The USPTO Trademark Trial and Appeal Board (TTAB) has adopted new rules. These rules significantly streamline the TTAB process, including allowing more material to be submitted through a notice of reliance and allowing testimony through declaration. They have also changed many procedural aspects and time limits for filings. It is very important to note that these rules will apply to all cases, new and pending, as of January 14, 2017.
The most significant rule changes are as follows:
- Testimony may now be submitted by declaration or affidavit, subject to cross-examination.
- All service on a party shall be by email, unless otherwise stipulated or service by email cannot be made due to technical problems or extraordinary circumstances.
- There is no longer to be five days added to any response period after any type of service, including postal service or overnight courier.
- All fifteen-day response dates initiated by a service date are amended to twenty days.
- All filings in TTAB proceedings must be made electronically via ESTTA, or proof of extraordinary circumstances submitted.
- Discovery must be complete by the end of the discovery period and parties cannot extend answers past the discovery period. This means that written discovery must now be served at least 30 days before the close of discovery or it will be untimely.
- Motions to compel discovery and to test sufficiency of responses to requests for admissions moved from prior to the opening date of plaintiff’s testimony period to prior to plaintiff’s pretrial disclosures (a 45 day difference).
- Motions for summary judgment moved from prior to the opening date of plaintiff’s testimony period to prior to the deadline for the plaintiff's pretrial disclosures for the testimony period (a 45 day difference).
- Limit document requests and requests for admissions to 75 including subparts, similar to the Interrogatory request provisions.
- The Complaint will be served by the Board, Cancellation actions will be served by mail, and Oppositions will be served by email if authorized.
- Notice of reliance provisions may include pleaded registrations and registrations owned by any party, internet materials, documents produced by another party if the party has obtained an admission or stipulation that authenticates the documents.
- Hearings may be attended through videoconference.
- In a TTAB CLE, Board Attorneys clarified how the transition will occur. Any filings or discovery will be governed by the rules in effect as of the service or filing date. For example, if discovery is served prior to January 14, 2017, the old rules apply and it is timely if served prior to the end of the discovery period. However, if served on January 14, 2017, it must be served so that it will be completed by the end of the discovery period. Likewise, testimony may not be submitted by declaration prior to January 14, 2017. If this date falls in the middle of a testimony period, you may take advantage of the new rules by submitting testimony after the rule change date. If this date falls between testimony periods, one party may be operating under the old rules and the other party may be operating under the new rules.
Please keep in mind that the rules change for all cases on January 14, 2017. Please contact us if you have any questions about the changes.
"TTAB Rule Changes You Need To Know" poster
2016 TTAB Rule Changes Timeline
Redline of New TTAB Rules
Federal Register Miscellaneous Changes to the TTAB Rules FINAL RULE
If you have any questions about these resources, please contact Christopher Schulte.