue not involved in the appeal may
render the mark of the appellant unregistrable, the examining attorney
may, by written request, ask the Board to suspend the appeal and to
remand the application to the examining attorney for further
examination. If the request is granted, the examining attorney and
appellant shall proceed as provided by Sec. Sec. 2.61, 2.62, and 2.63.
After the additional ground for refusal of registration has been
withdrawn or made final, the examining attorney shall return the
application to the Board, which shall resume proceedings in the appeal
and take further appropriate action with respect thereto.
* * * * *
0
36. Add and reserve Sec. 2.143 to read as follows:
Sec. 2.143 [Reserved]
0
37. Revise Sec. 2.145 to read as follows:
Sec. 2.145 Appeal to court and civil action.
(a) For an Appeal to the United States Court of Appeals for the
Federal Circuit under section 21(a) of the Act. (1) An applicant for
registration, or any party to an interference, opposition, or
cancellation proceeding or any party to an application to register as a
concurrent user, hereinafter referred to as inter partes proceedings,
who is dissatisfied with the decision of the Trademark Trial and Appeal
Board and any registrant who has filed an affidavit or declaration
under section 8 or section 71 of the Act or who has filed an
application for renewal and is dissatisfied with the decision of the
Director (Sec. Sec. 2.165, 2.184), may appeal to the United States
Court of Appeals for the Federal Circuit. It is unnecessary to request
reconsideration by the Board before filing any such appeal; however, a
party requesting reconsideration must do so before filing a notice of
appeal.
(2) In all appeals under section 21(a), the appellant must take the
following steps:
(i) File the notice of appeal with the Director, addressed to the
Office of the General Counsel, as provided in Sec. 104.2 of this
chapter;
(ii) File a copy of the notice of appeal with the Trademark Trial
and Appeal Board via ESTTA; and
(iii) Comply with the requirements of the Federal Rules of
Appellate Procedure and Rules for the United States Court of Appeals
for the Federal Circuit, including serving the requisite number of
copies on the Court and paying the requisite fee for the appeal.
(3) Additional requirements. (i) The notice of appeal shall specify
the party or parties taking the appeal and shall designate the decision
or part thereof appealed from.
(ii) In inter partes proceedings, the notice of appeal must be
served as provided in Sec. 2.119.
(b) For a notice of election under section 21(a)(1) to proceed
under section 21(b) of the Act. (1) Any applicant or registrant in an
ex parte case who takes an appeal to the United States Court of Appeals
for the Federal Circuit waives any right to proceed under section 21(b)
of the Act.
(2) If an adverse party to an appeal taken to the United States
Court of Appeals for the Federal Circuit by a
[[Page 19324]]
defeated party in an inter partes proceeding elects to have all further
review proceedings conducted under section 21(b) of the Act, that party
must take the following steps:
(i) File a notice of election with the Director, addressed to the
Office of the General Counsel, as provided in Sec. 104.2 of this
chapter;
(ii) File a copy of the notice of election with the Trademark Trial
and Appeal Board via ESTTA; and
(iii) Serve the notice of election as provided in Sec. 2.119.
(c) For a civil action under section 21(b) of the Act. (1) Any
person who may appeal to the United States Court of Appeals for the
Federal Circuit (paragraph (a) of this section), may have remedy by
civil action under section 21(b) of the Act. It is unnecessary to
request reconsideration by the Board before filing any such civil
action; however, a party requesting reconsideration must do so before
filing a civil action.
(2) Any applicant or registrant in an ex parte case who seeks
remedy by civil action under section 21(b) of the Act must serve the
summons and complaint pursuant to Rule 4(i) of the Federal Rules of
Civil Procedure with the copy to the Director addressed to the Office
of the General Counsel as provided in Sec. 104.2 of this chapter. A
copy of the complaint must also be filed with the Trademark Trial and
Appeal Board via ESTTA.
(3) The party initiating an action for review of a Board decision
in an inter partes case under section 21(b) of the Act must file notice
thereof with the Trademark Trial and Appeal Board via ESTTA no later
than five business days after filing the complaint in the district
court. The notice must identify the civil action with particularity by
providing the case name, case number, and court in which it was filed.
A copy of the complaint may be filed with the notice. Failure to file
the required notice can result in termination of the Board proceeding
and further action within the United States Patent and Trademark Office
consistent with the final Board decision.
(d) Time for appeal or civil action. (1) For an appeal under
section 21(a). The notice of appeal filed pursuant to section 21(a) of
the Act must be filed with the Director no later than sixty-three (63)
days from the date of the final decision of the Trademark Trial and
Appeal Board or the Director. Any notice of cross-appeal is controlled
by Rule 4(a)(3) of the Federal Rules of Appellate Procedure, and any
other requirement imposed by the Rules of the United States Court of
Appeals for the Federal Circuit.
(2) For a notice of election under 21(a)(1) and a civil action
pursuant to such notice of election. The times for filing a notice of
election under section 21(a)(1) and for commencing a civil action
pursuant to a notice of election are governed by section 21(a)(1) of
the Act.
(3) For a civil action under section 21(b). A civil action must be
commenced no later than sixty-three (63) days after the date of the
final decision of the Trademark Trial and Appeal Board or Director.
(4) Time computation. (i) If a request for rehearing or
reconsideration or modification of the Board decision is filed within
the time specified in Sec. Sec. 2.127(b), 2.129(c) or 2.144, or within
any extension of time granted thereunder, the time for filing an appeal
or commencing a civil action shall expire no later than sixty-three
(63) days after action on the request.
(ii) Holidays. The times specified in this section in days are
calendar days. If the last day of time specified for an appeal, notice
of election, or commencing a civil action falls on a Saturday, Sunday
or Federal holiday in the District of Columbia, the time is extended to
the next day which is neither a Saturday, Sunday nor a Federal holiday
in the District of Columbia pursuant to Sec. 2.196.
(e) Extension of time. (1) The Director, or the Director's
designee, may extend the time for filing an appeal, or commencing a
civil action, upon written request if:
(i) Requested before the expiration of the period for filing an
appeal or commencing a civil action, and upon a showing of good cause;
or
(ii) Requested after the expiration of the period for filing an
appeal or commencing a civil action, and upon a showing that the
failure to act was the result of excusable neglect.
(2) The request must be filed as provided in Sec. 104.2 of this
chapter and addressed to the attention of the Office of the Solicitor.
A copy of the request should also be filed with the Trademark Trial and
Appeal Board via ESTTA.
0
38. Amend Sec. 2.190 by revising paragraphs (a) through (c) to read as
follows:
Sec. 2.190 Addresses for trademark correspondence with the United
States Patent and Trademark Office.
(a) Trademark correspondence. In general. All trademark-related
documents filed on paper, except documents sent to the Assignment
Recordation Branch for recordation; requests for copies of trademark
documents; and certain documents filed under the Madrid Protocol as
specified in paragraph (e) of this section, should be addressed to:
Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.
All trademark-related documents may be delivered by hand, during the
hours the Office is open to receive correspondence, to the Trademark
Assistance Center, James Madison Building--East Wing, Concourse Level,
600 Dulany Street, Alexandria, Virginia 22314.
(b) Electronic trademark documents. An applicant may transmit a
trademark document through TEAS, at https://www.uspto.gov. Documents
that relate to proceedings before the Trademark Trial and Appeal Board
shall be filed directly with the Board electronically through ESTTA, at
https://estta.uspto.gov.
(c) Trademark Assignments. Requests to record documents in the
Assignment Recordation Branch may be filed through the Office's Web
site, at https://www.uspto.gov. Paper documents and cover sheets to be
recorded in the Assignment Recordation Branch should be addressed to:
Mail Stop Assignment Recordation Services, Director of the United
States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia
22313-1450. See Sec. 3.27 of this chapter.
* * * * *
0
39. Revise Sec. 2.191 to read as follows:
Sec. 2.191 Business to be transacted in writing.
All business with the Office should be transacted in writing. The
personal appearance of applicants or their representatives at the
Office is unnecessary. The action of the Office will be based
exclusively on the written record. No attention will be paid to any
alleged oral promise, stipulation, or understanding in relation to
which there is disagreement or doubt. The Office encourages parties to
file documents through TEAS wherever possible, or through ESTTA for
documents in proceedings before the Trademark Trial and Appeal Board.
Dated: March 18, 2016.
Michelle K. Lee,
Under Secretary of Commerce for Intellectual Property and Director,
United States Patent and Trademark Office.
[FR Doc. 2016-06672 Filed 4-1-16; 8:45 am]
BILLING CODE 3510-16-P