New rules issued by TTAB

The US Patent and Trademark Office's Trademark Trial and Appeal Board (TTAB) has announced and published its new rules. Some changes apply to pending cases; others apply to cases filed on or after August 31 2007. The most significant changes relate to cases filed on or after November 1 2007.

These changes, which track the Federal Rules of Civil Procedure (FRCP), are as follows:

  • the opponent/petitioner must concurrently serve a notice of opposition or petition to cancel directly on the applicant/registrant; and

  • the parties must make mandatory disclosures and conduct an initial pre-discovery conference.

Under the new rules, an opponent must serve its initial pleading directly on the attorney for the applicant of record or, if there is no attorney, the applicant or the applicant's domestic representative as identified on the Trademark Application and Registrations Retrieval (TARR) system. Proof of service must be included with the notice as filed with the TTAB (37 Code of Federal Regulations (CFR) §2(101)). Similarly, a petitioner must serve its initial pleading directly on either the owner of record of the registration or the owner's domestic representative as identified on the TARR system. Proof of service must also be provided with the petition (37 CFR §2(111)).

In all cases, service must be directed to the correspondence address of record listed on the TARR system. If any service copy is returned as undeliverable, the serving party must notify the TTAB within 10 days of receipt of the returned copy. Such notice must include the defendant's new address information, if known. However, the serving party is under no obligation to conduct an investigation. Moreover, service may be accomplished as set forth under 37 CFR §2(119). Personal service is not required.

Generally speaking, the new rules track FRCP 26(a)(1)(A) and (B) to require the identification of witnesses, documents and material containing discoverable information. In this regard, the changes are as follows:

  • Consistent with FRCP 26(a)(2), a party must identify the testifying expert that it plans to use no later than 30 days prior to the close of discovery. A rebuttal expert must be disclosed within 30 days of the adverse party's disclosure - that is, no later than the close of discovery (37 CFR §2(120)(a)(2)). The new rules do not relieve parties from identifying a testifying expert earlier if traditional expert discovery requests are made.

  • The new rules require a partial disclosure of witnesses who may testify and a summary or list of the type of document and material which may be offered during a party's testimony period. These disclosures are due no later than 15 days prior to the opening of each party's testimony period (37 CFR §2(121)(e)).

  • The parties must conduct an initial discovery conference consistent with FRCP 26(f) on or before the opening of discovery. The conference can be conducted in person or by other means. A TTAB professional will participate upon request. Topics to be discussed must include those set forth in FCRP 26(f), including the nature and basis of claims/defences, the possibility of settlement, the publication of initial disclosures and each party's proposed discovery plan (37 CFR §2(120)(a)).

  • A standard protective order will be applied in all cases, including those currently pending before the TTAB. Upon motion or stipulation, the parties may obtain entry of a different order (37 CFR §2(116)(g)).

The new TTAB rules will undoubtedly assist in prompting parties to address discovery and settlement issues much earlier in the process. These features alone should help resolve matters at an earlier stage. However, as to matters that are contested, it remains to be seen whether the new rules will assist in a speedy resolution or simply provide yet other issues for dispute.

Steve Schaetzel and Dana Gross, King & Spalding LLP, Atlanta and New York

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