Wednesday, April 06, 2016

USPTO Proposes Major TTAB Rule Changes

On Monday, April 4th, the USPTO published a Notice of Proposed Rulemaking entitled "Miscellaneous Changes to Trademark Trial and Appeal Board Rules of Practice," Federal Register, Volume 81, No. 64, pp. 19296-19324 [pdf here]. The proposed changes are many and significant. Comments must be received by the USPTO by June 3, 2016, preferably submitted electronically to TTABFRNotices at, or submit comments at the Federal Register website, here.

Among the proposed rule changes are the following (for a more elegant and comprehensive summary, go here):

  • A requirement that all filings in TTAB proceedings be made via ESTTA.
  • A shift of responsibility to the TTAB to serve notices of opposition and petitions for cancellation.
  • A requirement that service of papers between parties be effected by email.
  • Consequent deletion of the 5-days-for-mailing extended response period.
  • Limitation of document requests and admission requests to 75 each.
  • Requirement that all discovery be completed by the close of the discovery period.
  • Option to submit testimony by declaration or affidavit, subject to cross-examination.

This summary touches only some of the high points, and readers will want to read the entire 29 page document.

Read comments and post your comment here.

TTABlog comment: This is the first set of major rule changes since 2007.

Text Copyright John L. Welch 2016.


At 8:46 AM, Anonymous Anonymous said...

Is allowing testimony by affidavit a good idea? TTAB proceedings already seem plagued by bogus evidence.

At 11:07 AM, Anonymous Anonymous said...

This is a bit late for an April Fool’s joke isn’t it?

As the fist poster noted, TTAB proceedings are very much plagued by people filing bogus evidence. Who is going to fly across the country to cross examine someone on a declaration? That's pretty much saying you just have your witness create a declaration that says "t'aint so". We want to give the Board more garbage to try and figure out who is the liar?

The Supreme Court holds that decisions by the TTAB may be given preclusive effect on a U.S. District Court. And these rules are being implemented which 1) require that all discovery be completed by the close of the discovery period; and 2) provide that a party can submit testimony by declaration or affidavit, subject to cross-examination.
I get the point that this is intended to speed up and make less costly TTAB proceedings. But, as more than one person pointed out prior to the last major rules change, most Board proceedings do settle and it’s partly because they are not on a strict time track like some federal courts use. Even then, I have not been in any federal court that refused to extend the Discovery period if the parties agreed and made a simple proposal as to why that should occur. If the point is to “force” more settlements or take cases to decision without a full record, this might help.
More likely, it will help all the game players out there in our bar. It’s bad enough that over my 40 years in this business I have endured many more lawyers who believe that not turning over relevant documents, refusing to answer clear discovery and dragging their feet will cause the other side to simply let it slide and not get the evidence that they asked for and which is relevant. The difference is that when lawyers play these games in federal court, most courts that I have been in say, “try to work it out and if you can’t call me up”. When it’s a magistrate, it usually gets resolved quickly. When it is a judge that administers discovery disputes, it almost always is resolved immediately after a phone call with the statement, “ok, you will produce x, y and z. Any questions”. Response, “Thank you your honor”.
Let’s be frank here, lawyers who play these games at the Board, know that this isn’t going to happen. More than likely they will be required to file a motion, and it will be decided in most cases by an interlocutory attorney who has never tried a case in his or her life and frequently has never been in private practice of law and doesn’t know or feel comfortable quickly deciding who is doing the BS and cutting them off. If you want to change a rule, change it so that in any discovery dispute that the parties can’t resolve, each side submit 1 page saying what they want and why or what they won’t and why and it goes to a judge who calls them up and says “this is what you will do”. We get it that there are no sanctions, but trying to make this simpler will just enable more lousy behavior and games by lawyers who know that they can gin the system.


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