Miscellaneous Changes to Trademark Trial and Appeal Board Rules of Practice, 69950-69988 [2016-23092]

Agencies

• DEPARTMENT OF COMMERCE
• Patent and Trademark Office

[Federal Register Volume 81, Number 195 (Friday, October 7, 2016)]
[Rules and Regulations]
[Pages 69950-69988]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2016-23092]



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Vol. 81

Friday,

No. 195

October 7, 2016

Part III





Department of Commerce





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Patent and Trademark Office





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37 CFR Part 2





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

Federal Register / Vol. 81 , No. 195 / Friday, October 7, 2016 / 
Rules and Regulations

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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: Final rule.

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SUMMARY: The United States Patent and Trademark Office (``USPTO'' or 
``Office'') is amending 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 directed to reducing the 
burden on the parties, to conforming the rules to current practice, to 
updating references that have changed, to reflecting technologic 
changes, and to ensuring the usage of standard, current terminology. 
This final rule also furthers strategic objectives of the Office to 
increase end-to-end electronic processing.

DATES: This rule is effective January 14, 2017.

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 amendments to the rules emphasize 
the efficiency of electronic filing, which is already utilized by most 
parties in Board proceedings. In particular, 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 is resuming service requirements for notices of 
opposition, petitions for cancellation, and concurrent use proceedings, 
and is requiring parties to serve all other submissions and papers by 
email. The 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. The proportionality requirement implemented in the 2015 
amendments to the Federal Rules of Civil Procedure is expressly 
reflected in the Board's 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 amendments 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 codified, and new 
requirements for notification to the Office and the Board when review 
by way of civil action is taken are added in order to avoid premature 
termination of a Board proceeding. The 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 2016 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 
have 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 to recognize in Board rules at this time, and the Board 
rules must be updated to reflect precedential decisions of the Board 
and the courts.

Electronic Environment

Filing
    The amended rules require all filings be made through ESTTA, except 
examining attorney filings in ex parte appeals which are filed through 
the Office's internal electronic system.

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 rules now shift the responsibility 
for serving the complaint back to the Board. However, in keeping with 
the progress toward complete electronic communication, the Board will 
not forward a paper copy of the complaint, but rather will serve the 
complaint in the form of a link to, or web address for the Board's 
electronic case file system (``TTABVUE'') in the notice of institution.
    Under the 2007 rules, parties were 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 is codifying that practice in this final rule 
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 rules 
nonetheless allow for parties to stipulate otherwise, to accommodate 
other methods of communication that may promote convenience and 
expediency (e.g., 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 
must include a statement with its submission or paper explaining why 
service by email was not possible, and the certificate of service must 
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, 
is removed by

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this final rule. The response period for a motion is initiated by its 
service date and runs for 20 days, except that the response period for 
summary judgment motions remains 30 days. Similarly, no additional time 
is available for the service of discovery responses.

Streamlining Discovery and Pretrial Procedure

    The rules reflect amendments to the Federal Rules of Civil 
Procedure by addressing the concept of ``proportionality'' in process 
and procedure in discovery. In addition, this final rule codifies 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 further reflect the 
Federal Rules of Civil Procedure, the 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 amendments, motions to compel initial disclosures must be 
filed within 30 days after the deadline for initial disclosures.
    The amended rules limit the number of requests for production of 
documents and requests for admissions to 75, the same as the current 
limitation on interrogatories, with the option to move for additional 
requests for good cause. In addition, the 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 specific produced documents or specify which of those 
documents cannot be authenticated. These limitations on discovery 
simply recognize general practice and are meant to curtail abuse and 
restrain litigation expense for stakeholders.
    Many trial cases are quickly settled, withdrawn, or decided by 
default, and many others involve cooperative parties who engage in 
useful settlement and discovery planning conferences. For more 
contentious cases, parties may request involvement of a Board 
Interlocutory Attorney in the conference, and this final rule codifies 
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 are broadened to encompass any circumstance in which they 
``would be beneficial.''
    Under the amended rules, 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 have to be produced or inspected by the close of 
discovery.
    Under the amended rules, discovery disputes have to be resolved 
promptly following the close of discovery. The deadline for filing 
motions to compel discovery or to determine the sufficiency of 
responses to requests for admissions is now 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 
also ensure that pretrial disclosures are made and trial preparation is 
engaged in only after all discovery issues have been resolved. In 
addition, the Board will 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.
    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 this final rule clarifies that the protective order is 
automatically applicable in all inter partes proceedings, subject to 
specified exceptions. Parties continue to have the flexibility to move 
forward under an alternative order by stipulation or motion approved by 
the Board. This final rule also codifies practice and precedent that 
the Board may treat as not confidential material that 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 this final rule codifies 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 are reviewed and processed by a Board paralegal or attorney 
continues. In addition, non-dispositive matters can be acted on by 
paralegals, and the 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, this final rule provides 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, under the amended rules motions for summary judgment also have 
to be filed prior to the deadline for plaintiff's pretrial disclosures 
for the first testimony period. This avoids 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 amended so that it is 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 are codified 
through this final rule 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 
continue to be able to stipulate to rely

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on summary judgment materials as trial evidence.
    This final rule codifies two changes in recent years, effected by 
case law and practice, expanding the option to submit certain documents 
by notice of reliance. First, this final rule codifies 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 
copy of information from the USPTO electronic database records showing 
current status and title. The rules currently allow for such copies to 
be attached to the notice of opposition or petition for cancellation; 
the change specifically also allows for such copies to be submitted 
under notice of reliance. Second, this final rule codifies 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, this final rule adds a paragraph 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 rule explicitly states any 
failure of a notice of reliance to meet this requirement will 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 rule changes, a party must file any motion to use a 
discovery deposition at trial along with its pretrial disclosures. 
Also, an adverse party is able to move to quash a notice of testimony 
deposition if the witness was not included in the pretrial disclosures, 
and an adverse party is able to move to strike testimony presented by 
affidavit or declaration if the witness was not included in the 
pretrial disclosure.
    In response to Cold War Museum Inc. v. Cold War Air Museum Inc., 
586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009), this final rule 
makes 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 testimony.
    The Board has seen an increase in testimony deposition transcripts 
that do not include a word index, and the final rule requires a word 
index for all testimony transcripts. For ease of review, deposition 
transcripts also have to be submitted in full-sized format, not 
condensed with multiple pages per sheet. More broadly, the rules make 
clear that it is the parties' responsibility to ensure that all 
exhibits pertaining to an electronic submission must be clear and 
legible.
    This final rule codifies 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 amended 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 
amendments. Under this final rule, evidence should not be filed with 
the Board after the filing of the notice of appeal to the Board and 
should 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 to the Board.
    Under the final rule, reply briefs in ex parte appeals are 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, are to the documents in the 
electronic application record by docket entry date and page number.
    The amended rules align more closely the terminology of Sec.  2.130 
pertaining to the Board referring applications involved in inter partes 
proceedings back to the Trademark Examining Operation upon request with 
that of Sec.  2.142(d) and (f)(6) remanding applications involved in ex 
parte appeals back to the Trademark Examining Operation. This is not a 
change to the substance of the existing rule.

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. This 
final rule codifies that option.
    In Sec. Sec.  2.106(a) and 2.114(a), this final rule codifies 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 will generally be viewed as 
a waiver of the technical default.
    The amended rules provide that the grounds, goods, and services in 
a Notice of Opposition to an application under Trademark Act section 
66(a) are limited to those identified 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 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 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 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. In addition, requests to extend 
the time for filing an appeal, or commencing a civil action, are to be 
filed as provided in 37 CFR 104.2 and addressed to the attention of the 
Office of the Solicitor, and a copy should be filed with the Board via 
ESTTA.

Public Participation

    The Board began in 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

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promote the use of ACR, 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 in house counsel, outside counsel, and 
mark owners and applicants. That February roundtable involved 
discussion of many of the provisions that are now included in the 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 enriched the 
process through which the Board developed the rule changes and served 
as a precursor to the continuing discussion with stakeholders that the 
Office sought through the Notice of Proposed Rulemaking.

Proposed Rule and Request for Comments

    A proposed rule was published in the Federal Register on April 4, 
2016, at 81 FR 19295-19324. The Office received comments from five 
intellectual property organizations, two law firms, and 10 attorneys. 
These comments are posted on the Office's Web site at https://www.uspto.gov/trademark/trademark-updates-and-announcements/comments-miscellaneous-changes-ttab-rules-practice, and are addressed below.
    The Office received many positive comments in favor of several rule 
changes and appreciates the public support. To streamline this final 
rule, such comments expressing support are not individually set forth 
and no specific responses to such comments are provided. In addition, 
comments and responses that apply more generally to issues and multiple 
rules are presented under the heading General Comments and Responses, 
while other comments and responses are interwoven into the Discussion 
of Rule Changes to provide context for those comments. Comments outside 
the scope of this rulemaking have been considered even if not 
specifically addressed herein.

General Comments and Responses

Electronic Filing

    Comment: One commenter noted that no ESTTA form exists for a 
combined notice of opposition and petition for cancellation, and 
suggested that either ESTTA should be enhanced to accommodate this 
filing, or an exception for paper filing with no fee should be 
permitted.
    Response: In view of the extremely small number of combined 
complaints, no ESTTA enhancement will be undertaken in the near future 
to accommodate this type of filing. Rather, a comparable outcome can be 
achieved by electronically filing separately a notice of opposition and 
a petition for cancellation and simultaneously requesting 
consolidation. The fee amount remains unchanged, as the combined filing 
did not provide any avoidance or reduction of fees per party or class 
sought to be opposed or cancelled. See TBMP section 305.02. Although 
the commenter noted the additional expense of requesting consolidation, 
the expense should be relatively minimal. Therefore, no exception to 
the requirement to file by ESTTA will be made for a combined filing, 
and prior case law allowing for this type of combined notice of 
opposition and petition for cancellation is superseded by the mandatory 
online filing requirement.
    To facilitate proper handling, the motion for consolidation in this 
situation should be included in the same filing with the petition for 
cancellation, the institution of which will be processed by Board 
personnel rather than automatically instituted, as with most 
oppositions. The attached pleading should include a prominent reference 
to the motion to consolidate. This procedure will help bring the 
requested consolidation to the Board's attention more promptly.

Service by the Board

    Comment: Although all commenters who addressed the proposal 
supported the Board's resumption of its pre-2007 practice of serving 
the complaint, some commenters shared concerns about the manner of 
service. The proposed rules provided that, in all cases except those 
challenging a registered extension of protection under the Madrid 
Protocol, if the parties had provided email addresses to the Office, 
the Board would serve the complaint in the form of an email notice with 
a link to the appropriate entry in TTABVUE. Commenters articulated 
worry that the proposed method of serving the complaint may not 
sufficiently convey to pro se parties the seriousness of the proceeding 
or the importance of timely responding to the complaint. Some 
commenters expressed apprehensions that parties might mistake the email 
notice for a trademark-related solicitation, and therefore disregard 
it. Also regarding Board service of complaints by email, several 
commenters conveyed apprehensions that service emails may not reach the 
intended recipient either because of spam filtering or outdated email 
contact information. One commenter suggested informing applicants and 
registrants of the possibility of this type of email notification.
    Response: With regard to cancellations, at this juncture, the Board 
intends to serve by U.S. mail, pending system enhancements to 
facilitate email service. In anticipation of a future move toward email 
service of complaints in cancellation proceedings, the Office will 
supplement its existing efforts to emphasize to registrants the 
importance of maintaining correct and current email address information 
with the Office and taking steps to ensure that Office emails are not 
blocked by servers or spam filters, or diverted to junk mail folders. 
See, e.g., the USPTO Web page entitled ``Don't Miss Important E-Mails 
from the USPTO: Add the USPTO to your `Safe Senders' list,'' which 
includes instructions to ensure that USPTO emails reach the recipient. 
In addition, the Office plans to implement the suggestion made by one 
commenter that the Office specifically notify registration owners when 
they receive their registration certificates that the Current Owner 
Address information in the USPTO's Trademark Status and Document 
Retrieval (``TSDR'') database, including the email address, may be used 
for service.
    Turning to oppositions, the rules provide that notice of the 
opposition will be sent to the ``email or correspondence address'' of 
the appropriate recipient, as specified in the rules. Applicants would 
receive notices by email only if email communication has been 
authorized. Having authorized email communication, the recipient should 
be aware that this may include official USPTO correspondence requiring 
a timely response. Moreover, applicants who have authorized email 
during the examination of their applications likely will be accustomed 
to receiving important email notices from the Office, including Office 
Actions that required a timely response to avoid abandonment of the 
application. Thus, notice of an opposition to which they must respond 
will be similar. As all of the USPTO

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electronic systems are enhanced and email communication is more widely 
authorized, the rule allows the Board the flexibility to increase the 
proportion of notices sent only by email. As a reminder, Sec.  
2.18(b)(1) requires applicants, registrants, and parties to proceedings 
to promptly notify the Office of any change in physical address or 
email address.
    The Office also plans to continue its efforts to educate the public 
about trademark solicitations and how to distinguish them from USPTO 
communications. See, e.g., the USPTO Web page entitled ``WARNING: Non-
USPTO Solicitations That May Resemble Official USPTO Communications'' 
and the educational video on the USPTO Web site entitled ``TM Newsflash 
16: Solicitation Alert.'' Also, the Office continues to work with 
enforcement agencies on fraudulent solicitations, including those that 
recipients are misled into believing come from the USPTO. The Office 
has been successfully using email communication in many aspects of 
Board proceedings and for other trademark-related communications, and 
will use this experience to make its email service of the notice of 
opposition as effective as possible.
    Comment: Some commenters noted that the USPTO's databases contain 
multiple fields for address and email address information, and sought 
clarification as to what address and email information would be used 
for service by the Board.
    Response: As noted above, at this juncture, in cancellation 
proceedings, the Board intends to serve by U.S. mail, pending system 
enhancements to facilitate email service at a later date. The Office 
plans to effect service using the ``Current Owner Information'' field 
or, if one has been appointed, the ``Domestic Representative 
Information'' field in the USPTO's TSDR database. For opposition 
proceedings, the terminology ``email or correspondence address of 
record'' in the rule refers to ``correspondence address'' as it is used 
throughout the Rules of Practice in Trademark Cases (e.g., Sec. Sec.  
2.18, 2.21, 2.22, 2.23) and the addition of ``email'' merely highlights 
that an email correspondence address may be used when authorized.
    Comment: Other commenters inquired about any procedures the Board 
might follow prior to entry of default judgment when the Board served 
the complaint by email.
    Response: Where there is no authorized email address, the Board 
continues to mail both the institution notice and the notice of default 
to the appropriate physical address. Where there is an authorized email 
address, the notice of default will go to that same email address. When 
the Board serves the institution notice in an opposition proceeding 
using an authorized email address but receives a notification that the 
email was undeliverable, Board staff investigate other possible 
addresses for forwarding the institution notice; if no other address is 
found, the Board effects service by publication in the Official 
Gazette. In addition, the Office encourages trademark owners to 
exercise due diligence in monitoring the status of their registrations 
online through the USPTO database.
    Comment: One commenter proposed clarifying language in Sec. Sec.  
2.105(b)(2) and 2.113(b)(2) to provide that a plaintiff's domestic 
representative will be served with a copy of the notice of the 
opposition or the cancellation proceeding only if appointed as the 
domestic representative in the Board proceeding.
    Response: The proposed amendment of these rules only pertained to 
adding email as a possible correspondence address. The rule language 
for which clarification is sought by the commenter is longstanding, and 
there has been no confusion as a result of the wording. The current 
terminology ``opposer has appointed'' and ``petitioner has appointed'' 
refers to the parties' roles in the Board proceeding, and therefore 
contemplates an appointment in the proceeding. Therefore, no changes 
are made in response to the comment.

Effective Date Applicable for Pending Cases

    Comment: Some commenters expressed concern with the application of 
the new rules to all pending cases and requested assurance that the 
Board will remain flexible in granting extension of the discovery and 
trial periods to accommodate issues that may arise; for example, 
docketing issues regarding discovery, email service, and timing. The 
rules call for electronic service of documents between parties and 
remove the additional five days added to deadlines when parties choose 
to serve by mail.
    Response: The Board has accommodated these concerns by publishing 
this final rule well in advance of the effective date. This allows time 
for the parties to take appropriate actions in cases pending on the 
publication date and prepare their docketing for the new rules. In view 
of the delayed effective date, the Board does not anticipate many 
scheduling or other difficulties as a result of the new rules; however, 
the Board may entertain scheduling issues that still arise in cases 
pending prior to the publication date as a result of the final rules 
where appropriate. To the extent issues arise despite the delayed 
effective date, parties are encouraged to resolve issues by 
stipulation. With regard to service, under the new rules parties may 
stipulate to any type of service, including by mail, and the extra five 
days previously provided by Sec.  2.119(c) are already built into the 
response time period.

Evidentiary Rulings

    Comment: One commenter suggested that one judge should rule on 
evidentiary issues and decide whether the panel of judges should see 
the evidence, so that judges ruling on the final decision have not seen 
evidence that has been stricken.
    Response: The Board has not observed any detrimental effect of 
having the same panel rule on the evidentiary objections and the final 
decision. The panel assigned at final decision reviews the complete 
record, which would include any determinations made on evidentiary 
objections. As the Board has noted, Rule 403 of the Federal Rules of 
Evidence ``assumes a trial judge is able to discern and weigh the 
improper inferences that a jury might draw from certain evidence, and 
then balance those improprieties against probative value and necessity 
. . . . [as well as] exclude those improper inferences from his mind in 
reaching a decision.'' Ava Ruha Corp. v. Mother's Nutritional Ctr., 
Inc., 113 USPQ2d 1575, 1579 (TTAB 2015) (quoting Gulf States Utils. Co. 
v. Ecodyne Corp., 735 F.2d 517, 510 (5th Cir. 1981)). To the extent 
that the comment is directed to procedural concerns, those are already 
handled by interlocutory decisions. Parties should make sure that 
curable defects are brought up early so that the objections may be 
considered. Those objections that are substantive in nature go to the 
weight of the evidence, which is routinely handled by judges. See 
Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1104 (TTAB 2007). 
This would also not be an efficient way of handling objections that are 
raised during testimony depositions in particular and in responses to 
affidavits, as many of these objections are not maintained in the 
briefs. Thus, such rulings would be premature.

Grammar/Nomenclature

    Comment: One commenter provided various comments to add commas, and 
change ``may not'' to ``will not'' or ``shall not'' etc., and to 
continue to use

[[Page 69955]]

the term Examiner as it is used in various other Trademark Rules.
    Response: The comma placement and use of ``may'' versus ``will'' or 
``shall'' are purposeful and remain. With regard to retention of the 
term ``Examiner,'' the phraseology of choice for the Board in the 
amendments is ``trademark examining attorney'' or ``examining 
attorney,'' consistent with terminology in Board procedure.

Counting Dates

    Comment: One commenter expressed concern that the Rules and the 
TBMP do not explain whether in inter partes proceedings the initial day 
triggering the time period is to be counted, and whether the action is 
due on the final day or on the day after the final day of the specified 
period. The commenter indicated that it would be helpful if either the 
rules or the manual explained the inclusion/exclusion of the first and 
last days of the period, similar to Rule 6(a)(1) of the Federal Rules 
of Civil Procedure.
    Response: The Board has a longstanding practice that follows Rule 
6(a)(1) of the Federal Rules of Civil Procedure pursuant to Sec.  2.116 
that has not presented problems. There is no foreseeable need to 
specify in the rules how to count days. To do so could require changing 
other rules beyond those proposed for amendment by the NPRM.

Creating Efficiencies

    Comment: One commenter questioned whether speeding up proceedings 
is an advantage. As previous statistics show, well over 90% of TTAB 
cases are withdrawn, settled, or defaulted and do not require a final 
decision. A major advantage of the slower paced proceedings is the time 
provided to permit resolution of the dispute without significant 
financial investment. With this in mind, the proposed rules designed to 
speed up the process are of questionable value.
    Response: Parties may continue to stipulate or request extensions 
or suspensions. The Board will continue its practice of being flexible 
to facilitate concurrent settlement of the Board case and other issues, 
which may involve use matters and other jurisdictions. However, the 
Board also recognizes, as do many parties, that deadlines facilitate 
settlement discussions. Where the parties seek speedier and more cost 
effective resolution, the new rules provide tools to support that goal.

Discovery Sanctions

    Comment: One commenter expressed concern that the Board's proposed 
rules provide no additional sanctions, and thus will not prevent 
parties from abusing discovery.
    Response: Although it is not the Board's practice to award monetary 
sanctions, the Board has available a full range of other sanctions, 
including judgment. See Baron Philippe de Rothschild S.A. v. Styl-Rite 
Optical Mfg. Co., 55 USPQ2d 1848 (TTAB 2000). The Board will continue 
its practice of active case management and the imposition of 
appropriate sanctions.

Withdrawal of Application Without Prejudice

    Comment: Two commenters suggested that applicants be able to 
withdraw an application without consent and without prejudice prior to 
the filing of an answer in oppositions before the Board. According to 
the comments, there are many reasons why a party may prefer not to 
litigate unrelated to the substantive merits of the case. Because of 
the claim-preclusive effect (in subsequent Board cases) of such a 
judgment, well positioned opposers are enabled to take advantage of 
applicants with limited financial resources to force them to surrender 
their rights with no chance to obtain trademark registration if 
circumstances change.
    Response: This subject is outside the scope of the current 
rulemaking. The Office notes this is a longstanding practice, but the 
Office may consider it in a future rulemaking. Currently, applicants 
may abandon an application without prejudice during the publication and 
extension of time periods prior to the filing of a notice of 
opposition. See TBMP section 218.

Judicial Notice of USPTO Records

    Comment: One commenter suggested that the Board take judicial 
notice of USPTO records, and, in particular, allow parties to introduce 
registrations into the record by only the registration number, rather 
than by the inclusion of the full content of the registration in 
document form.
    Response: The Board considered this option but decided not to adopt 
it at this time. The USPTO has an obligation to preserve a complete 
written record of Board proceedings that contains all of the evidence 
presented by the parties in documentary form for a variety of purposes, 
including possible judicial review. See 15 U.S.C. 1071(a)(3) (the 
United States Court of Appeals for the Federal Circuit may request that 
the USPTO forward to the court the original or certified copies of the 
documents in the record). The official record of a Board proceeding 
must be complete, accurate, and reliable, especially because in direct 
appeals to the Federal Circuit the court's review of the Board's 
decision is confined to the four corners of the administrative record. 
Although parties can enter pleaded registration and application numbers 
into ESTTA when they submit a pleading, which automatically populates 
the party caption field in TTABVUE with links to the USPTO's trademark 
file for the specified registration or application number, unlike 
subject applications and registrations which are by rule automatically 
part of the record, the provision of the link to the trademark file 
does not make it of record in the Board proceeding. Moreover, the 
registration and application numbers in the party caption field may or 
may not be comprehensive because some pleaded registration and 
application numbers are only referenced in the attached pleading, which 
does not prepopulate the party caption field in TTABVUE. The burden of 
creating a complete evidentiary record by introducing in documentary 
form information contained in the USPTO's trademark file records is 
most appropriately borne by the party wishing to introduce such 
evidence rather than by the Board. Finally, parties are reminded that 
it is important for them to review their pleaded registrations to make 
sure the owner name and any assignments are up to date. As the USPTO 
plans for enhancements to its electronic systems and databases, user 
requests for a more streamlined approach for introducing USPTO records 
into evidence in a Board proceeding will be considered.

Create Central Online Docket for Dates and Deadlines

    Comment: One commenter requested that the Board, through either 
ESTTA or TTABVUE, provide a central online docket where the parties and 
the Board can access a definitive list of dates and deadlines in inter 
partes matters, which would be updated automatically to reflect the 
current status of the proceeding.
    Response: The suggestion falls outside the scope of the current 
rulemaking. However, this suggestion, which previously has been made in 
other venues for public comment on Board electronic systems, will be 
considered as the USPTO plans for enhancements to its electronic 
systems and databases.

[[Page 69956]]

Discussion of Rule Changes

Interferences and Concurrent Use Proceedings

Preliminary to Interference

    The Office is amending Sec.  2.92 to incorporate a nomenclature 
change from ``Examiner of Trademarks'' to ``examining attorney.''
    Comment: Some commenters do not want this change because 
``examiner'' is used in other parts of the Trademark Rules and 
``examining attorney'' increases the length of briefs.
    Response: While the Trademark Rules continue to use the term 
``examiner'' in some locations, the Board desires consistency within 
its rules of procedure and has retained these amendments.

Adding Party to Interference

    The Office is amending Sec.  2.98 to incorporate a nomenclature 
change from ``examiner'' to ``examining attorney.''

Application To Register as a Concurrent User

    The Office is amending Sec.  2.99(c) and (d) to change 
``notification'' to ``notice of institution'' or ``notice,'' and to 
specify that the notice may be transmitted via email.
    The Office is revising 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 to access the concurrent use proceeding.
    The Office is amending 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 is amending 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 is amending Sec.  2.99(f)(3) to incorporate a 
nomenclature change from ``examiner'' to ``examining attorney.''

Opposition

Filing an Opposition

    The Office is amending 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 is amending Sec.  2.101(b)(1) to require that 
oppositions be filed by the due date in paragraph (c) through ESTTA. 
The amendment codifies the use of electronic filing.
    The Office is amending Sec.  2.101(b)(2) to provide that an 
opposition against an application based on Sections 1 or 44 of the 
Trademark 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 amendment also requires that a paper 
opposition to an application must be accompanied by a Petition to the 
Director under Sec.  2.146 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 is amending Sec.  2.101(b) by adding a new paragraph 
(b)(3) that 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.
    The Office is amending Sec.  2.101(c) by moving the content of 
paragraph (d)(1) to the end of paragraph (c).
    The Office is amending Sec.  2.101(d) by removing paragraphs 
(d)(1), (3), and (4), but retaining the content in paragraph (d)(2) as 
paragraph (d), 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 
revisions are intended to simplify the rules pertaining to insufficient 
fees.
    The Office is amending Sec.  2.101(d)(4) to redesignate 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.
    Comment: One commenter expressed concerns about attorney docketing 
systems in light of the proposed amendments to Sec.  2.101(d) and (e) 
regarding the filing date of an opposition filed electronically versus 
one filed on paper.
    Response: While the filing date of an opposition may depend on the 
method of filing, the filing date never complicates attorney docketing 
systems because the due date for an answer and subsequent proceeding 
deadlines are set by the Board's institution order and are not a 
function of the filing date.

Extension of Time for Filing an Opposition

    The Office is amending 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 is amending Sec.  2.102(a)(1) to require that requests 
to extend the time for filing an opposition be filed through ESTTA by 
the opposition due date in paragraph 2.101(c). The 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 Sections 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 is amending 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, 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 is amending 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 is amending 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 is amending 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 is adding 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.
    Comment: One commenter sought clarification regarding the Office's 
method of notifying an applicant of an extension of time to oppose, 
suggesting email notification in cases where the applicant has 
authorized email communication.
    Response: Currently, the notices to applicants of extensions of 
time to oppose are delivered by postcards that are automatically 
generated. The Office intends to implement email notification of 
applicants who have authorized email communication in the future, but 
the transition requires system enhancements that cannot be made in the 
very near future.

[[Page 69957]]

Contents of Opposition

    The Office is amending 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 
amendment codifies current Office practice.
    The Office is adding 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, the goods and/or services opposed and the grounds 
for opposition are limited to those set forth in the ESTTA cover sheet. 
The amendment conforms with Section 68(c)(3) of the Act, is consistent 
with the amendment to Sec.  2.107(b), and codifies current case law and 
practice.
    Comment: One commenter suggested that the rules state that in 
situations where a party's ESTTA cover sheet is inconsistent with the 
accompanying pleading, the ESTTA cover sheet would be considered 
controlling. Another commenter suggested the opposite proposing that 
the rules specify that in such situations, the pleading would be 
considered controlling.
    Response: The ESTTA cover sheet is considered part of the complete 
opposition pleading. See PPG Industries Inc. v. Guardian Industries 
Corp., 73 USPQ2d 1926, 1928 (TTAB 2005) (``Since ESTTA's inception, the 
Board has viewed the ESTTA filing form and any attachments thereto as 
comprising a single document or paper being filed with the Board''). 
Proposed Sec.  2.104(c) regarding the inability to add goods, services, 
or grounds beyond those set forth in the ESTTA cover sheet pertained 
only to oppositions to applications under Trademark Act section 66(a), 
15 U.S.C. 1141f(a) (Madrid Protocol applications), and the final rule 
clarifies that for such oppositions only, the ESTTA cover sheet 
controls the scope of the opposition. Use of ESTTA has been and 
continues to be mandatory for the filing of either extensions of time 
to oppose or notices of opposition against Madrid Protocol 
applications. The requirement to use ESTTA for such filings enables the 
Office to fulfill its obligation to timely notify the International 
Bureau of the World Intellectual Property Organization (IB) of 
oppositions and the grounds therefor against Madrid Protocol 
applications. So, because the grounds for opposition indicated on the 
ESTTA cover sheet are used for the automatic electronic transmission of 
the requisite notice to the IB, they cannot be changed, even in 
circumstances where the attached complaint differs from the cover 
sheet.
    However, with respect to oppositions against applications under 
Trademark Act sections 1 and 44, 15 U.S.C. 1051 and 1126, the concerns 
with Madrid Protocol applications and notification to the IB do not 
apply. Therefore, the scope of an opposition need not necessarily be 
limited to what is set forth in the ESTTA cover sheet, and the complete 
opposition pleading may inform the scope. Because the primary purpose 
of the pleadings is to give fair notice of the claims asserted, a 
complaint may be amended in accordance with Rule 15 of the Federal 
Rules of Civil Procedure.
    Comment: One commenter suggested clarifications in Sec.  2.104(c) 
to add the prohibition against amending to add joint opposers, found in 
Sec.  2.107(b), to the statement regarding the prohibition against 
adding opposed goods, services, and grounds not in the ESTTA cover 
sheet.
    Response: This suggested addition is not included in the final 
rule, but Sec.  2.104(c) has been revised in light of the comment by 
removing references to amendments for pleadings, which are addressed in 
Sec.  2.107(b). Section 2.104 concerns the contents of the incoming 
notice of opposition and the ESTTA cover sheet, and Sec.  2.104(c) 
codifies the distinction that oppositions to Madrid Protocol 
applications are limited to the goods, services, or grounds set forth 
in the ESTTA cover sheet. By contrast, in oppositions to applications 
under Sections 1 or 44(e) of the Act, the ESTTA cover sheet does not 
control, and the goods, services, or grounds in the accompanying 
statement may be considered. With opposers, regardless of the basis of 
the opposition application, the opposers identified in the ESTTA cover 
sheet determine the fees paid through ESTTA. Any additional opposers 
named only in the accompanying statement, for whom no fees have been 
paid, will not be part of the proceeding, regardless of the filing 
basis of the opposed application. See Syngenta Crop Protection Inc. v. 
Bio-Check LLC, 90 USPQ2d 1112, 1115 n.2 (TTAB 2009) (second opposer 
named in the notice of opposition but not on the ESTTA cover sheet, for 
whom no fee was paid, not party to the proceeding). Therefore, because 
no distinction exists in the treatment of joint opposers omitted from 
the ESTTA cover sheet but included in the accompanying statement, it 
was deemed inappropriate to include a reference to joint opposers in 
Sec.  2.104(c), which is otherwise directed to a distinction for 
oppositions to Madrid Protocol applications.

Notification to Parties of Opposition Proceeding(s)

    The Office is amending 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.
    Comment: One commenter suggested changing ``mailing date of the 
notice'' to ``date the Board sends the notice'' in Sec.  2.105(a) and 
the corresponding rule in Sec.  2.113(a) because the proposed rules 
provide that the Board may serve the notice by email.
    Response: The phrase ``mailing date'' in these rules refers to the 
date that appears on the order, whether generated by ESTTA or manually 
by Board staff, and therefore the Office has retained that phrasing.
    The Office is amending Sec.  2.105(b) and (c) to provide that it 
will effect service of the notice of opposition at the email or 
correspondence address of record for the parties, their attorneys, or 
their domestic representatives.

Answer

    The Office is amending 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 
amendment codifies current Office practice and is consistent with the 
Office's amendment to Sec.  2.114(a).
    The Office is amending Sec.  2.106(b)(1) to require that answers be 
filed through ESTTA, but provides that they may be filed in paper form 
in the event that ESTTA is unavailable due to technical problems or 
when extraordinary circumstances are present. An answer filed on paper 
must be accompanied by a Petition to the Director under Sec.  2.146, 
with the required fees and showing. The amendment codifies the use of 
electronic filing.
    The Office is amending renumbered Sec.  2.106(b)(2) to specify that 
a reply to an affirmative defense shall not be filed.
    The Office is amending renumbered Sec.  2.106(b)(3)(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 is amending renumbered Sec.  2.106(b)(3)(iv) to clarify 
that the Board may sua sponte reset the times for pleading, discovery, 
testimony, briefs, or oral argument.

[[Page 69958]]

Amendment of Pleadings in an Opposition Proceeding

    The Office is amending Sec.  2.107(a) to add that an opposition 
proceeding may not be amended to add a joint opposer.
    The Office is amending 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 amendment conforms with Section 
68(c)(3) of the Act, is consistent with the amendment to Sec.  
2.104(c), and codifies current case law and practice.
    Comment: A few commenters suggested clarifications or exceptions to 
the proposed prohibition in Sec.  2.107 against the addition of joint 
opposers to an opposition proceeding after the close of the time period 
for filing an opposition. For example, commenters proposed that adding 
a joint opposer be permitted for assignees and successors in interest 
to the opposer in appropriate circumstances.
    Response: Although assignees or successors may be joined or 
substituted as party plaintiffs during a proceeding, even when they are 
``joined,'' they are not considered joint opposers. See TBMP section 
512. Rather, they stand in the shoes of the assignor or predecessor. 
The assignor or predecessor may be retained as a party for the limited 
purpose of facilitating discovery, but the assignee is the party in 
interest at that point, and no additional fees are charged to add a 
party, as would be required with a true joint opposer. In view thereof, 
adding the term ``joint opposer'' in the rule does not prohibit the 
joining or substituting of assignees or successors, and therefore the 
commenter's suggestion is not adopted.

Cancellation

Filing a Petition for Cancellation

    The Office is amending 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 is amending Sec.  2.111(c)(1) to require that a petition 
to cancel a registration be filed through ESTTA. The Office is amending 
Sec.  2.111(c)(2) to provide 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 amendment 
also requires that a paper petition to cancel a registration must be 
accompanied by a Petition to the Director under Sec.  2.146, 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 amendments codify the use of electronic filing.
    The Office is deleting Sec.  2.111(c)(3) and adding 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 revisions are intended 
to simplify the rules pertaining to insufficient fees.
    The Office is redesignating Sec.  2.111(c)(4) 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, will be determined in accordance with 
Sec. Sec.  2.195 through 2.198.

Contents of Petition for Cancellation

    The Office is amending 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.
    Comment: Commenters noted concerns with the proposed rule requiring 
that the petition for cancellation include ``to the best of 
petitioner's knowledge,'' contact information for the current owner as 
well as ``any attorney reasonably believed by the petitioner to be a 
possible representative of the owner in matters relating to the 
registration.'' While no commenters objected to providing known contact 
information, many sought clarification or revised rule language to make 
clear that no obligation exists for the petitioner to conduct due 
diligence or any research. Several other commenters objected to this 
requirement when the necessary contact information for service already 
appears in the USPTO database and one commenter objected to providing 
information about possible owners where there is a domestic 
representative in the record.
    Response: The final rule language retains the current requirement 
that the name and address of the current owner must be included, ``to 
the best of petitioner's knowledge.'' This standard has been in the 
rule for some time, and has not created problems for petitioners. Based 
on the objections and concerns expressed by commenters, the proposed 
addition regarding information about possible attorneys is not included 
in the final rule. Plaintiffs are still encouraged to provide 
information about a new owner even if there is a listed domestic 
representative, as the domestic representative of the prior owner may 
not be aware of the change. Also, plaintiffs are encouraged to provide 
current contact information for attorneys or, in the case of 
registrations under Section 66(a) of the Act, current contact 
information for the designated representative for the international 
registration, which may not be in the USPTO database. Providing such 
information facilitates the Board's location and service of the proper 
parties in order to avoid defaults that may subsequently be set aside 
and thus prolong the process.
    The Office is further amending Sec.  2.112(a) to specify that ESTTA 
requires the petitioner to select relevant grounds for cancellation, 
and that the required accompanying statement supports and explains the 
grounds. The amendment codifies current Office practice.

Notification of Cancellation Proceeding

    The Office is amending 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 is amending 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 is further amending Sec.  
2.113(c) to create new paragraphs (c)(1) and (2) for clarity.
    Comment: One commenter inquired why the Office proposed that for 
cancellations filed against registered extensions of protection under 
the Madrid Protocol (Madrid registrations), service would be effected 
on the international registration holder's designated representative 
rather than on the owner, as with other registrations. One commenter 
suggested eliminating the word ``only'' before ``to the domestic 
representative'' in proposed Sec.  2.113(c)(2).
    Response: Upon further review, the Office has withdrawn the 
proposal to serve cancellations filed against Madrid registrations 
differently, and the final rule sets forth consistent procedures for 
the service of cancellations, regardless of the basis of the 
registration. However, for Madrid registrations, the Board will 
endeavor to forward a courtesy copy of the notice to the international 
registration holder's designated representative. Regarding the 
suggested deletion of ``only'' from Sec.  2.113(c)(2), the word has 
been retained to reflect

[[Page 69959]]

that service will be through the domestic representative's address 
rather than the current owner's address. However, the Office retains 
the discretion to send courtesy copies to whomever the Office deems 
appropriate.
    Comment: One commenter inquired about the inconsistency among Sec.  
2.113(c)(1), (2), and (3) where not every section included an explicit 
statement that service of the institution order constitutes service.
    Response: The inconsistency has been eliminated by the deletion of 
Sec.  2.113(c)(3). The Office is amending 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 is amending 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 
revision codifies current Office practice and is consistent with the 
Office's amendment to Sec.  2.106(a).
    The Office is amending Sec.  2.114(b)(1) to require that answers be 
filed through ESTTA, but provides that they may be filed in paper form 
in the event that ESTTA is unavailable due to technical problems or 
when extraordinary circumstances are present. An answer filed on paper 
must be accompanied by a Petition to the Director under Sec.  2.146, 
with the required fees and showing. The amendment codifies the use of 
electronic filing.
    The Office is amending renumbered Sec.  2.114(b)(2) to clarify that 
a reply to an affirmative defense shall not be filed. The Office is 
further amending 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.
    Comment: One commenter questioned why there is a difference between 
the wording in proposed Sec.  2.106(b)(1), now in renumbered Sec.  
2.106(b)(2), which uses ``shall not'' and the wording in Sec.  
2.114(b)(2), which uses ``need not.'' The commenter suggested Sec.  
2.114(b)(2) be amended to ``shall not.''
    Response: The Office has adopted the suggested change.
    The Office is amending renumbered Sec.  2.114(b)(3)(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 is amending renumbered Sec.  2.114(b)(3)(iii) to clarify 
that the Board may sua sponte reset the period for filing an answer to 
a counterclaim. The Office is amending renumbered Sec.  2.114(b)(3)(iv) 
to clarify that the Board may sua sponte reset the times for pleading, 
discovery, testimony, briefs, or oral argument.
    The Office is amending 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 is amending 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 revision codifies current Office 
practice and is consistent with amendments relating to declarations and 
affidavits.
    The Office is amending Sec.  2.116(g) to clarify that the Board's 
standard protective order, which is available on the Office's Web site, 
is automatically applicable throughout all inter partes proceedings, 
subject to specified exceptions. The Office is further amending 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 revisions codify current case law and Office 
practice.
    Comment: One commenter expressed concern with the proposed 
amendment to Sec.  2.116(g) providing that the Board may treat 
information and documents which it determines cannot reasonably be 
considered confidential as not confidential, notwithstanding a party's 
designation. It was suggested that the Board provide prior notice, and 
an opportunity to respond, before reclassifying confidential (and 
highly confidential or trade secret/commercially sensitive) information 
or documents. Further, the commenter requested confirmation that the 
applicable Standard Protective Order is the one currently provided on 
the USPTO Web site.
    Response: The purpose of the rule is to codify existing practice to 
treat improperly designated material that is public information as 
public. This is narrowly applied and only done when necessary to 
articulate the Board decision. See, e.g., Couch/Braunsdorf Affinity, 
Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1461 (TTAB 2014). The 
applicable Standard Protective Order is available on the USPTO Web 
site, TTAB home page, and is clearly labeled with its effective date. 
The prior Standard Protective Order is also available, labeled as 
``retired,'' with a retirement date.

Suspension of Proceedings

    The Office is amending 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 is amending 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 is incorporating the word ``submissions'' throughout 
Sec.  2.119 to codify the use of electronic filing.
    The Office is amending Sec.  2.119(a) to remove the service 
requirements for notices of opposition and petitions to cancel, 
consistent with amendments to Sec. Sec.  2.101(a) and (b) and 2.111(a) 
and (b).
    The Office is amending 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.
    Comment: Commenters generally approved of the proposed requirement 
in Sec.  2.119 that parties in Board proceedings serve each other by 
email unless they agree to an alternative service method, or unless 
technical problems or extraordinary circumstances prevent email 
service. However, some requested clarification about how to address 
service of voluminous documents for which email might be impractical. 
Others sought further guidance as to what types of situations might 
qualify for the exception to email service, even in the absence of 
agreement between the parties on an alternative method.
    Response: The Board encourages parties to agree on an effective 
alternative method of service, such as file hosting services, if email 
is not practical. In cases where the parties anticipate voluminous 
productions, for example, this would be a worthwhile issue to discuss 
at the discovery conference, with Board participation if

[[Page 69960]]

the parties deem it necessary. The parties are reminded that under the 
2015 amendments to the Federal Rules of Civil Procedure there is a 
focus on party cooperation in the discovery process which includes 
service of discovery responses.
    The Office is amending 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 amendment is consistent with both the Patent Rules of 
Practice and the Federal Rules of Civil Procedure.
    The Office is amending 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 is amending 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 are amended to twenty days.
    Comment: Some commenters expressed various concerns that the 
proposed rules call for electronic service of documents between parties 
and remove the additional five days, provided by the previously 
existing Sec.  2.119(c), which were added to deadlines when parties 
choose to serve by first class mail, Priority Mail Express[supreg] and 
overnight courier.
    Response: Under the amended rules, parties may stipulate to any 
type of service, including by mail. The extra five days provided for in 
former Sec.  2.119(c) are already built into the response time period.
    The Office is amending 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 is amending Sec.  2.120(a)(1) to add the use of 
proportionality in process and procedure 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 is amending Sec.  2.120(a)(2) to add headings for 
paragraphs (a)(2)(i) through (v) and to reorganize portions of the text 
for clarity.
    The Office is amending 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 revision codifies current Office practice.
    Comment: One commenter stated with regard to the proposed revisions 
to Sec.  2.120(a)(2)(i) that it would be useful to have an 
Interlocutory Attorney or Administrative Trademark Judge consistently 
available by phone to actively intervene and manage discovery disputes, 
motion practice, and overly contentious proceedings. The commenter also 
stated that it would be useful for the Board to issue short minute 
orders memorializing phone conferences, and to issue orders precluding 
parties from filing papers without prior leave in overly contentious 
cases.
    Response: The Board notes that each of these comments may be 
satisfied under the existing rules.
    The Office is amending 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 is amending 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 amendment codifies some 
of the stipulations successfully used by parties in ACR procedures and 
other proceedings incorporating ACR-type efficiencies. The Office is 
further amending 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 is further amending Sec.  2.120(a)(2)(iv) to 
clarify that extensions of the discovery period granted by the Board 
will be limited.
    Comment: Several commenters expressed concern over the amendment to 
Sec.  2.120(a)(2)(iv) expressly providing that ``limited extensions of 
the discovery period may be granted upon stipulation or the parties 
approved by the Board, upon motion granted by the Board. . . .'' 
Commenters commended the Board's flexibility in its proceedings and 
urged continued flexibility, noting that trademark constituents chose 
to litigate before the Board over district court because of the Board's 
flexibility and that the majority of the Board's cases settle because 
of the Board's flexible schedule and forum, which encourages 
settlement. Among the recommendations made by commenters were: That the 
language be removed; that the Board remain liberal in granting requests 
to extend the discovery period; that, in view of the amendment to Sec.  
2.120(a)(2)(v) requiring all discovery to be served and completed 
during the discovery period, the Board remain flexible in granting 
extensions of the discovery period to allow the parties to be able to 
complete discovery during the discovery period and supplement discovery 
as required by Rule 26(e) of the Federal Rules of Civil Procedure, as 
well as to accommodate settlement, especially in view of the 
acknowledgement that the majority of Board cases settle; and that the 
Board take a more active role in case management and in exercising its 
authority to control the disposition of cases.
    Response: The Board appreciates the commenters' recognition of the 
flexibility provided by its proceedings. The amendment to Sec.  
2.120(a)(2)(iv) reflects existing Board practice, allowing for active 
case management while meeting the needs of the parties. It imposes 
neither a numerical limit on extensions of the discovery period nor a 
stricter standard for granting an extension.
    The Office is amending 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 amendment is intended to alleviate motion 
practice prompted by responses to discovery requests served after 
discovery has closed.
    Comment: Many commenters expressed general support for the 
amendment requiring that all discovery requests must be served early 
enough in the discovery period so that all responses will be due no 
later than the close of the discovery period. One commenter expressed 
its view that the amendment will facilitate the orderly conclusion of 
fact discovery and should reduce the frequency of motions to re-open 
discovery following a party's receipt of a deficient discovery response 
after the close of discovery. Some commenters, reciting that the stated 
intent of the amendment is to alleviate motion practice prompted by 
responses to discovery requests served after discovery has closed, 
sought clarification of how the proposed rule will alleviate motions 
practice, noting that the objective may not be accomplished where a 
party refuses to provide responses and the adversary must bring a 
motion to compel. One commenter inquired how the amended rule will 
impact the parties' ongoing obligation to supplement discovery as

[[Page 69961]]

required under Rule 26(e) of the Federal Rules of Civil Procedure.
    Response: The amendment has no impact on current Board practice 
concerning the ability of parties to seek extensions of the discovery 
period. The Board anticipates that the amendment will alleviate motion 
practice by avoiding the uncertainty created by discovery disputes 
arising after the discovery period has closed where responses have not 
been served. As observed by one commenter, there will be fewer motions 
to reopen discovery based on responses received after discovery closed. 
Similarly, there will be fewer motions to extend the trial schedule 
because a party is awaiting responses to discovery requests after the 
close of the discovery period, or has received allegedly insufficient 
responses after the close of the discovery period. Instead the focus of 
any dispute will be on the sufficiency of the responses at issue. The 
amendment also has no effect on a party's duty to supplement discovery 
as required under Rule 26(e) of the Federal Rules of Civil Procedure.
    Comment: Two comments were submitted concerning the effect of the 
proposed amendment to Sec.  2.120(a)(3).
    Response: The amendment has no impact on current Board practice 
concerning the ability of parties to seek extensions of the discovery 
period. The Board anticipates that the amendment will alleviate motion 
practice by avoiding the uncertainty created by discovery disputes 
arising after the discovery period has closed where responses have not 
been served. Instead, the focus of any dispute will be on the 
sufficiency of the responses at issue.
    The Office is amending 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 is amending the title of Sec.  2.120(c) to clarify that 
it applies to foreign parties within the jurisdiction of the United 
States.
    Comment: Several comments addressed a proposed amendment to Sec.  
2.120(c)(2) requiring that a party must inform every adverse party when 
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. One commenter 
stated that some of its members believed the change would be positive 
and eliminate the need to seek this information by interrogatory. The 
remaining commenters, however, expressed concerns about the proposed 
amendment. The concerns generally related to practicality, particularly 
for large foreign parties; scope, because the proposed amendment was 
not limited to individuals with knowledge relevant to the Board 
proceeding; and privacy, both for parties collecting travel information 
and counsel conveying it to adverse parties.
    Response: In response to the commenters' concerns, the proposed 
addition to Sec.  2.120(c)(2) of the clause ``the party must inform 
every adverse party of such presence'' has been eliminated. The Board 
notes, however, that parties retain the ability to request such 
information through interrogatories.
    The Office is revising Sec.  2.120(d) such that it addresses only 
interrogatories, deleting paragraphs (d)(1) and (2). Provisions 
relating to requests for production are moved to revised Sec.  
2.120(e), and Sec.  2.120(f) through (k) are renumbered in conformance.
    The Office is amending 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 is further amending 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 remove the provision that production will be made at 
the place where the documents and things are usually kept.
    Comment: One commenter asked that the rules reflect the prominence 
of electronic production by requiring production of responsive 
documents, rather than retaining the option to make documents available 
for inspection, and requiring parties to produce documents 
electronically when possible.
    Response: The rule incorporates by reference, and is consistent 
with, Rule 34 of the Federal Rules of Civil Procedure. Parties may 
agree to other manners of production of documents, ESI, and tangible 
things. The Board encourages electronic production whenever possible 
and reminds the parties that production of ESI, which is generally 
limited in Board proceedings, is a subject for discussion at the 
discovery conference. See Frito-Lay North America Inc. v. Princeton 
Vanguard LLC, 100 USPQ2d 1904, 1909 (TTAB 2011).
    The Office is amending renumbered Sec.  2.120(f)(1) to clarify that 
the rule applies to ESI as well as documents and tangible things. The 
Office is further amending 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 
is further amending 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 is further amending Sec.  
2.120(f)(1) to clarify that the request for designation pertains to a 
witness. The Office is further amending Sec.  2.120(f)(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.
    Comment: In the proposed amendment to Sec.  2.120(f)(1), one 
commenter requested an enlargement of the time for filing motions to 
compel initial disclosures from 30 to 60 days.
    Response: Parties have many options for changing the timing of 
initial disclosures and any resulting motions to compel, including 
stipulated extensions, waiver, or suspension for settlement 
discussions. The Board does not discern a benefit to parties by 
extending this deadline further into the 180-day discovery period. The 
amendment to Sec.  2.120(f) facilitates preserving essentially three 
months of the six-month discovery period for service of written 
discovery, in order that responses can be served before the close of 
discovery. Extending the deadline for a motion to compel initial 
disclosures to 60 days from the due date of the disclosure will further 
erode the remaining discovery period.
    Comment: Commenters who addressed the amendments to Sec.  2.120(f) 
and (i) requiring that motions to compel expert testimony disclosures 
be filed prior to the close of discovery and that motions to compel 
discovery and to test the sufficiency of any objection be filed prior 
to the deadline for pre-trial disclosures for the first testimony 
period approved of the changes.
    Response: The changes encourage efficiency in the schedule. The 
parties will focus on discovery during the assigned period and be able 
to resolve any disputes or outstanding discovery matters before trial. 
Once pretrial disclosures are served, the parties will focus on trial 
matters, or settlement, if appropriate.
    The Office is amending 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.
    Comment: One commenter asked that Sec.  2.120(f)(2) be amended to 
clarify whether a case is automatically deemed

[[Page 69962]]

suspended on the filing of a motion for an order to compel initial 
disclosures, expert testimony disclosure, or discovery.
    Response: By comparison, an amendment to Sec.  2.127(d) specifies 
that a case ``is suspended'' when a party timely files a potentially 
dispositive motion. Motions to compel under Sec.  2.120(f)(2), however, 
present different considerations, including the requirement of a 
showing of good-faith effort to resolve the issues presented in the 
motion. In order to retain its discretion in managing discovery, the 
Board does not amend Sec.  2.120(f)(2) commensurately with Sec.  
2.127(d). While suspension in this situation occurs only upon issuance 
of a suspension order, ordinarily such suspension is effective as of 
the date of the filing of the motion to compel.
    Comment: One commenter suggested that the USPTO amend Sec.  
2.120(f) (motion for an order to compel discovery) to include a mirror 
provision (analogous to Rule 37(a)(5)(B) of the Federal Rules of Civil 
Procedure)--i.e., if the motion to compel is denied, the Board may 
issue a protective order. This would make the provisions for motions to 
compel and motions for protective order symmetrical.
    Response: There is no need to issue a protective order as the 
purpose is already served by the order denying the motion to compel.
    The Office is amending renumbered Sec.  2.120(g) to conform to 
Federal Rule of Civil Procedure 26(c).
    The Office is amending renumbered Sec.  2.120(i) to limit the total 
number of requests for admission to 75 and to provide a mechanism for 
objecting to requests exceeding the limitation parallel to Sec.  
2.120(d) and (e).
    Comment: Several commenters addressed the proposed amendments to 
Sec.  2.120(e) and (i) limiting requests for production and admission 
to 75, and the proposed amendment to Sec.  2.120(d) to delete motions 
for leave to serve additional interrogatories beyond the existing limit 
of 75. Some commenters expressed support for the proposed limits, 
stating that they would be sufficient and beneficial in most cases, 
with some requesting that motions for leave to propound more than 75 
requests in unusual cases be permitted. However, several commenters 
objected to the proposed limit on requests for admission. Some 
commenters also asked for clarification regarding how the requests for 
production and admission will be counted under the proposed amendments.
    Response: Requests for admission will be counted reflecting the 
form articulated in Rule 36(a)(2) of the Federal Rules of Civil 
Procedure: ``Each matter must be separately stated.'' Requests for 
production will be counted in the same manner as interrogatories, that 
is, each subpart will count as a separate request. The Board has 
revised the proposed amendments to Sec.  2.120(d), (e), and (i) to 
permit motions to serve more than 75 interrogatories, requests for 
production, and requests for admission on a showing of good cause. With 
respect to the latter, examples that may support a showing of good 
cause include cases involving foreign parties from whom oral discovery 
may be unavailable, or requests intended to narrow the issues in 
dispute in proceedings involving multiple marks and applications or 
registrations with lengthy identifications of goods and services.
    The Office is further amending renumbered Sec.  2.120(i) to permit 
a party to make one comprehensive request for an admission 
authenticating specific documents produced by an adverse party, or 
specifying which of those documents cannot be authenticated.
    Comment: Two comments addressed a proposed amendment to Sec.  
2.120(i) permitting a party to make one comprehensive request for an 
admission authenticating documents produced by an adverse party. One 
commenter favored the proposed amendment, while the other expressed 
concern that it would shift the burden of proof for the right to use 
the document from the recipient to the producing party.
    Response: The proposed amendment has been revised in the final rule 
to clarify that the party propounding a comprehensive request for 
admission must identify each document for which it seeks 
authentication. Specifically, the first sentence of Rule 36(a)(2) of 
the Federal Rules of Civil Procedure, requiring that ``[e]ach matter 
must be separately stated,'' will not apply to this single 
comprehensive request for an admission authenticating documents 
produced by an adverse party.
    The Office is amending 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 is 
further amending 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 is amending 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 is amending 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 is amending 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 is adding new Sec.  
2.120(j)(3) to codify existing practice that parties may not make a 
recording of the conferences referenced in Sec.  2.120(j)(1) and (2).
    Comment: One commenter asked for the reason supporting the proposed 
amendment to Sec.  2.120(j)(3), which states that parties may not make 
a recording of the conferences referenced in Sec.  2.120(j)(1) and (2).
    Response: The amendment codifies existing Board practice, promotes 
candid discussion during conferences, and protects the privacy of the 
parties.
    The Office is amending 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 is amending 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 is amending 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 amendment in renumbered Sec.  
2.120(i) permitting a party to make one comprehensive request for an 
admission authenticating specific documents produced by an adverse 
party.
    The Office is amending 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.

[[Page 69963]]

Assignment of Times for Taking Testimony and Presenting Evidence

    The Office is amending Sec.  2.121(a) to clarify that evidence must 
be presented during a party's testimony period. The Office is further 
amending 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 is amending 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 is further amending 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 is amending 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 amendment codifies the use of electronic 
filing.
    The Office is amending 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 
amendments to Sec.  2.123.
    The Office is further amending 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 amendment codifies current Office practice.
    The Office is further amending 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 amendment aligns the remedy for 
undisclosed testimony by affidavit or declaration with the remedy for 
undisclosed deposition testimony.

Matters in Evidence

    The Office is amending Sec.  2.122(a) to clarify the heading of the 
paragraph and to specify that parties may stipulate to rules of 
evidence for proceedings before the Board. The Office is further 
amending 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 amendments codify 
current Office practice.
    Comment: On commenter viewed the last sentence of Sec.  2.122(a) as 
redundant with Sec.  2.120(k)(7) and suggested retaining the sentence 
in Sec.  2.122(a) and deleting it from Sec.  2.120(k)(7) as 
unnecessary.
    Response: The language in Sec.  2.120(k)(7) is longstanding and the 
Office is retaining it for consistency and to avoid any confusion as to 
the implications of a potential deletion of that language from that 
section.
    The Office is amending Sec.  2.122(b) to clarify the heading of the 
paragraph 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 testimony on behalf of the applicant or 
registrant and that matters asserted in the files of applications and 
registrations are governed by 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.
    Comment: One commenter supported the specification that statements 
in affidavits or declarations submitted in connection with an 
application during ex parte examination are not considered evidence. 
However, one commenter requested clarification as to why Sec.  
2.122(b)(2) excludes statements made in an affidavit or declaration in 
the file of an application or registration from evidence, and requested 
that the rule about specimens not being in evidence unless reintroduced 
be deleted.
    Response: Section 2.122(b) provides that the subject application or 
registration file is automatically of record; however, the existing 
rule also provides that the dates of first use and specimens are not 
evidence. The final rule has been amended to provide that statements 
made in affidavits and declarations in a subject application or 
registration file are not testimony. Matter residing in an application 
or registration file reflects an applicant or registrant having met 
certain requirements or having overcome certain refusals during the ex 
parte prosecution of an application or maintenance of a registration. 
Although part of the record of the proceeding, such material 
constitutes hearsay (except for statements falling under Fed. R. Evid. 
801(d)), further compounded by the fact that the affidavits or 
declarations were not subject to contemporaneous cross-examination. Now 
that testimony by affidavit or declaration is unilaterally available, 
it is necessary to clearly distinguish material residing in an 
application or registration from testimony introduced in the 
proceeding. Self-authenticating exhibits (e.g., printed publications, 
internet printouts with the URL and date) attached to affidavits or 
declarations in applications or registrations may have evidentiary 
value for what they show on their face. The final rule has been further 
amended to clarify that while application and registration materials 
are ``of record,'' they are subject to the Federal Rules of Evidence, 
Federal Rules of Civil Procedure, Title 28 of the United States Code, 
and the provisions of this part of title 37 of the Code of Federal 
Regulations.
    The Office is amending Sec.  2.122(d)(1) to replace ``printout'' 
with ``copy.'' The Office is amending 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 copy of information from the electronic 
database records of the Office showing the current status and title of 
the registration. These amendments codify current case law and Office 
practice.
    Comment: One commenter suggested replacing the word ``printout'' 
with ``download'' for making registrations of record under Sec.  
2.122(d). In addition, the commenter questioned whether the wording 
``current status of and current title to'' in Sec.  2.122(d)(1) and (2) 
has a different meaning from the wording ``current status and title 
of'' in Sec.  2.122(d)(1) and (2).
    Response: Currently, a registration is not considered of record 
when the number is input into the ESTTA form. To make a registration of 
record, a copy of the electronic database records of the Office must be 
attached to the pleading. The word ``download'' does not encompass all 
possible manners in which a copy may be attached. The Board amended 
Sec.  2.122(d) by replacing the word ``printout'' with the word 
``copy'' to broaden the manner in which a registration may be attached 
to include, for example, printouts or downloads. The Office has 
retained the slightly different wording in Sec.  2.122(d)(1) and (2) 
but the wording does not have different meanings.
    The Office is amending 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).
    The Office is adding new Sec.  2.122(e)(2) permitting admission of 
internet

[[Page 69964]]

materials into evidence by notice of reliance and providing 
requirements for their identification. The amendment codifies current 
case law and Office practice.
    The Office is adding 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 amendment codifies current case law and 
Office practice.
    Comment: One commenter suggested that the requirement in Sec.  
2.122(g) to indicate generally the relevance of proffered evidence and 
associate it with one or more issues, specify that the offering party 
should indicate the relevance of each document or group of documents 
within each exhibit, and that the omissions may be cured without 
reopening the testimony period.
    Response: While this suggestion reflects language from Board cases, 
the final rule provides sufficient guidance and accommodates broader 
potential circumstances, to allow for flexibility and not encourage 
motion practice.

Trial Testimony in Inter Partes Cases

    The Office is amending Sec.  2.123(a)(1) to permit submission of 
witness testimony by affidavit or declaration and in conformance with 
the Federal Rules of Evidence, subject to the right of any adverse 
party to take and bear the expense of oral cross-examination of that 
witness, as provided in amendments to Sec.  2.121(e), and to add that 
the offering party must make that witness available. The amendment is 
intended to promote efficient trial procedure.
    Comment: Several commenters approved of the unilateral option, some 
noting that many already submit testimony by affidavit as a form of ACR 
which reduces costs; however, some commenters expressed a desire to be 
able to submit video depositions as testimony.
    Response: The Board has never accepted video testimony and has not 
experienced any detrimental effect. The current online filing system is 
not able to accept video testimony; however, this possibility may be 
considered in subsequent rulemakings as TTAB's online systems are 
enhanced.
    Comment: One commenter expressed concern in light of the preclusive 
effect of Board decisions that affidavit/declaration testimony is less 
like a district court proceeding.
    Response: The general concept of issue preclusion already applies 
to summary judgment decisions in district courts, which are often 
presented on testimony by affidavit or declaration. See 18 Charles Alan 
Wright et al., Fed. Prac. & Proc. Juris. section 4419 (2d ed. 2016). 
The same is true of Board decisions granting summary judgment. In 
addition, the option for stipulated ACR has been available for several 
years and also results in final decisions made on a record based on 
affidavit or declaration testimony. The new procedure retains what the 
Supreme Court focused on in B&B Hardware, Inc. v. Hargis Industries, 
Inc., 135 S. Ct. 1293, 113 USPQ2d 2045 (2015): That testimony be under 
oath and subject to cross-examination. The ability to elect cross-
examination of the witness in the new unilateral procedure maintains 
the fairness and weightiness of Board proceedings.
    Comment: Several commenters expressed concern with the cost-
shifting of cross-examination because it puts the burden on the party 
seeking cross-examination to pay the costs for traveling to the 
adversary's place of business, and that it is generally unfair and 
detrimental.
    Response: Even with oral testimony depositions, the party cross-
examining the witness must pay its own travel expense and its own 
attorney expenses. The proffering party has had and will retain the 
expense of producing its witness. The final rule adds no burden on 
these points. The provision that the party seeking oral cross-
examination must bear the expense of oral cross-examination is intended 
to cover the expense of the court reporter. Any redirect and recross is 
to be taken at the same time, with the party that originally sought 
cross-examination bearing the cost of the court reporter. The goal of 
the final rule is to minimize the ability of a party seeking cross-
examination to thwart the other party's efforts to rein in the cost of 
litigation by opting for testimony by affidavit or declaration.
    Comment: Some commenters requested that the final rule clearly 
provide that affidavit/declaration testimony be duly sworn under 
penalty of perjury and that the testimony and introduction of evidence 
in a testimony affidavit or declaration are subject to the Federal 
Rules of Evidence, i.e., only contain facts admissible in evidence. It 
was noted in particular that Sec.  2.20 allows for statements on 
information and belief. Finally, one commenter queried whether the 
unilateral option for testimony by affidavit or declaration might 
increase the number of cases proceeding through trial and thereby 
impact Board pendency.
    Response: The Office has adopted language in the final rule 
directed to the concerns expressed regarding affidavit testimony by 
explicitly requiring that the affidavit or declaration pursuant to 
Sec.  2.20 be made in conformance with the Federal Rules of Evidence. 
Regarding the concern raised about affidavit or declaration testimony 
being ``duly sworn'' and under penalty of perjury, the testimony 
affidavit is a sworn statement, while the declaration permits a 
comparable alternative unsworn statement. See 28 U.S.C. 1746. Either 
option is under penalty of perjury, and statements in Board proceedings 
are subject to 18 U.S.C. 1001. With regard to concern over the pendency 
of Board proceedings, the experience with ACR proceedings provides some 
insight. Recently, ACR cases, where affidavit or declaration testimony 
is commonly used, accounted for one in six final decisions in fiscal 
year 2014. During this same time period, the Board did not see an 
increase in pendency for final decisions. Even in cases that were not 
counted as ACR cases, the parties frequently agreed to use testimony by 
affidavit or declaration. Despite the increasing use of affidavit or 
declaration testimony, overall pendency has decreased the last four 
fiscal years in a row.
    The Office is further amending 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.
    Comment: Related to the similar issue in Sec.  2.120(c), some 
concern has been expressed that the requirement in Sec.  2.123(a)(2) 
that the proffering party must inform every adverse party when it knows 
its foreign witness will be within the jurisdiction of the United 
States during such party's testimony period, improperly places counsel 
in the position of informing on their clients and incentivizes counsel 
to advise foreign parties not to meet in the United States or not to 
travel to the United States for conferences and other business, and 
that existing procedures for seeking discovery and testimony of foreign 
parties are sufficient.
    Response: In response to the expressed concerns, this requirement 
has been deleted. It is noted that parties may continue to request such 
information during discovery in the form of an interrogatory that is 
subject to the duty to supplement.

[[Page 69965]]

    The Office is amending 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 amendments to Sec.  2.123(a)(1), and to 
clarify that parties may stipulate to any relevant facts.
    The Office is amending 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 is further amending 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 20 days from the date of service of 
the affidavit or declaration and completed within 30 days from the date 
of service of the notice of election.
    The Office is further amending 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 oral cross-examination(s) 
that cannot be completed within a testimony period.
    Comment: Proposed Sec.  2.123(c) provided that the notice to take a 
cross-examination deposition must be served on the adverse party and 
filed with the Board ``within 10 days from the date of service of the 
affidavit or declaration and completed 20 days from the date of service 
of the notice of election.'' One commenter expressed concern that the 
time periods are too short to permit sufficient time to review 
declaration and affidavit testimony and accompanying exhibits, confer 
with clients and witnesses, determine whether a cross-examination 
deposition is necessary, and notice such cross-examination deposition, 
especially where numerous testimony declarations with voluminous 
exhibits are served on the same date and/or at the end of the assigned 
testimony period. The commenter recommended allowing at least 20 days 
from the date of service of the affidavit or declaration testimony to 
serve a notice of a cross-examination testimony deposition, and at 
least 30 days from the date of service of the notice to complete such 
depositions.
    Response: The Office has adopted the suggestion to increase the 
time frames to accommodate scheduling considerations raised by the 
commenter. The notice to take a cross-examination deposition must be 
served on the adverse party and filed with the Board ``within 20 days 
from the date of service of the affidavit or declaration and completed 
30 days from the date of service of the notice of election.''
    The Office is amending Sec.  2.123(e)(1) to specify that a witness 
must be sworn before providing oral testimony. The Office is further 
amending 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 is 
further amending 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 amendments to Sec.  2.123(a)(1).
    The Office is amending 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 is amending Sec.  2.123(e)(3) to delete the provision 
that cross-examination is available on oral depositions, which the 
Office is moving to Sec.  2.123(e)(1), and to insert paragraphs 
(e)(1)(i) and (ii) for clarity.
    The Office is amending Sec.  2.123(e)(4) to specify that the rule 
regarding objections pertains to oral examination.
    The Office is amending Sec.  2.123(e)(5) to clarify that the rule 
regarding witness signature relates to the transcript of an oral 
deposition.
    The Office is amending Sec.  2.123(f)(2) to require that deposition 
transcripts and exhibits shall be filed in electronic form using ESTTA. 
If the nature of an exhibit, such as CDs or DVDs, precludes electronic 
transmission via ESTTA, it shall be submitted by mail. The amendment 
codifies the use of electronic filing.
    The Office is amending 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 is 
amending Sec.  2.123(g)(3) to add that deposition transcripts must 
contain a word index, listing the pages where the words appear in the 
deposition.
    Comment: One commenter requested clarification to the form for 
exhibits attached to affidavit or declaration testimony.
    Response: The Office has not set out in the final rule any specific 
requirements regarding the form of exhibits. The Board and the parties 
have experience with such submissions in connection with summary 
judgment motions and ACR procedures as described in the TBMP at 
sections 528.05(b) and 702.04, which do not specify requirements for 
the form of exhibits, and this has not created problems. Notably, 
documents submitted under an affidavit or declaration but not 
identified therein cannot be considered as exhibits. The parties are 
encouraged to be guided by the form requirements set out for exhibits 
to depositions in Sec.  2.123(g)(2) and the mailing requirements for 
certain exhibits set out in Sec.  2.123(f)(2).
    The Office is removing Sec.  2.123(i), which permits inspection by 
parties and printing by the Office of depositions after they are filed 
in the Office. Section 2.123(j) through (l) is renumbered Sec.  
2.123(i) through (k) in conformance.
    The Office is amending renumbered Sec.  2.123(j) to add that 
objection may be made to receiving in evidence any declaration or 
affidavit. The Office is further amending renumbered Sec.  2.123(j) to 
provide that objections may not be considered until final hearing.

Depositions Upon Written Questions

    The Office is adding 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 is amending 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 is further amending Sec.  
2.124(d)(1) to specify the procedure for cross-examination by written 
questions of a witness who has provided testimony by affidavit or 
declaration.
    The Office is adding 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 is amending Sec.  2.125 to renumber paragraphs (a) 
through (e) as (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 is amending renumbered Sec.  2.125(b) to add a cross-
reference to Sec.  2.124 and to clarify that the paragraph applies to 
testimony depositions, including depositions on written questions.
    The Office is amending renumbered Sec.  2.125(f) to permit sealing 
of a part of an affidavit or declaration.

[[Page 69966]]

Form of Submissions to the Trademark Trial and Appeal Board

    The Office is amending Sec.  2.126 to renumber paragraph (a) as (b) 
and to add new paragraph (a) to require that submissions to the Board 
must be made via ESTTA. The amendment codifies the use of electronic 
filing.
    Comment: Commenters who addressed the proposal to mandate the 
electronic filing of all submissions to the Board via ESTTA generally 
expressed approval, although a few commenters requested ESTTA 
enhancements to increase the permissible file size limits for 
attachments and to allow multimedia submissions. Several commenters 
asked that an exception to the ESTTA filing requirement be made for 
voluminous and multimedia submissions.
    Response: While the Office continually strives to improve its 
electronic systems, the requested ESTTA enhancements cannot be made in 
the near future. The lack of these features, however, need not prevent 
effective electronic filing. ESTTA currently permits a filing to 
include multiple PDF attachments totaling less than 53 MB, which more 
than suffices for the vast majority of filings. ESTTA's ``Tips for 
Attaching Large PDF Files,'' available from a help link within ESTTA, 
provide useful recommendations to minimize attachment file size. If, 
despite following best practices, file size remains a concern, an ESTTA 
submission may be divided into separate filings. While some commenters 
noted that such a procedure is more burdensome for a filer than simply 
submitting via paper, a paper filing would impose a similar or greater 
burden on the Office to receive and route the papers, to scan and 
upload them into the electronic official record, and to store and later 
destroy the papers in accordance with the Office's document retention 
policy. The Office deems it most appropriate that on the rare occasion 
when a single ESTTA filing cannot accommodate all the attachments, the 
effort of separating the attachments into multiple filings should rest 
with the filer. This is because the filer has the greatest opportunity 
to minimize the need for attachments, as well as to ensure that its 
expectations for image quality and color of the submissions are met.
    Turning to multimedia, ESTTA currently is not configured to accept 
such submissions, and the Office does not anticipate an ESTTA 
enhancement to accept multimedia in the near future. Board proceedings 
are conducted exclusively on the written record. While the Office 
acknowledges that some commenters have suggested the Board consider 
accepting video depositions, under the current requirements and 
practice, such submissions are not permitted, thus rendering it 
unnecessary to make an electronic filing exception for that purpose. 
Multimedia files such as specimens for sound or motion marks, having 
been submitted through the Trademark Electronic Application System 
(TEAS), may be included in the electronic official record in ex parte 
appeals. The need to submit multimedia evidence in Board inter partes 
proceedings infrequently arises when a party submits video or audio 
evidence, such as commercials. The Board will continue its current 
practice of accepting DVDs or CDs for this limited purpose, and the 
submission of such exhibits will be exempt from the requirement to file 
using ESTTA. When making such a submission of exhibits, parties are 
advised to include in the accompanying ESTTA filing a ``placeholder'' 
exhibit page to indicate the CD or DVD exhibit, and to mail the CD or 
DVD to the Board. If in the future the Board's electronic filing system 
can be enhanced to allow the submission of multimedia material, similar 
to TEAS, the Board will revisit its acceptance of CDs or DVDs.
    Comment: Numerous commenters expressed concerns about the 
interpretation and implementation of the proposed exception to allow 
paper filings ``when ESTTA is unavailable due to technical problems, or 
when extraordinary circumstances are present.'' Some commenters 
expressed only their desire that such petitions be liberally granted 
and that the Office provide guidance as to the types of circumstances 
that would qualify as extraordinary. Other commenters sought a waiver 
of the usual petition fee for this type of petition. Still others 
objected to the requirement for a petition at all, which they claimed 
creates unwelcome uncertainty as to whether the paper filing would be 
accepted. They contended that the Office should guarantee acceptance of 
a paper filing accompanied merely by a statement of the reason for the 
paper filing.
    Response: To balance the interest in promoting electronic filing 
with the concerns expressed by commenters, the final rule maintains the 
proposed petition requirement for notices of opposition, extensions of 
time to oppose, petitions to cancel, and answers thereto not filed 
through ESTTA, but no longer includes the petition requirement for 
other types of filings not made through ESTTA. Paper pleadings increase 
the burden on the Board because they require more manual processing 
than most other types of paper filings. Therefore, the Board has 
maintained the petition requirement for pleadings and extensions of 
time to oppose to encourage electronic filing from the outset, with the 
expectation that parties who initially file electronically will 
continue to do so throughout the proceeding. For notices of opposition 
and petitions to cancel, if the petition to file on paper is granted, 
the Board's institution orders will address the schedule and deadlines. 
For answers filed on paper, the pendency of the petition to file on 
paper will not act as a stay of proceedings, see Sec.  2.146(g), and 
parties should adhere to the trial schedule. Petitions to file on paper 
are subject to Sec.  2.146, including the requirement for verified 
facts under Sec.  2.146(g). Paper filings not accompanied by the 
requisite petition will not be considered.
    For other paper filings, the final rule requires a showing by 
written explanation accompanying the filing that ESTTA was unavailable 
due to technical problems, or that extraordinary circumstances justify 
the paper filing. Such explanations must include the specific facts 
underlying the inability to file by ESTTA, rather than a mere 
conclusory statement that technical problems or extraordinary 
circumstances prevented the use of ESTTA. No fee is required. In these 
situations, parties should consider any such paper filing accepted 
unless the Board indicates otherwise. Thus, for any filing to which the 
opposing party would respond, for purposes of the response deadline, 
the opposing party should proceed as if the paper submission were 
accepted at the time of its filing and respond accordingly. The Board 
will review the explanation accompanying the paper filing in its 
consideration of the filing, and submissions that do not meet the 
technical problems or extraordinary circumstances showing will not be 
considered.
    The Office intends to continue its flexible, reasonable approach in 
handling the unusual occasions when USPTO technical problems render 
ESTTA unavailable. For example, in situations where verifiable issues 
with USPTO systems prevented electronic filing in the past, the 
Office's practices have included waiving non-statutory deadlines and 
waiving petition fees associated with matters concerning the USPTO's 
technical problems. These and other measures may be taken by the Office 
as appropriate in the future to avoid negatively impacting prospective

[[Page 69967]]

filers in the event of USPTO technical problems. However, the precise 
impact of technical problems varies depending on the specific facts, 
and the Office cannot reasonably provide advance guidance about all 
possibilities.
    The same holds true regarding the types of situations that would 
qualify as extraordinary circumstances. Because the assessment would 
depend on the specific facts, the Office deems it appropriate to 
address particular situations on a case-by-case basis as they arise.
    Comment: Some commenters requested assurances that the paper filing 
exception could apply in the event of technical difficulties on the 
filer's end.
    Response: The exception for extraordinary circumstances may apply 
to situations where no USPTO technical problems exist, but the filer 
experiences an extraordinary situation making ESTTA unavailable to the 
filer. Such extraordinary circumstances might, in appropriate 
situations, include certain types of technical problems at the filer's 
location or with the filer's systems.
    The Office is adding new Sec.  2.126(a)(1) providing that text in 
an electronic submission must be filed in at least 11-point type and 
double-spaced. The amendment is consistent with the amendment to Sec.  
2.126(b)(1). The final rule retains the 11-point type size from the 
existing rule.
    The Office is adding 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 
amendment codifies the use of electronic filing.
    The Office is amending 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 is further amending renumbered Sec.  2.126(b) to require that 
all submissions in paper form except extensions of time to file a 
notice of opposition, notices of opposition, petitions to cancel, or 
answers thereto, must include a written explanation of such technical 
problems or extraordinary circumstances.
    The Office proposed 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. Consistent with Sec.  2.126(a)(1), however, the final rule 
retains the 11-point type size from the existing rule.
    The Office is removing the paragraph previously designated Sec.  
2.126(b).
    The Office is amending 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 is further 
amending Sec.  2.126(c) to clarify that a redacted copy must be 
submitted concurrently for public viewing.

Motions

    The Office is amending Sec.  2.127(a) to reflect that all response 
dates initiated by a service date are twenty days. The Office is 
further amending Sec.  2.127(a) to add that the time for filing a reply 
brief will not be reopened.
    The Office is amending Sec.  2.127(b) to reflect that all response 
dates initiated by a service date are twenty days.
    The Office is amending 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 amendments codify current Office 
practice.
    The Office is amending Sec.  2.127(d) to clarify that a case is 
suspended when a party timely files any potentially dispositive motion.
    The Office is amending 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 is further amending 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 is 
further amending 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 is further amending 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.
    Comment: Commenters who addressed the proposed amendment to Sec.  
2.127(e), requiring that any motion for summary judgment be filed 
before the deadline for pretrial disclosures, approved of the change.
    Response: The change encourages efficiency in the schedule by 
providing that, once the due date for the first pretrial disclosure has 
arrived, the parties are focused on trial, or settlement, and neither 
party will be surprised, while preparing for trial after the due date 
for the first pretrial disclosures, by the filing of a summary judgment 
motion by its adversary.
    The Office is amending 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 be considered at trial as 
trial evidence, which may be supplemented by additional evidence during 
trial. The revision codifies an approach used by parties in proceedings 
incorporating ACR-type efficiencies at trial.
    Comment: One commenter requested clarification that Sec.  
2.127(e)(2) does not require stipulations that summary judgment 
evidence be relied on at trial.
    Response: The final rule states parties may stipulate to reliance 
on summary judgment evidence and does not contemplate requiring such 
stipulations; it only codifies an existing practice. To remove any 
ambiguity on this point, the Board has omitted from the final rule the 
word ``shall,'' which was intended to be directed to the Board.

Briefs at Final Hearing

    The Office is amending 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 amendment codifies 
current case law and practice and is consistent with TBMP section 536.
    The Office is amending 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 amendment codifies current case 
law and practice and is consistent with TBMP section 801.03. The Office 
is further amending 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 is amending Sec.  2.129(a) to clarify that all statutory 
members of the Board may hear oral argument. The Office is further 
amending 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 amendment codifies current Office practices and is 
consistent with the Office's amendments to Sec.  2.142(e)(1).
    Comment: One commenter expressed support for the amendment to Sec.  
2.129(a),

[[Page 69968]]

and recommends that remote participation be granted where counsel, an 
examining attorney, or participating member of the Board is located 100 
miles or more from the oral hearing location.
    Response: The Office will liberally grant remote attendance, but 
retains discretion to account for any technological limitations.
    The Office is amending 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 is amending 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 is amending 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 request remand of the application rather than simply 
notify the Board.

Involuntary Dismissal for Failure To Take Testimony

    The Office is amending 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 is further amending Sec.  2.132(a) to reflect that all 
response dates initiated by a service date are twenty days. The Office 
is further amending Sec.  2.132(a) to clarify that the standard for the 
showing required not to render judgment dismissing the case is 
excusable neglect.
    The Office is amending Sec.  2.132(b) to limit evidence to Office 
records showing the current status and title of a plaintiff's pleaded 
registrations. The Office is further amending Sec.  2.132(b) to reflect 
that all response dates initiated by a service date are twenty days. 
The Office is further amending Sec.  2.132(b) to clarify that the Board 
may decline to render judgment on a motion to dismiss until all 
testimony periods have passed.

Surrender or Voluntary Cancellation of Registration

    The Office is amending Sec.  2.134(b) to clarify that the paragraph 
is applicable to extensions of protection in accordance with the Madrid 
Protocol.

Status of Application or Registration on Termination of Proceeding

    The Office is amending Sec.  2.136 to specify when a proceeding 
will be terminated by the Board and the status of an application or 
registration on termination of an opposition, cancellation, or 
concurrent use proceeding.
    Comment: One commenter expressed concern that the rule change to 
Sec.  2.136 fails to address the problem where a registration issues 
following receipt of a notice of termination of a Board proceeding even 
when the proceeding has been decided adversely to the applicant. It is 
suggested that the proposed rule address this problem by requiring all 
termination orders to specify whether registration is refused.
    Response: While the status entry ``terminated'' is recorded in the 
prosecution history of a proceeding file, the Office does not issue a 
``termination order,'' and final decisions already state if 
registration is refused. The commenter's scenario involves an internal 
processing issue, which the Office is addressing. While this occurs on 
occasion, the Office has a process to cancel an inadvertently issued 
registration. As a logical extension of the amendments clarifying the 
termination process for oppositions and concurrent use proceedings, the 
final rule has been further amended to include clarification of the 
process for cancellation proceedings and the status of registrations on 
termination of the proceedings.

Appeals

Time and Manner of Ex Parte Appeals

    The Office is amending Sec.  2.142 to incorporate a nomenclature 
change from ``examiner'' to ``examining attorney'' and to incorporate 
email as a possible manner of transmission from the examining attorney.
    Comment: The directive in proposed Sec.  2.142(b)(1) and (f)(4) 
that the examining attorney ``shall mail a copy of the brief'' seems 
inconsistent with the Board's move to electronic communications.
    Response: The Trademark Examining Operation currently does not 
require electronic communication; however, examining attorneys mail 
briefs via email when authorized by the applicant. The Office has 
adopted changes to accommodate when examining attorneys communicate 
through email.
    The Office is amending Sec.  2.142(b)(2) to exempt examining 
attorney submissions from the ESTTA requirement because they are filed 
through the Office's internal electronic systems. In view of the 
shorter page limit for ex parte appeal briefs, the Office is also 
deleting the requirement that ex parte briefs contain an alphabetical 
index of cited cases. Finally, the Office is adding 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 is adding 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 amendment is intended to facilitate review of record evidence by 
the applicant, the examining attorney, the Board, and the public.
    Comment: One commenter recommends that the final rule be amended to 
include an example of a preferred citation format.
    Response: To remain flexible to accommodate technological change 
which could prompt different citation forms, the Office has not put 
examples in the final rule. The key is to provide a citation that 
allows the reader to easily find the referenced document. Citation 
format may be by date, description of filing, and page number (e.g., 
October 10, 2010 Office Action p. 2, or 10/10/10 Office Action at 2, or 
10/10/10 Office Action, TSDR 2). Where appropriate, reference to the 
TTABVUE entry and page number, e.g., 1 TTABVUE 2, is also suggested. 
See TBMP sections 801.01 and 1203.01.
    The Office is amending 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 is amending Sec.  2.142(d) to clarify that evidence 
should not be filed with the Board after a notice of appeal is filed. 
The amendment more directly states the prohibition. The Office is 
further amending 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 should submit a request to 
the Board to suspend the appeal and remand the application for further 
examination.
    The Office is amending Sec.  2.142(e)(1) to clarify that all 
statutory members of the Board may hear oral argument. The Office is 
further amending 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 amendment codifies 
current Office practice and is consistent with the Office's amendments 
to Sec.  2.129(a).
    The Office is amending Sec.  2.142(e)(2) to add that a supervisory 
or managing attorney may designate an examining

[[Page 69969]]

attorney to present oral argument and to delete the provision that the 
examining attorney designated must be from the same examining division.
    Comment: One commenter expressed concern that the proposed 
amendment to Sec.  2.142(e)(2), allowing for inter-law office file 
swapping before oral argument, might be potentially prejudicial to 
applicants. The commenter's concern is that decision-making may be more 
circumspect if supervisory or managing attorneys were required to field 
the appeals generated within their own law offices, rather than be 
allowed to forward appeals to other law offices.
    Response: The final rule recognizes the Office's discretion 
regarding staffing of cases, and is necessary to accommodate workflow 
and maintain pendency goals. The Office needs procedures that allow for 
the most efficient use of resources. The Office is amending 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 is amending 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 amendments result in 
existing provisions being moved to a different paragraph of the rule. 
Specifically, provisions regarding appeals to the U.S. Court of Appeals 
for the Federal Circuit, which currently appear in paragraphs (a) and 
(b), are grouped together under paragraph (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 moved from paragraph (c), which concerns civil 
actions, to revised paragraph (b), with the paragraph heading ``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 is removing 
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 replacing 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 is amending 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 amendments codify the use of electronic filing and enhance the 
Office's ability to properly handle applications, registrations, and 
proceedings while on review in federal court.
    Regarding amendments to the requirements for appeals to the Federal 
Circuit, the Office is amending Sec.  2.145(a) to add paragraphs 
(a)(1)-(3). The Office is moving the language currently in Sec.  
2.145(a) to new (a)(1) and amending 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 
is further amending 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. Section 2.145(a)(2) and (3) specifies the 
requirements contained in current 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 is adding 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 is replacing 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 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 is 
replacing 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 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 is amending Sec.  2.145(d) regarding time for appeal or 
civil action by restructuring the paragraphs 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 paragraph 
(d)(4)(i) regarding time computation if a request for reconsideration 
is filed. The Office is moving the time computation provision currently 
in (d)(2) regarding when the last day of time falls on a holiday to new 
paragraph (d)(4)(ii) and omitting the addition of one day to any two-
month time that includes February 28. The Office also is changing 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 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 is amending 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 
amendment is intended to facilitate proper filing of and timely action 
upon extension requests and to avoid premature termination of a Board 
proceeding.
    Comment: One commenter expressed concern with the proposed 
amendment to Sec.  2.145(e)(2) that an appellant from a Board decision 
file requests for an extension of time to seek judicial review both 
with the Office of the General Counsel and through ESTTA with the 
Board. The commenter recommended that the Office allow for service on 
the Board and the Solicitor's Office using the same ESTTA form.
    Response: The need for an appellant to file with the Office of the 
General Counsel and with the Board through ESTTA also pertains to 
notices of appeal

[[Page 69970]]

and civil actions, in addition to extension requests. The concurrent 
filing is intended to facilitate prompt notice of appeals not only to 
the Office's General Counsel, but also on the Board to avoid premature 
termination of proceedings and inadvertent action on subject 
applications or registrations, which is in the best interest of the 
parties. As the Office plans to enhance its electronic systems, it will 
work toward a more streamlined process where a single submission will 
facilitate the necessary prompt notification to all interested areas of 
the office. In the meantime, the relatively minimal additional burden 
of dual notification is justified by its benefits.

General Information and Correspondence in Trademark Cases

Addresses for Trademark Correspondence With the United States Patent 
and Trademark Office

    The Office is amending Sec.  2.190(a) and (c) to reflect a 
nomenclature change from the Assignment Services Division to the 
Assignment Recordation Branch. The Office is amending Sec.  2.190(b) to 
direct that documents in proceedings before the Board be filed through 
ESTTA. The amendment codifies the use of electronic filing.

Business To Be Transacted in Writing

    The Office is amending Sec.  2.191 to direct that documents in 
proceedings before the Board be filed through ESTTA. The amendment 
codifies the use of electronic filing.
    Comment: One commenter suggested that Sec.  2.191 be revised to 
indicate that ESTTA filing is mandatory.
    Response: The Office has adopted the suggestion.

Receipt of Trademark Correspondence

    The Office is amending Sec.  2.195(d)(3) by deleting the option of 
filing notices of ex parte appeal by facsimile. This is a conforming 
amendment to align Sec.  2.195(d)(3) with the final rules requiring 
that all filings with the Board be through ESTTA.

Rulemaking Considerations

    Administrative Procedure Act: The changes in this rulemaking 
involve rules of agency practice and procedure and/or interpretive 
rules. See Nat'l Org. of Veterans' Advocates v. Sec'y 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 Hosp. 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: 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 Regulatory Flexibility Act, 5 
U.S.C. 605(b).
    The 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 rules do not alter any 
substantive criteria used to decide cases.
    The rules will apply to all persons appearing before the Board. 
Applicants for a trademark and other parties to Board proceedings are 
not industry-specific and may consist of individuals, small businesses, 
non-profit organizations, and large corporations. The Office does not 
collect or maintain statistics in Board cases on small- versus large-
entity parties, and this information would be required in order to 
determine the number of small entities that would be affected by the 
rules.
    The burdens, if any, to all entities, including small entities, 
imposed by these rule changes will be minor and consist of relatively 
minor additional responsibilities and procedural requirements on 
parties appearing before the Board. Two possible sources of burden may 
come from the requirement that all submissions 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 impacted entities that do not have the 
necessary equipment and internet service, this may result in additional 
costs to obtain this ability or for some types of filings, to petition 
to file on paper. However, the Office does not anticipate this 
requirement to impact a significant number of entities, as well over 95 
percent of filings are already submitted electronically, and it is 
common practice among parties to use electronic service.
    In most instances the rule changes will lessen the burdens on 
parties, including small entities. For example, the Office is shifting 
away from the parties to itself the obligation to serve notices of 
opposition, petitions for cancellation, and concurrent use proceedings. 
Moreover, the rules provide for email 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 is 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 testimony by 
affidavit or declaration. The 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 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

[[Page 69971]]

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 covered 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 covered because it 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 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 0651-0040 
and 0651-0054. This rule will shift a greater portion of paper filings 
to electronic filings. However, this rulemaking does not add any 
additional information requirements or fees for parties before the 
Board, and therefore, it does not materially change the information 
collection burdens approved under the OMB control numbers 0651-0040 and 
0651-0054.
    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 in 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 is amending 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), 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 may be transmitted via email.
    (d)(1) The Board's notice of institution will include a web link or 
web address to access 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 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 paragraph (b)(1) or (2) of 
this section.

[[Page 69972]]

    (1) An opposition to an application must be filed by the due date 
set forth in paragraph (c) of this section through ESTTA.
    (2) 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. 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, with the fees therefor and the showing 
required under this paragraph. Timeliness of the paper submission will 
be determined in accordance with Sec. Sec.  2.195 through 2.198.
    (3) 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.
    (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:
0
a. Revising paragraphs (a), (b), and (c)(1) and (2);
0
b. Adding a sentence after the first sentence in paragraph (c)(3);
0
c. Adding paragraph (d); and
0
d. Adding and reserving paragraph (e).
    The revisions and additions 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 by the opposition due date set 
forth in Sec.  2.101(c). 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.  2.146, 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) [Reserved]


Sec.  2.103   [Added and Reserved]

0
7. Add and reserve Sec.  2.103.

0
8. Amend Sec.  2.104 by revising paragraph (a) and adding 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 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) Oppositions to applications filed under Section 66(a) of the 
Act are limited to the goods, services and grounds 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. 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

[[Page 69973]]

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 must be filed through ESTTA. In the event that 
ESTTA is unavailable due to technical problems, or when extraordinary 
circumstances are present, an answer may be filed in paper form. An 
answer filed in paper form must be accompanied by a Petition to the 
Director under Sec.  2.146, with the fees therefor and the showing 
required under this paragraph (b).
    (2) 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)(3) 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.
    (3)(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.
    (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.

[[Page 69974]]

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.
    (2) 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. A paper petition to cancel a 
registration must be accompanied by a Petition to the Director under 
Sec.  2.146, with the fees therefor and the showing required under this 
paragraph (c). 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 will be determined in 
accordance with Sec. Sec.  2.195 through 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. 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. 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 at the email or address of 
record for the current owner, 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.
    (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 must be filed through ESTTA. In the event that 
ESTTA is unavailable due to technical problems, or when extraordinary 
circumstances are present, an answer may be filed in paper form. An 
answer filed in paper form must be accompanied by a Petition to the 
Director under Sec.  2.146, with the fees therefor and the showing 
required under this paragraph (b).
    (2) 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

[[Page 69975]]

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 petition, paragraph (b)(3) 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.
    (3)(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 Sec.  2.117 by revising 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 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.
    (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; or
    (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

[[Page 69976]]

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 chapter. 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) of this chapter, or qualified under 
Sec.  11.14(b) of this chapter 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 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

[[Page 69977]]

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, 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 (c)(2) 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, except that the Trademark Trial and 
Appeal Board, in its discretion, may allow additional interrogatories 
upon motion therefor showing good cause, or upon stipulation of the 
parties, approved by the Board. A motion for leave to serve additional 
interrogatories must be filed and granted prior to the service of the 
proposed additional interrogatories and must be accompanied by a copy 
of the interrogatories, if any, which have already been served by the 
moving party, and by a copy of the interrogatories proposed to be 
served. If a party upon which interrogatories have been served believes 
that the number of interrogatories exceeds the limitation specified in 
this paragraph (d), 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, except that the Trademark Trial 
and Appeal Board, in its discretion, may allow additional requests upon 
motion therefor showing good cause, or upon stipulation of the parties, 
approved by the Board. A motion for leave to serve additional requests 
must be filed and granted prior to the service of the proposed 
additional requests and must be accompanied by a copy of the requests, 
if any, which have already been served by the moving party, and by a 
copy of the requests proposed to be served. 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 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

[[Page 69978]]

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, except that the Trademark Trial 
and Appeal Board, in its discretion, may allow additional requests upon 
motion therefor showing good cause, or upon stipulation of the parties, 
approved by the Board. A motion for leave to serve additional requests 
must be filed and granted prior to the service of the proposed 
additional requests and must be accompanied by a copy of the requests, 
if any, which have already been served by the moving party, and by a 
copy of the requests proposed to be served. 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 specific documents, or specifying which of those 
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 questions or issues arising during the

[[Page 69979]]

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 (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) and 
(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 
subsequent remaining periods may remain as set. The resetting of the

[[Page 69980]]

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 paragraph (e) 
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 adding 
paragraph (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. 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 in accordance with paragraph (b)(2) of this section.
    (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 
testimony on behalf of the applicant or registrant. Establishing the 
truth of these or any other matters asserted in the files of these 
applications and registrations shall be governed by 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.
    (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 copy 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 copy 
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

[[Page 69981]]

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 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) and (e)(1) and (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) and (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 and in conformance with the Federal Rules of Evidence, 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.
    (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 20 days from the date of service of the affidavit or declaration 
and completed within 30 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).

[[Page 69982]]

    (ii) A motion to strike the testimony of a witness for lack of 
proper or 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 
nature of an exhibit precludes electronic transmission via ESTTA, it 
shall be submitted by mail by the party taking the deposition, or its 
attorney or other authorized representative.
    (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) and (d)(3) to read as follows:


Sec.  2.124  Depositions upon written questions.

* * * * *
    (b) * * *
    (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 who proposes to 
take the deposition; any party who serves recross questions

[[Page 69983]]

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.  2.123 or Sec.  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 must be made to the Trademark Trial and Appeal 
Board via ESTTA.
    (1) Text in an electronic submission must be filed in at least 11-
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. All submissions in paper form, except the 
extensions of time to file a notice of opposition, the notice of 
opposition, the petition to cancel, or answers thereto (see Sec. Sec.  
2.101(b)(2), 2.102(a)(2), 2.106(b)(1), 2.111(c)(2), and 2.114(b)(1)), 
must include a written explanation of such technical problems or 
extraordinary circumstances. Paper submissions that do not meet the 
showing required under this paragraph (b) will not be considered. A 
paper submission, including exhibits and depositions, must meet the 
following requirements:
    (1) A paper submission must be printed in at least 11-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

[[Page 69984]]

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 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 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) * * *
    (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

[[Page 69985]]

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 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 or registration on termination of 
proceeding.

    After the Board has issued its decision in an opposition, 
cancellation 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, cancellation or concurrent use proceeding, if the judgment 
is not adverse to the applicant or registrant, the subject application 
returns to the status it had before the institution of the proceeding 
and the otherwise appropriate status of the subject registration is 
unaffected by the proceeding. If the judgment is adverse to the 
applicant or registrant, the application stands refused or the 
registration will be cancelled in whole or in part 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 (4) and (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

[[Page 69986]]

attorney, file with the Trademark Trial and Appeal Board a written 
brief answering the brief of appellant and shall email or 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 meet the requirements prescribed in Sec.  2.126, 
except examining attorney submissions need not be filed through ESTTA. 
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) The record in the application should be complete prior to the 
filing of an appeal. Evidence should not be filed with the Board 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 should 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 email or 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.
* * * * *


Sec.  2.143   [Added and Reserved]

0
36. Add and reserve Sec.  2.143.

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.

[[Page 69987]]

    (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 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.  2.127(b), Sec.  2.129(c), or Sec.  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 Branch, 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, and mandates that 
documents in proceedings before the Trademark Trial and Appeal Board be 
filed through ESTTA.

[[Page 69988]]


0
40. Revise Sec.  2.195(d)(3) to read as follows:


Sec.  2.195  Receipt of trademark correspondence.

* * * * *
    (d) * * *
    (3) Correspondence to be filed with the Trademark Trial and Appeal 
Board;
* * * * *

    Dated: September 19, 2016.
Michelle K. Lee,
Under Secretary of Commerce for Intellectual Property and Director, 
United States Patent and Trademark Office.
[FR Doc. 2016-23092 Filed 10-6-16; 8:45 am]
BILLING CODE 3510-16-P