Wednesday, September 26, 2007

Two Significant TTAB Rule Changes Already in Effect

Most of the recent TTAB Rule Changes become effective on November 1, 2007 (see TTAB chart here), but two significant changes are already in place: the Board's Standard Protective Order has been made applicable in all pending cases (except those with a different protective order already in place) (Rule 2.116(g)); and for proceedings commenced on or after August 31st, a pleaded registration may now be placed in evidence by submitting copies of the USPTO electronic database records (TARR and assignment) attached to the party's initial pleading, without the need for furnishing a certified, "status-and-title" copy (Rule 2.122(d)(1)).

In its comments on the new rules, the Board noted that its interlocutory attorneys "have routinely applied the standard order when parties are unable to agree on terms for a protective order and progress in discovery is being thwarted." Universal applicability of the standard order "should reduce some existing motion practice relating to discovery." In any event, the parties "are free to negotiate supplementary terms or substitute an alternative order to which they may agree." The Board believes that in "the vast majority of cases" in which the standard order was imposed, "the parties have complied with it without further modification."

As to submission of registrations into evidence, the Board amended the rule "to conform to existing practice." Existing practice, however, seems to be the Board's "gotcha" rule, as recently exemplified by the ruling in Omega SA v. Oldenberg, Opposition No. 91164080 (July 16, 2007) [not precedential]. (TTABlogged here). Why doesn't the Board just take judicial notice of the information on the PTO's own databases, rather than require the party to submit printouts thereof?

Text Copyright John L. Welch 2007.


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