Rule: Practice and Procedure: Trademark Trial and Appeal Board Rules Miscellaneous Changes

Wednesday,
August 1, 2007
Part III
Department of
Commerce
Patent and Trademark Office
37 CFR Part 2
Miscellaneous Changes to Trademark
Trial and Appeal Board Rules; Final Rule
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42242 Federal Register / Vol. 72, No. 147 / Wednesday, August 1, 2007 / Rules and Regulations
DEPARTMENT OF COMMERCE 272–4299, by mail addressed to (or claim of right to a concurrent use
Trademark Trial and Appeal Board, P.O. registration) required the plaintiff to
Patent and Trademark Office Box 1451, Alexandria, VA, 22313–1451, prepare as many copies of its complaint
attention Gerard F. Rogers, or by (or claim of right, i.e., concurrent use
37 CFR Part 2 facsimile to (571) 273–0059, marked to application) as there would be
[Docket No.: PTO–T–2005–014] the attention of Gerard F. Rogers. defendants in the action. The plaintiff
Information may also be obtained via would then file the requisite copies with
RIN 0651–AB56 the Federal eRulemaking Portal. See the the original, for subsequent forwarding
Federal eRulemaking Portal Web site by the Board to the defendant or
Miscellaneous Changes to Trademark (http://www.regulations.gov) for the full defendants. Occasionally, before the
Trial and Appeal Board Rules text of the notice of proposed rule Board could forward the copies to the
AGENCY: United States Patent and making that preceded this final rule, defendant or defendants, the plaintiff
Trademark Office, Commerce. and the full text of comments received would engage in additional
in response to the notice of proposed correspondence with the Board, to
ACTION: Final rule.
rule making. provide the Board with updated
SUMMARY: The United States Patent and SUPPLEMENTARY INFORMATION: The correspondence address information the
Trademark Office (Office) is amending amended rules will increase the plaintiff had uncovered in its
the Trademark Rules of Practice efficiency of the processes for investigation of the adverse
(trademark rules) to require plaintiffs in commencing inter partes cases, and take applications, registrations or marks,
Trademark Trial and Appeal Board account of the Board’s deployment in particularly in cancellation and
(Board) inter partes proceedings to serve recent years of electronic filing options concurrent use proceedings.
on defendants their complaints or and the increased availability and use of Under the amended trademark rules,
claims; to utilize in Board inter partes facsimile and e-mail as methods of the initiation of a Board proceeding will
proceedings a modified form of the communication between parties be more efficient, because a plaintiff
disclosure practices included in the involved in inter partes cases. Also, the will serve copies directly on defendants.
Federal Rules of Civil Procedure; and to amended rules will increase the Use of a direct service approach
delete the option of making submissions efficiency by which discovery and recognizes that plaintiffs and defendants
to the Board in CD–ROM form. In pretrial information is exchanged often are in contact before the plaintiff
addition, certain amendments are being between parties to inter partes cases, by files its complaint or claim, and also
made to clarify rules, conform the rules adopting a modified form of the recognizes that continuation of direct
to current practice, and correct disclosure practice that is uniformly communication is vital both for
typographical errors or deviations from followed in the federal district courts. promoting possible settlement of claims
standard terminology. These practices have been found in the and for ensuring cooperation and
courts to enhance settlement prospects procedural efficiency in the early stages
DATES: Effective Date: This rule is
and to lead to earlier settlement of cases; of a proceeding.
effective November 1, 2007 except the In recent years, the Board has
amendments for the following rules are and for cases that do not settle,
disclosure has been found to promote deployed its ESTTA system, the
effective August 31, 2007: 2.105(a); Electronic System for Trademark Trials
2.113(a), and removal of (e); 2.116(g); greater exchange of information, leading
to increased procedural fairness and a and Appeals, so that virtually all filings
2.118; 2.119(b)(6); 2.120(d)(1); can be submitted electronically. In
2.122(d)(1); 2.126(a)(6), removal of (b) greater likelihood that cases eventually
determined on their merits are addition, more and more parties to
and redesignation of (c) and (d) as (b) Board proceedings are choosing to
and (c); 2.127(a) and (c); 2.129(a); determined on a fairly created record.
The amendments also include minor utilize fax or e-mail options for
2.133(a) and (b); 2.142(e)(1); 2.173(a); communicating with each other during
modifications necessary to make
and 2.176. an inter partes proceeding, either in lieu
Applicability to pending cases: The corrections or updates to certain rules
and conform those rules to current of using the mail or in combination with
amendment to rule 2.116(g), which use of the mail.
makes the Board standard protective practice.
As of November 1, 2007, the following Under the amended trademark rules,
order applicable in all inter partes cases an opposer or petitioner will file its
notice originally published in the
applies to all cases pending before the complaint with the Board and is
USPTO Official Gazette on January 15,
Board as of the effective date of that 1994, at 1159 TMOG 14, will no longer required to concurrently serve a copy of
amendment, except for cases in which have effect: ‘‘Notice Regarding its complaint (notice of opposition or
the Board’s standard protective order, or Inapplicability of December 1, 1993 petition for cancellation), including any
some other protective order, has already Changes in Federal Rules of Civil exhibits, on the owner of record, or
been applied or approved by the Board. Procedure to TTAB Cases.’’ when applicable the attorney or
The following amendments also apply domestic representative designated in
to all cases pending before the Board as I. Commencement of Proceedings the defending application or
of their effective date: 2.105(a); 2.113(a), Plaintiffs in Board proceedings registration, or in assignment records
and removal of (e); 2.118; 2.119(b)(6); include an opposer that files a notice of regarding the application or registration.
2.120(d)(1); 2.126(a)(6), removal of (b) opposition against an application, a A concurrent use applicant, however,
and redesignation of (c) and (d) as (b) petitioner that files a petition for will not have to serve copies of its
and (c); 2.127(a) and (c); 2.133(a) and cancellation of a registration, and a application on any defending applicant,
(b); 2.173(a); and 2.176. All other concurrent use applicant whose registrant or common law mark owner
amendments to the rules apply in cases concurrent use application sets forth until notification of commencement of
commenced on or after the effective details about the concurrent use the concurrent use proceeding is issued
dates of the respective amendments. applicant’s claim of entitlement to a by the Board, as discussed below.
FOR FURTHER INFORMATION CONTACT: concurrent use registration. The former A plaintiff filing a notice of
Gerard F. Rogers, Trademark Trial and process by which a plaintiff in a Board opposition must serve the owner of the
Appeal Board, by telephone at (571) proceeding filed notice of its complaint application, according to Office records,
Federal Register / Vol. 72, No. 147 / Wednesday, August 1, 2007 / Rules and Regulations 42243
or the attorney or domestic the address for that party listed in Office defendant by e-mail unless the
representative of the owner, if Office records. A plaintiff may wish to serve a defendant has agreed with the plaintiff
records designate that an attorney or courtesy copy on any party the plaintiff to accept such service, notwithstanding
domestic representative should receive believes has an ownership interest in that the defendant may have authorized
correspondence for the owner of the the relevant application or registration the Office to communicate with it by e-
application. A plaintiff filing a petition (e.g., an assignee or survivor of merger mail.
for cancellation must serve the owner of that had not recorded the document of If a service copy is returned to
the registration, according to Office transfer in the Office but was known to plaintiff as undeliverable, plaintiff must
records, or the domestic representative the plaintiff) at the correspondence notify the Board within ten (10) days of
of the owner, if Office records designate address known to the plaintiff. It is receipt of the returned service copy, or
that a domestic representative should generally in a plaintiff’s interest to have of any notice indicating that the service
receive correspondence for the owner of the real party in interest apprised of the copy could not be delivered.
the registration. A plaintiff filing a existence of the Board opposition or Notification to the Board of failure of
petition for cancellation is not expected cancellation proceeding, so that any service may be provided by any means
to serve any attorney who may have judgment eventually obtained will be available for filing pleadings, motions,
represented the registrant before the binding on the correct party. etc., keeping in mind that business with
Office in the prosecution of the As for service obligations of a the Office is generally to be conducted
application that resulted in issuance of concurrent use applicant (i.e., the in writing. Therefore, notice of failure of
the registration. (It is noted, however, plaintiff in a concurrent use service may be provided, for example,
that an attorney who was designated as proceeding), current practice requires by written notice mailed to the Board,
a domestic representative during such party to provide, for forwarding by or by appropriate filing through ESTTA.
prosecution of an application is the Board, as many copies of its A plaintiff is under no obligation to
considered by the Office to continue in application as are necessary to forward search for current correspondence
such role unless the appointment as one to each person or entity listed in the address information for, or investigate
domestic representative was revoked or concurrent use application as an the whereabouts of, any defendant the
a different domestic representative was exception to the concurrent use plaintiff is unable to serve. However,
subsequently appointed.) Whether a applicant’s rights (i.e., excepted parties, notice to the Board of failure of service
plaintiff should serve the owner the defendants in the concurrent use must include, if known, any new
directly, an attorney, or a domestic proceeding). Existing practice requires address information for the defendant
representative depends on what Office the concurrent use applicant to provide whose service copy was returned to the
records provide as the correspondence correspondence address information for plaintiff or reported to be undeliverable.
address. excepted parties, even if the excepted For example, if a service copy returned
To determine the correspondence parties do not own applications or by the United States Postal Service
address of record for an applicant or registrations for marks listed in the because of an expired forwarding order
registrant, the plaintiff must check the TARR system. The amended trademark nonetheless lists the addressee’s new
Trademark Applications and rules continue the requirement that the address, then that must be reported to
Registrations Retrieval (TARR) system at concurrent use applicant provide the Board. Similarly, if the plaintiff
the following web address: http:// correspondence address information for whose attempt at service has been
tarr.uspto.gov. (This system also is excepted parties. The new rules unsuccessful discovers a new address
accessible via links from the Office’s dispense with the requirement that the for a defendant through independent
main Web site.) A plaintiff in an concurrent use applicant file copies of means or voluntary investigation, then it
opposition or cancellation proceeding its claim of right to a concurrent use must report the results of its
need only serve a copy of its notice of registration, i.e., copies of its concurrent investigation in its notice to the Board
opposition or petition for cancellation to use application, for service by the Board of the failure of service. In any case in
the correspondence address of record. on each excepted party. Under the which a plaintiff notifies the Board that
The TARR display of information about amended trademark rules, the a service copy sent to a defendant was
a particular application or registration concurrent use applicant must promptly returned or not delivered, including any
also includes an active link to serve a copy of its application on each case in which the notification includes
assignment (including changes of name) of the excepted parties following its a new address for the defendant
information, if any exists in the Office’s receipt of a notice from the Board that discovered by or reported to the
assignments database. For questions the concurrent use proceeding has been plaintiff, the Board will effect service.
about correspondence address instituted. The Board will, after a notice of
information in TARR, or about All plaintiffs, including concurrent opposition or petition for cancellation is
assignment records and determining the use applicants, bear the same service filed, or after a concurrent use
current owner of an application or obligations. Specifically, they must application is published for opposition
registration, plaintiffs may contact the serve copies by one of the methods and found free of any opposition, send
Board’s customer service representatives provided in Trademark Rule 2.119, 37 notice to all parties to the proceeding,
at the main telephone number for the CFR 2.119. Plaintiffs are neither noting the filing of the complaint, or
Board, listed on the Web site http:// required nor expected to follow the publication of the concurrent use
www.uspto.gov/main/contacts.htm. provisions of Rules 4, 4.1 or 5 of the application. The notice will set the due
A plaintiff in an opposition or Federal Rules of Civil Procedure or, for date for an answer, and the discovery
cancellation is not required to serve a defendants located outside the United and trial schedule. Notification from the
copy of its notice of opposition or States, any international convention Board may be sent by e-mail when a
petition for cancellation to any address regarding service of process. The parties party has provided an e-mail address. A
other than the address listed in the may agree to use e-mail to communicate party providing an e-mail address
TARR system. A plaintiff may wish to with each other and for forwarding of includes a plaintiff providing an e-mail
serve a courtesy copy on any party at service copies. A plaintiff, however, address when filing any paper by
any address the plaintiff may have may not serve its complaint or ESTTA or with a complaint delivered by
reason to believe is more current than concurrent use application on a other means, an applicant that
authorized the Office to communicate reviewed an empirical study and TMOG 70), the Office noted the Board’s
with it by e-mail when it filed its numerous other available articles and adoption of that standard order. The
application, and any registrant whose reports on the subject of the disclosure O.G. notice explained that the standard
registration file record includes such regime followed in the courts. The order was promulgated in response to
authorization. In any proceeding, an empirical study reported that the new many public requests for such an order
undelivered notice from the Board of disclosure regime has been successful in and explained that the standard order
the commencement of a proceeding may the courts: could be adopted by parties as
result in notice by publication in the In general, initial disclosure appears to be published or with modifications. The
Official Gazette, available via the having its intended effects. Among those O.G. notice also noted that the Board
Office’s Web site (http:// attorneys who believed there was an impact, could impose the order in appropriate
www.uspto.gov). the effects were most often of the type cases. In fact, since publication of the
intended by the drafters of the 1993 O.G. notice, it has become quite routine
II. Adoption of a Disclosure Model amendments. Far more attorneys reported for the Board to impose the order in any
In 1993, significant amendments to that initial disclosure decreased litigation inter partes proceeding in which the
the Federal Rules of Civil Procedure expense, time from filing to disposition, the efficient conduct of discovery is
(federal rules) implemented a system amount of discovery, and the number of
discovery disputes than said it increased
hampered by the parties’ inability to
requiring parties litigating in the federal agree on a protective order.
courts to, among other things, disclose them. At the same time, many more attorneys
said initial disclosure increased overall In the disclosure regime established
certain information and/or documents procedural fairness, the fairness of the case by this final rule, the Board’s standard
and things without waiting for outcome, and the prospects of settlement protective order is applicable in all
discovery requests, and to meet and than said it decreased them. cases. The Board’s notice of the
confer to discuss settlement options and
Thomas E. Willging, Donna Stienstra, institution of a proceeding will advise
plans for disclosure and discovery if
John Shapard & Dean Miletich, An parties that the standard protective
settlement were not possible (disclosure
Empirical Study of Discovery and order applies and that it is available on
regime). Individual district courts were
Disclosure Practice Under the 1993 the Office’s Web site or, by request
permitted to opt out of this disclosure
Federal Rule Amendments, 39 B.C.L. made to the Board, in hard copy form.
regime.
In 2000, the federal rules were further Rev. 525, 534–35 (May 1998). The applicability of this standard
amended, eliminating the option for The Office concluded from its review protective order does not make all
individual courts to opt out of the most of the empirical study and other submissions confidential. Parties must
significant changes of the disclosure materials that use of a modified utilize its provisions to protect
regime. disclosure regime in Board proceedings, confidential information. Neither does
By notice issued January 15, 1994 will increase the possibility of parties the applicability of the standard order
(and published in the Official Gazette at settling a Board proceeding and doing preclude a party, when appropriate,
1159 TMOG 14), the Office announced so sooner. In addition, even if parties do from moving for a protective order
the Board would not follow many of the not settle the case, disclosure will under applicable trademark or federal
1993 changes to the federal rules, promote more efficient discovery and rules, when the standard order does not
including the disclosure regime trial, reduce incidents of unfair surprise, cover the extant circumstances or is
established by the amended rules. This and increase the likelihood of fair viewed by the moving party as
notice specifically stated, ‘‘the Office’s disposition of the parties’ claims and providing insufficient protection. As
Public Advisory Committee for defenses. In large part, disclosure will under current practice, parties are free
Trademark Affairs has recommended serve as a substitute for a certain to agree to modify the standard
that incorporation of the [1993] amount of traditional discovery and will protective order. It should be routine for
amendments [related to conferencing provide a more efficient means for parties to discuss possible modification
and disclosure] in Board practice be exchange of information that otherwise in the disclosure/discovery/settlement
deferred until the Office can evaluate would require the parties to serve conference (discovery conference) that
the effects of the amendments on civil traditional discovery requests and is a part of the disclosure regime
actions.’’ responses thereto. established by this final rule. Absent a
The Office subsequently amended the Following many consultations with stipulation to vary the terms of the
Trademark Rules of Practice in 1998. the Trademark Public Advisory standard protective order, approved by
The original notice of amendment Committee (successor to the Public the Board, or an order by the Board
issued September 29, 1998 (and was Advisory Committee for Trademark granting a party’s motion to use an
published at 1214 TMOG 145); and a Affairs) or subcommittees thereof, the alternative order, the parties must abide
correction notice issued October 20, Office proposed adoption of a disclosure by the standard order.
1998 (and was published at 1215 TMOG regime for Board inter partes A. The Schedule for Cases Under the
64). While the Office did not adopt a proceedings, in a Notice of Proposed Disclosure Model
disclosure regime for Board inter partes Rule Making (NPRM) at 71 Fed. Reg.
cases as an element of these 2498 (January 17, 2006). The NPRM and The Board’s notice of the
amendments, the Office noted that the comments received in response thereto commencement of the proceeding
Board would continue to monitor are available for viewing at the http:// (commonly referred to as the institution
recurring procedural issues in Board www.regulations.gov web portal. order) will set forth disclosure,
cases and that in the future the Office One subject related to the adoption of discovery and trial-related deadlines, as
might propose and adopt additional a disclosure regime and covered in the illustrated below.
changes to practice. NPRM is the applicability of the Board’s The institution order will set forth
In accordance with the standard order for protecting specific dates for the various phases in
recommendation of the Public Advisory confidential or otherwise sensitive a case. Since each deadline or phase is
Committee for Trademark Affairs, and to information and documents. By notice measured from the date of the
evaluate the effects of the 1993 and 2000 published in the Office’s Official institution order, the parentheticals
amendments on civil actions, the Office Gazette (O.G.) on June 20, 2000 (1235 explain the total number of days, as
measured from that date, until each of motions to suspend for settlement via ESTTA. If neither party requests
deadline: talks, which are quite common in Board participation of a Board professional in
Due date for an answer—40 days from proceedings. The Board anticipates that the discovery conference, the parties
the date of the institution order. such motions may frequently result must meet on their own, in person or by
(Institution date plus 40 days.) from settlement discussions begun other means, no later than the
Deadline for a disclosure/discovery/ during the required disclosure/ prescribed deadline, and the Board will
settlement conference—30 days from discovery/settlement conference. operate on the assumption that the
the date the answer is due. The length of the discovery period is conference was held by the deadline.
(Institution date plus 70 days.) the same as under current Board The parties do not have to file a
Discovery opens—30 days after the practice, i.e., 180 days. Disclosures will disclosure/discovery plan with the
date the answer is due. be made no later than thirty (30) days Board, following their discovery
(Institution date plus 70 days.) into that period, and the parties will conference, unless they are seeking
Deadline for making initial have another 150 days for any necessary leave by motion or stipulation to alter
disclosures—30 days from the opening additional discovery. The trial schedule, standard deadlines/obligations, or
of the discovery period. with its sixty-day break between unless they were directed to make a
(Institution date plus 100 days.) discovery and trial and thirty-day breaks particular filing by a participating Board
Deadline for disclosure of expert between the respective testimony professional.
testimony—30 days prior to close of periods, is also the same as under There is no Federal Rule 16(b)
discovery. current Board practice. scheduling conference/order. The
(Institution date plus 220 days.) Because disclosure is tied to claims Board’s institution order will already
Discovery closes—180 days from the and defenses, in general, a defendant’s have set a schedule for the case.
opening date of the discovery period. default or the filing of various pleading Disclosure deadlines and obligations
(Institution date plus 250 days.) motions under Federal Rule 12 will may be modified upon stipulation of the
Deadline for plaintiff’s pretrial effectively stay the parties’ obligations parties approved by the Board, or upon
disclosures—15 days prior to the to conference and, subsequently, make motion granted by the Board, or by
opening of plaintiff’s testimony period. initial disclosures. An answer must be order of the Board. If a stipulation or
(Institution date plus 295 days.) filed and issues related to the pleadings motion is denied, dates may remain as
Plaintiff’s 30-day testimony period— resolved before the parties can know the set. Because dates may remain as set if
closes 90 days after the close of extent of claims and defenses and, the Board denies a stipulation or motion
discovery. therefore, be able to discuss the extent to alter dates, it is in the interests of the
(Institution date plus 340 days.) of their initial disclosure obligations, parties to file stipulations or motions
Deadline for defendant’s pretrial plans for discovery, and the possibility promptly after the conference.
disclosures—15 days prior to the of settlement.
opening of defendant’s testimony The Board anticipates it will be liberal B. The Interplay of Disclosure and
in granting extensions or suspensions of Discovery
period.
(Institution date plus 355 days.) time to answer, when requested to A party may not seek discovery
Defendant’s 30-day testimony accommodate settlement talks or through traditional devices until after it
period—closes 60 days after the close of submission of the dispute to an has made its initial disclosures. A party
plaintiff’s testimony period. arbitrator or mediator. However, if a may not move for summary judgment
(Institution date plus 400 days.) motion to extend or suspend for until after it has made its initial
Deadline for plaintiff’s rebuttal settlement talks, arbitration or disclosures, except on grounds of claim
pretrial disclosures—15 days prior to mediation is not filed prior to answer, or issue preclusion or lack of
the opening of plaintiff’s rebuttal then the parties will have to proceed, jurisdiction by the Board.
testimony period. after the answer is filed, to their Initial disclosure obligations should
(Institution date plus 415 days.) discovery conference, one point of be easier to meet in Board cases than in
Plaintiff’s 15-day rebuttal testimony which is to discuss settlement. It is civil actions. One reason is that the
period—closes 45 days from close of unlikely the Board will find good cause Board’s jurisdiction is limited to
defendant’s testimony period. for a motion to extend or suspend for determining the right of a party to
(Institution date plus 445 days.) settlement if the motion is filed after obtain, or retain, a registration.
Under this schedule, discovery answer but prior to the discovery Moreover, the extent of available claims
typically will open after the discovery conference, precisely because the and defenses that may be advanced is
conference, unless the parties defer their discovery conference itself provides an not nearly as broad as in the district
discovery conference to the deadline opportunity to discuss settlement. courts. In addition, the Board recognizes
date, in which case discovery will open The parties’ discovery conference may the impact of other issues relatively
concurrently with the conference. be in person or by other means. A Board unique to Board proceedings. For
The deadline for making initial professional, i.e., an Interlocutory example, a high percentage of
disclosures is similar to that of Federal Attorney or an Administrative applications involved in oppositions are
Rule 26(a)(1), except that disclosure Trademark Judge, will participate in the not based on use of the applied-for mark
under the federal rule is measured from conference upon the request of any in commerce but, rather, on intent to
the actual date of, not the deadline for, party. If the parties propose to meet in use, on a foreign registration or on an
the discovery conference. Because the person, participation by a Board international registration. Further,
Board approach measures the due date professional will be by telephone, and certain precepts that govern analysis of
for disclosures from the opening of be arranged by the parties. A request for issues raised by claims or defenses in
discovery, which typically will occur the participation of a Board professional typical Board cases effectively limit the
after the discovery conference, the may only be made with or after the Board’s focus. For example, in a case
Board approach typically will provide a answer is filed but in no event later than under Section 2(d) of the Trademark
longer period for making disclosures ten (10) days prior to the deadline for Act, 15 U.S.C. 1052(d), the Board
than is provided under the federal rule. conducting the discovery conference. focuses only on goods or services
This will accommodate the possibility The request may be made by phone or recited in identifications, and on the
mark as registered or applied-for, approach, as a deviation from the engage in at least preliminary
irrespective of many actual marketplace regime prescribed by this final rule, discussions on these subjects in their
issues. would be subject to Board approval.) discovery conference. If any party
Federal Rule 26(a)(1) requires initial To emphasize, initial disclosures are retains an expert earlier in the Board
disclosures to obviate the need to use not intended to substitute for all proceeding than the applicable
traditional discovery to obtain ‘‘basic discovery but, rather, to prompt routine disclosure deadline, and any adverse
information’’ about a party’s claims or disclosure of names of potential party has inquired about experts
defenses. (‘‘A major purpose of the witnesses and basic information about through traditional discovery requests,
[1993] revision is to accelerate the documents and things that a party may the party retaining the expert may not
exchange of basic information about the use to support a claim or defense. Any rely on the disclosure deadline to delay
case and to eliminate the paper work adverse party is free to take discovery revealing the expert to such adverse
involved in requesting such on subjects that will undermine a claim party.
information, and the rule should be or defense. Any party disclosing plans to use an
applied in a manner to achieve those Written initial disclosures of facts expert must notify the Board that it has
objectives.’’ Fed. R. Civ. P. 26(a)(1) known by witnesses, if provided by a made the required disclosure. The
advisory committee’s note, 1993 party, for example, pursuant to an Board may then suspend proceedings to
amendments.) However, in Board cases, approved agreement to utilize more allow for discovery limited to experts.
subsections (C) and (D) of Federal Rule extensive disclosure than required by The suspension order may anticipate
26(a)(1) are not relevant and will not this final rule, may be used in support and also provide for discovery regarding
apply. Further, in complying with of or in opposition to a motion for any expert that may subsequently be
subsections (A) and (B), the range of summary judgment and may, at trial, be retained for rebuttal purposes.
individuals with discoverable introduced by notice of reliance. The Office recognizes that there may
information that the disclosing party Disclosed documents, if provided in be cases in which a party may not
may use to support a claim or defense, lieu of descriptions of documents, may decide that it needs to present an expert
and the number of documents, data also be used to support or contest a witness at trial until after the deadline
compilations, and tangible things that a motion for summary judgment but at for expert disclosure. In such cases,
party may use to support a claim or trial they may be introduced by notice disclosure must be made promptly
defense, will be more limited than in of reliance only if otherwise appropriate when the expert is retained and a
district court cases, because of the more for such filing. In essence, initial written motion for leave to present testimony by
limited claims and defenses available in disclosures and initial disclosures of the expert must be filed. Prompt
Board cases. documents will be treated like disclosure after the deadline, however,
Under Federal Rule 26(a)(1), a party is responses to written discovery requests. does not necessarily ensure that the
not obligated to disclose the name of expert’s testimony or evidence will be
C. Expert Disclosure and Pretrial
every witness, document or thing that allowed into the record at trial. The
Disclosure
may have or contain discoverable Board will decide on a case-by-case
information about its claim or defense, A party’s planned use of expert basis how to handle a party’s late
but merely the witnesses, documents witnesses is largely governed by Federal identification of experts.
and things having or containing Rule 26(a)(2). This rule governs Pretrial disclosures are governed by
discoverable ‘‘information that the testifying witnesses, not consulting Federal Rule 26(a)(3), but the Board
disclosing party may use to support its experts who are not expected to testify. does not require pretrial disclosure of
claims or defenses.’’ Further, initial A plaintiff’s plan to use any expert at each document or other exhibit that a
disclosures focus on exchange of ‘‘basic trial must be disclosed no later than party plans to introduce at trial under
information’’ about witnesses and thirty (30) days prior to the close of Rule 26(a)(3)(C). Further, because the
documents and do not substitute for discovery (i.e., ninety (90) days prior to trial schedule in a Board proceeding
taking comprehensive discovery, when the opening of plaintiff’s testimony employs alternating testimony periods
necessary. (For reasons already noted in period). In any case in which a with gaps between them, the due dates
relation to initial disclosures, discovery defendant plans to use an expert at trial for pretrial disclosure of witnesses
also should be more limited in scope in irrespective of whether the plaintiff expected to testify, or who may testify
Board proceedings than in district court plans to do so, the defendant must also if the need arises, will be different for
cases.) make its disclosure no later than thirty each party and will be specified in the
The specificity of information parties (30) days prior to the close of discovery. Board’s institution order. In essence,
will provide to comply with initial A party planning to use an expert solely each party will make its pretrial
disclosure obligations is one of the to contradict or rebut an adverse party’s disclosures under Federal Rules
issues that must be anticipated and expert must disclose such plans within 26(a)(3)(A) and 26(a)(3)(B) fifteen (15)
discussed by the parties during their thirty (30) days of the adverse party’s days prior to its testimony period.
discovery conference. Further, although prior disclosure (i.e., no later than close Witnesses who are expected to or may
this final rule requires fewer, and less of discovery). Federal Rule 26(a)(2) also testify by affidavit, in accordance with
extensive, initial disclosures than those details what information and materials a written stipulation of the parties under
proposed by the NPRM, the parties are must be provided for a party to satisfy Trademark Rule 2.123(b), 37 CFR
free to discuss the option of making its disclosure obligation with respect to 2.123(b), must be disclosed under
more extensive disclosure than is experts. Federal Rule 26(a)(3)(A) along with
required by the rule. For example, Federal Rule 26(a)(2) allows the Board disclosure of witnesses who are
parties could choose to rely on by order, or the parties by stipulation expected to or may testify by giving oral
specified, reciprocal disclosures in lieu approved by the Board, to alter the testimony.
of formal discovery, if they find such an sequence and timing of expert A party may object to improper or
approach more efficient and less costly. disclosures and the extent of the inadequate pretrial disclosures and may
Similarly, parties could choose to forgo information or material that must be move to strike the testimony of a
disclosures and agree to utilize only disclosed to satisfy the disclosure witness for lack of proper pretrial
traditional discovery devices. (Either obligation. The parties are expected to disclosure.
Pretrial disclosure of plans to file [2.101(a), (b) and (d)] [2.111(a) to (c)]
notices of reliance is not required. The Section 2.111(a) currently sets forth
notice of reliance is a device for Section 2.101(a) currently sets forth
that an opposition proceeding is that a cancellation proceeding is
introduction of evidence that is unique commenced by the filing of a timely
to Board proceedings. There are commenced by filing a timely
opposition, together with the required petition for cancellation, together with
established practices covering what can the required fee, in the Office. Section
be introduced by notice of reliance, how fee, in the Office. Section 2.101(a) is
amended to specify that proof of service 2.111(a) is amended to specify that
it must be introduced, and for objecting proof of service on the owner of the
to, or moving to strike, notices or on applicant or its attorney or domestic
representative of record in the USPTO, registration, or the owner’s domestic
material attached thereto. There is less representative of record in the USPTO,
opportunity for surprise or trial by at the correspondence address of record
in the USPTO, must be included with at the correspondence address of record
ambush with notices of reliance because in the USPTO, must be included with
they are most often used to introduce the notice of opposition.
the petition for cancellation and fee.
discovery responses obtained from an Section 2.101(b) currently sets forth Section 2.111(b) currently sets forth
adversary, printed publications in who may file a notice of opposition and who may file a petition for cancellation,
general circulation, or government how the notice must be signed. Section how the petition must be signed and
documents generally available to all 2.101(b) is amended to reflect the new certain provisions regarding when a
parties. A party planning to introduce requirement in § 2.101(a) that an petition may be filed. Section 2.111(b) is
an adverse party’s discovery deposition, opposer include proof of service on the amended to reflect the new requirement
or part thereof, need not disclose such applicant with its notice of opposition. in § 2.111(a) that the petitioner must
plans in order to comply with Federal It also explains who must be served, include with its petition for cancellation
Rule 26(a)(3)(B), which covers specifies that the correspondence proof of service on the owner of the
introduction of depositions in lieu of address of record in the USPTO is to be registration, or domestic representative
testimony under Federal Rule 32(a). used, and specifies the steps opposer of the owner of record in the USPTO, to
III. Removal of Option To Make must take if the service copy of the specify that the correspondence address
Submissions on CD–ROM notice of opposition is returned to of record in the USPTO is to be used,
opposer as undeliverable. and to specify the steps petitioner must
The Office has removed from
Trademark Rule 2.126, 37 CFR 2.126, Section 2.101(d)(4) currently sets take if the service copy of the petition
the option to file submissions in CD– forth that the filing date of an for cancellation is returned to petitioner
ROM form. CD–ROMs have rarely been opposition is the date of its receipt in as undeliverable.
the Office with the required fee. Section Section 2.111(c)(4) currently sets forth
utilized by parties and have presented
2.101(d)(4) is amended to add proof of that the filing date of a petition for
technical problems for the ESTTA/
service on applicant or its attorney or cancellation is the date of its receipt in
TTABIS systems.
domestic representative of record in the the Office with the required fee. Section
IV. Clarification of Rule on Briefing of USPTO, at the correspondence address 2.111(c)(4) is amended to add proof of
Motions of record in the USPTO, to the service on the owner of the registration,
The Office has amended Trademark requirements for receiving a filing date or domestic representative of record in
Rule 2.127, 37 CFR 2.127, to clarify that for the notice of opposition; and to the USPTO, at the correspondence
a table of contents, index of cases, include a clarifying reference to filing address of record in the USPTO, to the
description of record, statement of the by ‘‘Express Mail’’ under § 2.198. requirements for receiving a filing date
issues, recitation of facts, argument and for the petition for cancellation; and to
summary all count against the limit of [2.105(a) and (c)] include a clarifying reference to filing
twenty-five (25) pages for a brief in by ‘‘Express Mail’’ under § 2.198.
Section 2.105(a) currently sets forth
support of a motion or in response to a that the Board will prepare a [2.113(a) and (c)]
motion and the limit of ten (10) pages notification of the filing of a notice of
for a reply brief. Section 2.113(a) currently sets forth
opposition. Section 2.105(a) is amended that the Board will prepare a
Discussion of Specific Rules to cross-reference §§ 2.101 and 2.104 notification of the filing of a petition for
regarding proper form for and proper cancellation. Section 2.113(a) is
Title 37 of the Code of Federal
service of a notice of opposition, and to amended to cross-reference §§ 2.111 and
Regulations, Part 2, is amended as
indicate that the Board may transmit the 2.112 regarding proper form for and
follows:
notification of proceedings via e-mail to proper service of a petition for
[2.99(b) to (d)] any party that has provided an e-mail cancellation, and to indicate that the
Sections 2.99(b) to (d) currently set address. Board may transmit the notification of
forth certain procedures for processing Section 2.105(c) currently sets forth proceedings via e-mail to any party that
an application for registration as a that the Board will forward copies of the has provided an e-mail address.
lawful concurrent user, and for notice of opposition, exhibits and Section 2.113(c) currently sets forth
institution of a concurrent use notification of the proceeding to an that the Board will forward copies of the
proceeding at the Board. Sections applicant. Section 2.105(c), in its petition for cancellation, exhibits and
2.99(b), (c) and (d)(1) are amended to introductory text, is amended to delete notification of the proceeding to the
shift applicant’s time to furnish copies the reference to forwarding of copies of respondent (owner of the registration).
of applicant’s application, specimens the notice of opposition and exhibits by Section 2.113(c) is amended to delete
and drawing until after the Board’s the Board, and to reflect the the reference to forwarding of copies of
notification of the proceeding; and to amendments to § 2.101 that now require the petition for cancellation and
indicate that the Office may transmit the the opposer to serve the notice of exhibits by the Board, and to reflect the
notification of proceedings via e-mail to opposition and exhibits directly on the amendments to § 2.111 that now require
any party that has provided an e-mail applicant, attorney or domestic the petitioner to serve the petition for
address. representative. cancellation and exhibits directly on the
owner of the registration, attorney or serve a paper on an adverse party. from whom discovery is sought may
domestic representative. Section 2.119(b) is amended to add seek a protective order from the Board.
paragraph (6), which will allow parties Section 2.120(f) is amended to make
[2.113(e)] [remove and reserve]
by agreement to meet their service provisions regarding a motion for a
Section 2.113(e) currently sets forth obligations by utilizing fax or e-mail. protective order applicable to discovery
that the Board may allow a petitioner requests and required initial
time to correct an informality in a [2.120(a), (d) through (j)]
disclosures.
defective petition for cancellation. Section 2.120(a) currently sets forth Section 2.120(g) currently sets forth
Section 2.113 is amended to remove and various general provisions regarding provisions regarding how and when a
reserve paragraph (e) to conform the discovery in Board inter partes party may move for entry of sanctions
rule to the existing practice whereby the trademark proceedings, including the for failure of an adverse party to provide
Board no longer advises petitioners of extent to which the Federal Rules of discovery or comply with an order of
defects in petitions for cancellation. Civil Procedure are applicable, and the the Board relating to discovery. Section
timing and sequence of the discovery 2.120(g), in paragraph (1) is amended to
[2.116(g)] [add] period and various discovery activities. make its provisions applicable to Board
Section 2.116 currently sets forth an Section 2.120(a) is amended to separate orders relating to disclosures and to
explanation of the applicability of the it into three paragraphs. Paragraph (1) provide a deadline for filing a motion
Federal Rules of Civil Procedure in discusses the applicability of the federal for sanctions for a party’s failure to
Board inter partes trademark rules provisions relating to a conference participate in a discovery conference.
proceedings, and equates particular of the parties to discuss disclosures, Section 2.120(h)(2) currently sets
terms used in the Federal Rules to terms discovery and possible settlement, and forth provisions regarding motions to
used in inter partes trademark the requirements for automatic test the sufficiency of responses to
proceedings. Section 2.116 is amended disclosures. Paragraph (1) also explains requests for admissions. Section
to add new paragraph (g). Section that the Board will, by order, specify the 2.120(h)(2) is amended to state that
2.116(g) provides that the Board’s dates for conferencing, disclosures and filing a motion to test the sufficiency of
standard protective order, available via discovery. Paragraph (2) provides more responses to requests for admissions
the Office’s Web site or upon request specific information regarding the shall not toll the time for a party to
made to the Board, is applicable to all deadlines or due dates for conferencing, comply with disclosure obligations, to
inter partes trademark proceedings, disclosures, and discovery; and explains respond to outstanding discovery
unless the parties agree to, and the that the parties by stipulation approved requests, or to appear for a noticed
Board approves, an alternative by the Board, or a party by motion deposition.
protective order, or unless a motion by granted by the Board, may seek to reset Section 2.120(i) currently sets forth
a party to enter a specific protective various deadlines or due dates or to provisions regarding the availability and
order is granted by the Board. alter their disclosure obligations. use of telephone conferences and the
Paragraph (3) provides that a party must possibility that parties may have to meet
[2.118] make its initial disclosures prior to at the Board for a pretrial conference.
Section 2.118 currently sets forth that seeking discovery, provides a deadline Section 2.120(i) is amended to clarify
the Office may provide notice of a for taking discovery depositions and for language used in paragraph (i)(1), to
proceeding by publication in the serving various types of discovery conform titles used in paragraph (i)(2) to
Official Gazette, when a notice of a requests, and for serving responses to existing titles, and to specify that the
proceeding mailed to a registrant is discovery requests, and provides that existing provision through which the
returned to the Office as undeliverable. the parties by stipulation approved by Board may require parties to attend a
Section 2.118 is amended to also allow the Board, or a party by motion granted conference at the Board’s offices can
for notice by publication when a notice by the Board, may seek to alter the involve discovery or disclosure issues.
mailed to an applicant is returned as obligation to make initial disclosures Section 2.120(j) currently sets forth
undeliverable. prior to seeking discovery or to reset the provisions governing the use of
deadlines relating to discovery. discovery depositions and discovery
[2.119(a) and (b)] Section 2.120(d)(1) currently sets responses by the deposing or inquiring
Section 2.119(a) currently sets forth forth the limit on the number of party. Section 2.120(j), in paragraphs (3)
provisions regarding proof of service interrogatories a party may serve, means and (5) through (8), is amended to
requirements for papers filed in Board by which the parties or a party may seek provide that written disclosures and
inter partes trademark proceedings, but leave to exceed the limit, and disclosed documents shall be treated in
specifies that proof of service is not procedures for either objecting to essentially the same manner as
required for certain papers that the interrogatories alleged to be in excess of information and documents obtained
Office serves. Section 2.119(a) is the limit or seeking to compel through discovery requests; and to
amended by striking out the list of responses. Section 2.120(d)(1) is remove a reference to past Board
exceptions to reflect amendments to amended to clarify that a motion or practice whereby filings related to
other sections that now require stipulation of the parties to allow discovery that should not have been
opposers, petitioners and concurrent interrogatories in excess of the limit filed with the Board were returned to
use applicants to serve papers requires approval of the Board. the parties.
previously served by the Office. Section Section 2.120(e) currently sets forth
2.119(a) also is amended to change various provisions regarding filing and [2.121(a) and (d)]
‘‘Patent and Trademark Office’’ to required support for motions to compel. Section 2.121(a) currently sets forth
‘‘United States Patent and Trademark Section 2.120(e) is amended to make the process by which the Board issues
Office,’’ and to make the singular provisions regarding a motion to compel a trial order setting various deadlines,
‘‘notice of appeal’’ the plural ‘‘notices of applicable to discovery and initial and and provisions for resetting deadlines
appeal.’’ expert disclosures. by stipulation or motion. Section
Section 2.119(b) currently sets forth Section 2.120(f) currently sets forth 2.121(a) is amended to state that
the permissible means for a party to various provisions by which a party deadlines for pretrial disclosures will be
included in the Board’s trial order, that Section 2.127(e) currently sets forth 27, 2006), and posted that notice on the
provisions for resetting dates apply to provisions regarding filing and briefing Office’s Web site and at http://
pretrial disclosures and testimony motions for summary judgment. Section www.regulations.gov. All told, the
period dates, and to delete (and reserve) 2.127(e) is amended to provide that a Office received comments from the
paragraph 2. party generally may not file a motion for American Bar Association Section of
Section 2.121(d) currently sets forth summary judgment before it has made Intellectual Property Law (ABA–IPL),
how parties should file stipulations its initial disclosures; and to provide American Intellectual Property Law
resetting testimony periods. Section that a party may submit written Association (AIPLA), the Intellectual
2.121(d) is amended to account for disclosures and disclosed documents Property Owners Association (IPO), the
stipulations resetting pretrial disclosure when briefing a motion for summary International Trademark Association
deadlines and testimony periods. judgment. (INTA), the New York State Bar
[2.121(e)] [add] Association Intellectual Property Law
[2.129(a)]
Section (NYSBA–IPL), three businesses,
Section 2.121(e) is added to explain Section 2.129(a) is amended to eleven attorneys in their individual
what is required of a party when it conform titles used in the section to capacities, and eight law firms. In
makes its pretrial disclosures. current titles. addition, ABA–IPL, AIPLA, IPO and
[2.122(d)] [2.133(a) and (b)] INTA, while maintaining their separate
Section 2.122(d), in paragraph (1), comments, also submitted consensus
Sections 2.133(a) and (b) currently set views on some subjects of the proposed
currently sets forth provisions whereby forth provisions regarding the
a party in position of opposer or rules. A number of rule amendments
amendment of an application or suggested in the comments, though
petitioner may make its registration(s) of registration involved in an inter partes
record with its pleading. Section meritorious, cannot be adopted at this
trademark proceeding. Sections 2.133(a) time because they are outside the scope
2.122(d), in paragraph (1), is amended to and (b) are amended to conform the
conform to existing practice by of the present rule making. Virtually
sections to current Office practice. every proposal received at least some
removing the requirement for a party in
position of opposer or petitioner to file [2.142(e)] support. Many proposals, however,
two copies when making a pleaded prompted either criticism or requests for
Section 2.142(e) is amended to clarification. Finally, many who
registration of record with its pleading, conform titles used in the section to
and to allow the party to rely on provided comments also offered
current titles. alternatives to promote the stated goals
printouts from Office electronic
database records establishing status and [2.173(a)] of the proposed rules. The comments
title of a registration. Section 2.173(a) currently sets forth and the Office’s responses to the
provisions regarding amendment of a comments follow:
[2.123(e)] Comments subject 1 (Service by
registration involved in an inter partes
Section 2.123(e) currently sets forth trademark proceeding. Section 2.173(a) Plaintiffs): Many comments addressed
provisions regarding the examination of is amended to conform the provisions in the Office’s proposal to have plaintiffs
witnesses. the section to current Office practice. serve on defendants copies of
Section 2.123(e), in paragraph (3), is complaints or, in the case of a
amended to provide that a party may [2.176] concurrent use applicant, its claim of
object to improper or inadequate pretrial Section 2.176 currently sets forth right to a registration. Many comments
disclosures and may move to strike the provisions regarding amendment of a stated no objection in principle to a
testimony of a witness for lack of proper registration involved in an inter partes service requirement, but sought
pretrial disclosure. trademark proceeding. Section 2.176 is clarification of the type of service that
[2.126(a)] amended to conform the provisions in would be sufficient and argued that
the section to current Office practice. personal service should not be required.
Section 2.126(a) currently sets forth Response to comments: The Office Most comments addressing service also
provisions regarding the filing of published a Notice of Proposed Rule sought clarification of whether a
submissions on paper, and their related Making (NPRM or proposed rule) in the plaintiff would have any duty to
exhibits. Section 2.126(a), in paragraph Federal Register at 71 FR 2498 (Jan. 17, investigate ownership of a mark,
(6), is amended to reflect the removal of 2006), in the Official Gazette at 1303 application, or registration, and argued
§ 2.126(b). TMOG 58 (February 14, 2006), and that there should be no such duty
[2.126(b)] [remove and reserve] posted the notice on the Office’s Web beyond reference to Office records.
site (http://www.uspto.gov) and at Many also sought clarification of what
Section 2.126(b) currently allows a
http://www.regulations.gov. The was meant by the phrase
party to make submissions on CD–ROM.
comment period was originally set to ‘‘correspondence address of record.’’
This section is deleted and reserved.
close on March 20, 2006. Six comments Response: The Office is, in this final
[2.127(a), (c) and (e)] requested only an extension of the rule, proceeding with a requirement that
Section 2.127(a) currently sets forth comment period and/or a public plaintiffs in inter partes proceedings
provisions regarding the briefing of hearing. Numerous others included serve on defendants copies of
motions. specific comments but also requested an complaints or claims of right to a
Section 2.127(a) is amended to clarify extended comment period and/or a concurrent use registration on
certain provisions relating to briefing of public hearing. As a result of the many defendants. In the affected rules and in
motions and to conform them to existing requests for an extension and/or the Supplementary Information portion
practice. hearing, the USPTO published a notice of this notice, the Office has clarified
Section 2.127(c) is amended to reopening the comment period until the meaning of correspondence address
conform titles used in the section to May 4, 2006, i.e., forty-five (45) days of record. It further clarifies that a
current titles and to correct a beyond the original deadline, in the plaintiff has no duty to investigate other
typographical error. Federal Register at 71 FR 15097 (March than to refer to Office records, that
personal service is not required, and service; but if the returned service copy address, however, is a discretionary
that all that is required is service and includes a new address for the matter to be decided on a case-by-case
proof of service pursuant to § 2.119. defendant or if the plaintiff voluntarily basis. As for agreed use by parties of e-
Comments subject 2 (Service of investigates and uncovers a new mail or fax for forwarding of service
Additional Copies by Plaintiffs): Many address, then this information must be copies, the Office confirms that
comments argued against the included in the report of the failure of § 2.119(c) would not apply to service by
requirement in the proposed rules that service. There is no obligation on the electronic transmission (e-mail or fax)
a plaintiff serve additional copies of its plaintiff to serve a defendant at any new under § 2.119(b)(6).
complaint or claim of right to a address. There are no specific Comments subject 5 (Universal
concurrent use registration on parties obligations regarding how the plaintiff applicability of the Board’s Standard
the plaintiff might have reason to informs the Board that a service copy Protective Order): Numerous comments
believe had an ownership interest in a has been returned. The plaintiff can addressed the proposal to make the
mark, application, or registration, even inform the Board in any manner that it Board’s Standard Protective Order
if not shown by Office records to have might otherwise use to communicate applicable in all inter partes
such an interest. One comment with the Board, as specified in §§ 2.126 proceedings. Many of these comments
suggested that a petitioner should serve and 2.191. The ten (10) days within argued that the standard order does not
a copy of its petition for cancellation on which a party receiving a returned provide necessary protections in all
the attorney, if any, that prosecuted the service copy should notify the Board of possible circumstances. Some
application resulting in issuance of a the return is measured from the date of comments noted that the standard order
registration; but most comments argued delivery to the serving party of the might not provide necessary protection
against such a practice as a burden on returned service copy. The Office has when dealing with a pro se party, or
the attorney, who may no longer decided not to extend that time period after the conclusion of the proceeding.
represent the client. to fifteen (15) days. The Board will One comment noted that the Board has
Response: The Office recognizes that effect service on the defendant whose no ability to issue injunctions or
a plaintiff may conduct independent service copy was returned, utilizing the contempt rulings and argued that
investigations prior to commencing a newer correspondence address possible entry of a sanction in a Board
proceeding and may thereby discover an information the plaintiff has obtained, if proceeding or a disciplinary action
ownership interest in a party not any, or information the Board may against an attorney would not provide
reflected in Office records, or a more obtain through its own investigation. In immediate protection or remedy
current address for a prospective the Board order effecting service, the economic harm. Some of the comments
defendant. The Office did not propose Board will clarify what address is to be concerned with post-proceeding issues
to require any investigation prior to used for service thereafter, and amend, argued that the Board should make the
commencement of a proceeding, but if necessary, any deadlines or dates that standard protective order applicable
only recognized that such investigations were set in the institution order. If a during and after the proceeding, or
do occur. The Office intended by this current correspondence address for the should require the parties to sign the
proposal only to enhance the prospects defendant cannot be obtained, then the protective order, so as to create a
of having any real party in interest Board may effect service by publication contract that may provide a cause of
joined as a defendant and any in the Official Gazette. Service by action after the conclusion of the
subsequent judgment be binding on the publication will include a web address proceeding if protected information was
real party in interest. The Office has that will allow the defendant to view revealed by a party after conclusion of
withdrawn this proposal and retained the complaint or concurrent use a proceeding.
only a requirement that the plaintiff application through the Office’s Web Numerous comments argued that the
serve the defendant or defendants site. Board should allow parties time to
revealed by reference to Office records, Comments subject 4 (Correspondence negotiate a protective order of their own
at the correspondence address(es) of by e-mail): One comment discussed the before imposing the standard order.
record. prospective expanded use of e-mail by Some comments indicated that if the
Comments subject 3 (Informing the the Board when issuing notices that Board was to require fewer initial
Board of Returned Service Copies): proceedings have been instituted. disclosures and more closely follow
Several comments sought clarification Specifically, the comment proposed that what is required under Federal Rule
of the proposed requirement that a the rules explaining that the Board may 26(a)(1), then the asserted deficiencies
plaintiff inform the Board of any return use e-mail to notify parties of the in the standard protective order would
to the plaintiff of an undeliverable commencement of a proceeding be be less problematic for parties. One
service copy of its complaint or claim of amended to allow for forwarding of comment among this latter group
right to a concurrent use registration. In notices to multiple e-mail addresses for suggested that the standard order would
particular, these comments sought a party. Another comment focused on not need to be universally applied if
clarification of the plaintiff’s obligations use of e-mail by parties when initial disclosures were lessened,
when the service copy is returned. One forwarding service copies, and sought apparently on the theory that limited
comment, focusing on the proposed confirmation that service by e-mail does disclosures would not likely involve
requirement that the Board be notified not result in an additional five (5) days any information in need of protection.
‘‘within 10 days’’ of a returned service to respond to the served paper, as is the Response: The standard protective
copy, sought clarification as to the event case with other means of service, order was created ‘‘in response to
that would start the count and also pursuant to § 2.119(c). requests from parties involved in
sought five additional days. Response: The proposed rules [Board] cases’’ and was first published
Response: The Office is proceeding specifying that the Board may use e- in the Official Gazette on June 20, 2000,
with the requirement and is providing mail to notify a party of a proceeding at 1235 TMOG 70. The announcement
the requested clarifications in the can be read to allow the Board to utilize explained that parties could agree to use
Supplementary Information section of more than one e-mail address without the standard order or could use it as a
this notice. There is no obligation on a need of further amendment. Whether template or starting point for crafting an
plaintiff to investigate the failure of the Board will use more than one e-mail order more to their liking. The
announcement also explained that the information is not provided as a matter As for the comments noting that
Board may make orders designed to of course in Board proceedings and universal application of the standard
facilitate discovery and trial and that the confidential information need only be order does not assist parties if protected
Board therefore could impose the provided in response to a proper and information is revealed after the
standard order in any case in which it relevant discovery request or when the conclusion of a proceeding, it is not at
would be appropriate to do so. The party chooses to use such information in all clear that parties can be compelled
standard order is also discussed in the support of its case at trial. The to enter contracts that will govern their
Board’s manual of procedure, the imposition of the standard protective actions after the Board proceeding has
TBMP, and the order itself is contained order provides assurances to a party that concluded. While the Board encourages
in the appendix of forms included in the may need to reveal confidential parties to consider creating a contract,
manual. information in response to a discovery the parties are responsible for the
The Board’s interlocutory attorneys request, so as to avoid adverse protection of their confidential
have routinely applied the standard consequences that may result from information outside of a Board
order when parties are unable to agree failure to respond, or in support of its proceeding. See Fort Howard Paper Co.
on terms for a protective order and case at trial. Further, the attorney or v. G.V. Gambina Inc., 4 USPQ2d 1552
progress in discovery is being thwarted party or any other individual receiving n. 3 (TTAB 1987) (‘‘it is the function of
by the absence of a protective order. The confidential information in response to counsel to decide what is in the best
Board’s authority to impose the order a discovery request or during trial, may interest of the party’’). On the other
has been upheld despite a challenge only obtain the information if it abides hand, because a party receiving
raised in a petition to the by the standard protective order’s confidential information in a Board
Commissioner. See Petition Decision provisions. The standard protective proceeding voluntarily takes on
Nos. 01–515 (July 2, 2002) and 01– order covers parties and their attorneys obligations that benefit the disclosing
515(r) (August 7, 2003), arising out of during a proceeding, defining the party and the Board, a disclosing party
Opposition No. 91112956 (the latter individuals that are encompassed by may well have remedy at law if a breach
petition decision viewable in the each designation. In addition, each were to occur after a Board proceeding
TTABVUE electronic proceeding file for independent expert or consultant, non- concluded. In fact, the TBMP refers to
the opposition). While the matter has party witness, or individual not falling one case in which a claim brought in a
not been empirically studied, it is within the definition of party or federal district court, alleging breach
believed that in the vast majority of attorney must sign an acknowledgment after conclusion of the Board
cases in which the Board has imposed form agreeing to be bound by the proceeding, survived a motion to
the order, the parties have complied standard protective order during and dismiss. See Alltrade Inc. v. Uniweld
with it without further modification. after the proceeding, as a condition for Products Inc., 946 F.2d 622, 20 USPQ2d
Nonetheless, the standard protective gaining access to protected information 1698 n.11 (9th Cir. 1991). In addition,
order has always been subject to through a party or attorney. Thus, an the standard protective order provides
supplementation or modification by the attorney, party or non-party individual that information or material disclosed in
parties, upon agreement approved by receiving confidential information does accordance with the terms of the order
the Board or upon motion of any party so voluntarily and, in return for access is for use solely in connection with the
granted by the Board. This practice does to the confidential information, is Board proceeding and must be returned
not change under this final rule. obligated to the disclosing party and the to the disclosing party at the conclusion
While many of the comments received
Board to abide by the provisions of the of the proceeding. The obligation to
in response to the proposed rule
protective order, thereby providing the return protected material includes
implicitly assume that the universal
application of the standard order to disclosing party with legal protection memoranda, briefs, summaries and the
inter partes cases was proposed only for harm it may suffer by any breach. like that discuss or ‘‘in any way refer to’’
because of the initial disclosures Allegations of such a breach are very protected information or material.
required in the proposed rule, the rare or nonexistent in Board Therefore, opportunities for breach after
reason for the rule change is broader. proceedings, and no comment pointed a proceeding are very limited. As with
Universal application of the standard to a reported incident involving breach. the posited situations involving breach
protective order should reduce some The Board’s power to order sanctions during a proceeding, allegations of
existing motion practice relating to for breach during a proceeding, and the breach after conclusion of a proceeding
discovery, regardless of the extent of Office’s powers to discipline attorneys are extremely rare.
initial disclosures required by rule. or sanction attorneys and parties are Comments subject 6 (Discovery
Accordingly, although this final rule, in viewed as effective deterrents to breach. Conference): Most comments did not
response to many comments, scales As for the comments noting that the specifically address the discovery
back the extent of required initial standard order does not account for all conference requirement. One comment
disclosures, universal application of the circumstances that may be presented by ‘‘generally supports’’ the conference
standard protective order remains a part all inter partes cases, the Office requirement but did not add any
of this final rule. As noted above, the acknowledges the accuracy of these suggestions or recommendations. One
parties in any inter partes case are free observations. However, the Office also comment suggested that the final rule
to negotiate supplementary terms or to notes the standard order was never specify the subjects to be discussed
substitute an alternative order to which intended to account for all situations, during the conference. The same
they may agree; and any party is free to and the parties are free to seek comment recommended that any Board
move for addition of supplementary additional protections by agreement or Interlocutory Attorney or judge that is
terms or substitution of a different motion. Further, the Board’s involved in a conference not be
order. interlocutory attorneys have experience involved in the management or decision

As for the comment that addressed dealing with situations in which a of the case, to ensure impartiality.
possible breach of the protective order party’s access to information may have Finally, this comment also
during a proceeding, it is noted that to be restricted or precluded, including recommended that the final rule be
access to a party’s confidential situations involving pro se parties. clarified to specify that the provision of
the federal rules that requires parties, required to file a written report on their discussions concerning assignments,
when in court, to file a written report on discussions except under certain licenses, restrictions on use, conditions
their conference is not applicable in circumstances. of phase-out agreements, terms of
Board proceedings and that a written The Office has chosen not to provide consent agreements or the like.
report would be necessary in a Board that only Board judges, rather than Similarly, in discussing claims and
case only when directed by a Board attorneys, will participate in defenses and possible amendment of
participating Board attorney or judge. discovery conferences. It is anticipated pleadings, it is anticipated that involved
One comment supportive of the that the Board will provide training to Board professionals will limit their
conference requirement suggested its Interlocutory Attorneys and observations to whether claims or
mediation training for Board Administrative Trademark Judges, so defenses are within the Board’s
professionals designated to conduct that a Board professional occupying jurisdiction and the relative difficulty of
conferences. One comment critical of either position will be able to provide proving a particular claim or defense,
the conference requirement noted that effective assistance to the parties during given the applicable law. It is unlikely
the proposed rule is silent on the extent a conference. In addition, while it is a Board professional will be directly
of involvement by a participating Board anticipated that Board attorneys will involved in discussions about what
professional and views the conference participate in conferences far more often evidence a party believes it will be able
as an unnecessary formality because of than Board judges, the final rule allows to use to support a claim or defense, the
the existing flexibility parties have to the Board to draw from both groups of good faith or bad faith of a party, or the
manage discovery. One comment argued professionals to provide the Board relative equities of the parties’
that counsel experienced in Board flexibility in scheduling and respective positions. Because the Office
practice will bear a burden of educating deployment of personnel. In this regard, does not anticipate that Board
pro se parties, foreign individuals or it is noted that the Board cannot predict professionals typically will be
entities, or even U.S. attorneys that are the percentage of inter partes cases in intimately involved in discussing
not well versed in Board practice. One which a party will request involvement possible terms of settlement, or
comment suggested that the availability of a Board attorney or judge. In informal providing evaluations of a particular
of Board professionals to participate in discussions with members of the bar, party’s chances of success on a
the conferences might create a burden predictions of the extent to which particular claim or defense, it is not
on the Board. One comment argued that parties will request involvement of a anticipated that a Board professional’s
conferences will be more successful if Board professional have varied widely, involvement in these aspects of the
‘‘a member of the Board were actively with some suggesting that there will be discovery conference will present a risk
involved,’’ and is taken as a many requests for Board participation that the Board professional will become
recommendation that an Administrative and others suggesting that if Board partial to one party or another. The
Trademark Judge participate, rather than professionals do not plan to directly and other aspect of conferences, i.e.,
a Board Interlocutory Attorney. substantially involve themselves in discussing plans for disclosure and
detailed settlement discussions, then discovery will involve a more
Response: The final rule retains the requests for Board involvement in
requirement for a conference to discuss mechanical exercise. Involved Board
conferences may be limited. professionals will participate as needed
the nature and basis of the involved The Office anticipates that Board
claims and defenses, the possibility of to confirm for the parties how Board
professionals involved in conferences
settlement of the case or modification of rules and applicable federal rules
will fill the educator’s role that one
the pleadings, and plans for disclosures operate, answer questions the parties
comment suggested would have to be
and discovery. The final rule has been may have about deviating from those
filled by experienced counsel. Any
amended to clarify that the parties shall experienced counsel who fears being rules, and to aid the parties in crafting
discuss the subjects outlined in Federal forced into the role of educator for a pro a plan that will ensure efficient
Rule 26(f) and any other subjects that se adversary or less experienced adverse compliance with obligations.
the Board may, in an institution order, counsel can request the participation of Comments subject 7 (Initial
require to be discussed. Subjects the a Board professional. The extent of Disclosures): Perhaps the greatest source
Board may require the parties to discuss involvement of a Board professional in of concern and most frequently
could include, for example, plans to a conference will necessarily vary addressed subject was the proposal for
supplement or modify the Board’s depending on the relative expertise and initial disclosures that would obviate
standard protective order, or to needs of the parties and/or their the need for a party to seek certain
substitute a different order, whether the counsel. information through service of
parties want to seek mediation, The Office anticipates that discovery requests. The proposed rule
arbitration or to proceed under the involvement of a participating Board did not specify what should be
Board’s Accelerated Case Resolution professional in the settlement aspect of disclosed, as does Federal Rule 26(a)(1),
option, and whether the parties want to a conference will be rather limited, in but the ‘‘Background’’ section of the
enter into any stipulations of fact or comparison to the involvement of a notice of proposed rule making noted
stipulations as to the manner in which district court judge. The Board that a party generally would be found to
evidence may be presented at trial. In a professional may ascertain whether the have met its initial disclosure
conference, parties are free to discuss parties have had settlement talks and obligations if the party provided
any additional topics that could whether they have made progress, may information to adverse parties on any of
promote settlement or efficient ensure that the parties know about a number of particular subjects, ‘‘as
adjudication of the Board proceeding. mediation, arbitration and the Board’s applicable in any particular case.’’ Many
Neither Federal Rule 26(f) nor any Accelerated Case Resolution option, and comments reflected an assumption that
listing of subjects for discussion that the may inquire whether the parties desire every party, in every case, would be
Board may include in an institution additional time after the conference to required to make initial disclosures on
order should be read as limiting what discuss settlement. The Office does not the subjects listed in the Background
the parties may discuss. This final rule anticipate, though it cannot rule out, section of the NPRM, and argued that
also clarifies that the parties are not participation of a Board professional in such a requirement would be more
onerous than the subjects covered by comments argued for clarification that information or documents and instead
Federal Rule 26(a)(1). Numerous disclosures may be amended or refer the inquiring party to a Web site.
comments argued that disclosure would supplemented. Therefore, the potential that disclosure
burden larger plaintiffs and foreign Response: This final rule adopts the or discovery rules could be used to
parties more than pro se or small entity oft-suggested alternative of requiring harass an adversary is not seen as
defendants or applicants whose only those initial disclosures set forth in sufficient reason to rely on the
applications are based on intent to use. Federal Rule 26(a)(1) (one comment availability of the internet as a sufficient
However, one comment argued that a stated ‘‘the resources involved in substitute for disclosure and discovery
small entity or pro se party would suffer producing this information are procedures. A motion for a protective
the greater burden. One comment relatively minimal’’). Thus, the Office order is available to any party, large or
suggested that much information about has not adopted suggested alternatives small, that believes it is the subject of
a party, especially a large party, can be that would require any additional harassment by an adversary.
obtained from the internet and disclosures, even if such matters might The argument that disclosure should
disclosures or discovery then become be considered ‘‘objective’’ or ‘‘fact not be necessary if a defendant defaults
merely a tool for harassment of the large neutral.’’ In fact, though the Board in its and that initial disclosures will not be
party. January 1994 Official Gazette necessary in the large percentage of
Numerous comments argued that announcement stated that it would not Board cases that settle is dealt with infra
disclosures should not be required until follow many of the Federal Rules of in the discussion regarding the
it is clear that a defendant intends to Civil Procedure as amended in disclosure, discovery and trial schedule
defend the action, which would be December 1993, much of this final rule for a case proceeding under this final
shown by the filing of an answer. Many constitutes an effective retraction of that rule. Comments that predict increases in
comments noted that most Board cases announcement. Much more Board motion practice, or seek clarification
settle and therefore initial disclosures practice will now follow the federal regarding certain motions related to
will be unnecessary in most cases. Other rules. Thus, the Office has decided that disclosures, are dealt with below, but
comments asserted that traditional disclosure practice will be more also are addressed infra in the
discovery devices work well enough predictable if only those initial discussion of the comments regarding
and that initial disclosure is not disclosures contemplated by the federal particular types of motions relating to
necessary. One comment asserted that rule are required in Board proceedings. disclosures.
disclosure would require a party to Many of the arguments against initial It is not the Board’s experience that
disclose information helpful to its disclosures may have been rooted in the traditional discovery requests always
adversary and that the Board proposal to perception that every party in every case work so well as a mechanism for the
allow introduction of disclosures in the would have to disclose information exchange of routine information that
same way that discovery responses may regarding the list of subjects contained initial disclosures would be of limited
be introduced in a Board proceeding in the Background section of the utility. As utilized in the district courts,
would put the disclosing party in the proposed rule. Accordingly, since the and as it is expected they will be
position of aiding its adversary. Some initial disclosures required by this final utilized in Board inter partes cases,
comments asserted that once a party has rule will be much more limited, initial disclosures eliminate the cost and
made significant disclosures it will be numerous comments no longer require a time associated with seeking core
less likely to settle. Some comments response. However, it is understood that information regarding the existence of
argued that initial disclosures would numerous comments may also have and location of witnesses and
lead to increased motion practice been intended to apply to any form of documents. While the introduction of
regarding the sufficiency of disclosures required initial disclosures and are the use of initial disclosures in the
and/or whether sanctions should be addressed as follows. courts prompted criticism that undue
entered for failure to make sufficient The Office has concluded that the satellite litigation would result, the
disclosures. relative burden for parties making initial empirical study referenced in the
Some comments supported the use of disclosures is not a function of Federal Supplementary Information section did
initial disclosures in principle but Rule 26(a)(1) or the application of not find that to be a significant problem.
concluded the proposed rule requires Federal Rule 26 to Board proceedings by Because the Board is adopting the same
further clarification. These comments Trademark Rules 2.116 and 2.120 but, initial disclosure approach utilized in
suggested that disclosure obligations be rather, reflects the position the party the district courts, it is likewise
articulated in the trademark rules occupies in the case and the claims or expected that there will not be
themselves and not in the Background defenses the party chooses to assert. No significant problems with satellite
or Supplementary Information section comments asserted that Federal Rule litigation in Board cases. Moreover, the
of a notice of rule making or on the 26(a)(1) creates unequal burdens and no argument that initial disclosures
Board Web site. Among those who comments asserted that utilization of unfairly require a party to aid its
offered alternatives to the proposed rule, initial disclosures in the district courts adversary was raised in connection with
some proposed that the Board follow routinely creates unequal or unfair disclosure in the district courts under
Federal Rule 26(a)(1)(A) & (B), or burdens. There is no effective means for the federal rules. However, this has not
include in a trademark rule language ensuring that every party to every case been the case. Further, it appears that
roughly akin to the federal rule. Others will have to exert the same effort to this concern may have been rooted in
suggested the federal rule as a starting comply with the requirement for initial the perceived need to disclose more
point, with some additional disclosures disclosures. Information gleaned from information under the proposed rule
reflective of what is generally at issue the internet about an adverse party, and than is required by this final rule.
when a particular claim or defense is initial disclosures or discovery While some comments contended that
pleaded. Some comments distinguished responses from that party, are not of parties to Board proceedings should not
between reasonable disclosure of equal evidentiary value. In fact, in cases be able to introduce written disclosures
‘‘objective’’ or ‘‘fact neutral’’ matters before the Board, it is not unusual for or disclosed documents as affirmative
and disclosure of subjective, overbroad motions to compel to result from evidence, the limited initial disclosures
or irrelevant information. Many discovery responses that do not provide contemplated by this final rule are not
expected to provide many opportunities practice of counting subparts is different disclosure of expert testimony. This
to utilize the disclosures as evidence. from the practice in many courts, those clarifies that disclosure of consulting
For example, the identification of familiar with Board practice have experts is not required. In addition, the
witnesses and identifying information is developed an understanding of the final rule specifies that disclosure of
itself of little evidentiary value. On the counting methodology. In addition, expert testimony shall occur in the
other hand, the Office notes that a party interrogatories are more cost-effective manner and sequence of Federal Rule
making initial disclosures has the than depositions and have more utility 26(a)(2), unless the Board provides
option to produce copies of documents when dealing with certain parties or in alternate instructions in an institution
instead of disclosing information about more complicated cases with numerous order or subsequent order. This clarifies
the existence and location of issues. Accordingly, the Office retracts that the information to be disclosed is
documents. If copies of documents are the proposal to further limit that provided for in the federal rule. As
produced in lieu of providing interrogatories. The methodology for in the federal rule, this final rule allows
descriptions of documents and their counting interrogatories shall remain the Board to specify staggered
locations, then these documents may unchanged. disclosure schedules, when necessary or
have evidentiary value and the final rule Comments subject 9 (Expert appropriate, but specifies that in the
merely proposes that they be treated in Disclosures): Several comments absence of such direction by the Board,
the same way as documents produced in observed that a distinction needed to be disclosure will occur in accordance
response to discovery requests. In drawn between consulting/non- with the federal rule. Because the
addition, if parties agree in a discovery testifying experts, who should not be federal rule requires disclosure ninety
conference to make greater use of covered by disclosure rules, and (90) days prior to trial, as applied in
reciprocal written disclosures of facts, testifying experts, who could be covered Board proceedings that will mean expert
as a less expensive mechanism for by disclosure rules. Other comments disclosures will occur with thirty (30)
exchanging information than traditional noted that the proposed rule did not days remaining in the discovery period.
discovery, then the written disclosures specify, as does Federal Rule 26(a)(2), The federal rule also allows for
should be treated the same as discovery the extent of the disclosures to be made disclosure of a testifying expert retained
responses. about expert witnesses, their solely to contradict or rebut the
The provision of Federal Rule 26(e) qualifications, bases for their testimony anticipated testimony of another party’s
regarding supplementation of and the like. A common concern was expert thirty (30) days after the
disclosures and discovery responses that the proposed rule called for disclosure by the other party. This
will be applicable to Board inter partes disclosure of experts too early in provision will likewise apply to Board
proceedings. discovery, because most parties will not practice.
Comments subject 8 (Interrogatory decide whether to use experts until late
Limit): As with other subjects, in discovery or after discovery but prior As many of the comments noted,
comments on the proposed limit on the to trial. Numerous comments suggested expert testimony is expensive and
number of interrogatories varied. Some that expert disclosure not occur until typically not utilized in Board
comments supported either the after fact discovery was completed. proceedings. Accordingly, detailed
proposed limit of twenty-five (25) or Several related comments suggested that information in the final rule setting
something lower than the existing limit disclosure of experts be staggered, with forth deadlines for staggered expert
of seventy-five (75). Other comments, plaintiff’s disclosure followed by disclosures after discovery and prior to
however, argued that reduction of the defendant’s, followed by plaintiff’s trial is not included. Such provisions
limit on the number of interrogatories rebuttal. Some comments suggested would delay trial in the vast majority of
would have adverse consequences. tracking the Federal Rule 26(a)(2) cases that do not involve use of expert
Among this latter group of comments, provisions on when expert disclosure testimony. Instead, the final rule
some noted that a reduction in should occur. One comment suggested provides the Board with flexibility to
interrogatories may lead to an increase that the Office make clear that a make any orders necessary to
in discovery depositions, which are resetting of the closing date for accommodate disclosure of experts and
more costly; others suggested that more discovery would result in a resetting of discovery regarding experts in the rare
motion practice may result, whether the deadline for expert disclosure(s). cases when expert testimony may be
from parties seeking leave to exceed the While the proposed rule recognized that used. Following Federal Rule 26(a)(2)
limit or from parties objecting to in some instances a party may not and allowing the Board flexibility to
interrogatories alleged to be in excess of decide to use an expert witness at trial manage the disclosure and discovery
the limit. One comment observed that if until after discovery had closed, and process makes it unnecessary to include
the Office was responsive to comments required prompt disclosure when the in the final rule a specific statement that
calling for less extensive mandatory expert was retained after the close of expert disclosure deadlines will be reset
initial disclosures, then the need for discovery, one comment suggests that when the close of the discovery period
more interrogatories would remain. this provision may lead to abuse. is reset. As noted, because of the
Some comments noted that although the Another comment requested further potential for abuse when an expert is
federal courts have a limit of twenty-five clarification on the availability of retained after the disclosure deadline
(25) interrogatories, the courts generally motions to strike or exclude expert set forth in the federal rule, or any
do not count subparts, while the Board testimony for untimely or insufficient deadline that may be specified by the
does, so a reduction in the limit without disclosure. Almost universally, Board in any order it may issue, the
a change in the practice of counting comments acknowledged that retention final rule also specifies that a party
subparts would represent a drastic of an expert witness is likely to be quite retaining a testifying expert after the
reduction. expensive and is not frequently done in deadline for disclosure will have to seek
Response: A number of the comments Board proceedings. leave from the Board to utilize the
against reducing the limit on Response: The Office acknowledges expert. The Board anticipates deciding
interrogatories make a persuasive case the need to clarify aspects of the any such motion promptly or
why the limit should remain proposed rule as noted in various suspending proceedings until the
unchanged. Because the Board’s comments. The final rule provides for motion can be decided, and the
amended rule allows the Board would not be required of a plaintiff if a practice is not codified in the trademark
flexibility to choose either option. defendant did not file an answer. One rules and will remain a discretionary
Comments subject 10 (Pretrial of these suggested that the de facto stay practice that the Board may alter as
Disclosures): Some comments suggested of initial disclosure obligations when necessary without need for any change
that pretrial disclosures are not there is a default or a motion under in the rules. However, the Office
necessary and there is little in the way Federal Rule 12 be codified in any final clarifies that this final rule does not
of unfair surprise testimony in Board rule. Some comments argued that the alter that traditional liberal approach
proceedings. One comment suggested Board should be willing to suspend except in one instance, namely, the
that a pretrial disclosure deadline cases for settlement talks in the period Board is unlikely to suspend cases for
fifteen (15) days prior to trial, instead of after answer is filed but prior to a settlement talks between the time an
the proposed thirty (30) days prior to discovery conference. One comment answer is filed and the deadline for a
trial, should be sufficient. A related posited that the 180-day (approximately discovery conference. One point of the
comment suggested that disclosure six-month) discovery period is conference is for the parties to either
deadlines be staggered, as are the effectively shortened by thirty (30) days discuss settlement or at least discuss
testimony periods in Board cases. Two under the proposed rule, because a whether, in light of the answer and the
comments argued for clarification of party may not seek discovery until it has close of the pleadings, they may have a
certain terms or phrases in the proposed made its initial disclosures and they are basis to begin settlement talks. In
rule and one of these offered suggested not due until thirty (30) days into the essence, comments calling for the Board
alternate language. Some comments discovery period. One comment argued to allow for suspension after answer but
addressed the ramifications of that proceedings in a case should not be before the discovery conference do not
inadequate or improper disclosure and/ suspended when a motion to compel address a proposed change in a rule but,
or the availability of motions directed to disclosure or discovery is filed. The rather, only address Supplementary
asserted inadequate or improper same comment sought clarification that Information included in the proposed
disclosure. a party should not be able to serve rule. Accordingly, no change has been
Response: For the Board cases that go discovery after a motion to compel is made in the final rule to codify
through trial, motions to quash filed but prior to issuance of a discretionary practices relating to
testimony depositions or to strike suspension order by the Board. A suspension to accommodate settlement
testimony after it has been taken are not different comment sought clarification talks.
frequent but, when filed, are as to whether discovery requests can be A party’s initial disclosures are due
particularly disruptive. Claims of unfair served after issuance of a Board order within thirty (30) days after discovery
surprise due to asserted inadequate suspending proceedings because a opens but may be served as soon as the
discovery responses and claims of discovery motion has been filed. Two party wishes. Given that both parties,
improper or insufficient notice although comments sought inclusion of entire once the pleadings are closed, should be
not frequent are not unusual. While one proceeding schedules in the rules, i.e., able to start preparing their disclosures,
comment suggested that the 30-day all pleading, disclosure, discovery, and and given the scaled back number and
intervals between the parties’ respective trial deadlines in a proceeding, rather extent of disclosures required by this
testimony periods provide opportunities than having the proceeding schedule set final rule, the parties may be able to
to ameliorate the ill effects of unfair in an institution order. exchange disclosures at their discovery
surprise, the Board’s experience is to the Response: The proposed rule, and this conference or soon thereafter. In short,
contrary. Because trial is conducted final rule, provides that initial the parties can effectively use the entire
without a Board professional present, disclosures are not due until 30 days 180-day period for discovery if they are
there is little opportunity for swift after discovery opens. Discovery itself prompt with service of their initial
rulings on motions alleging unfair does not open until 30 days after an disclosures.
surprise and when such motions arise, answer is filed by a defendant. Thus, in When the Office amended certain
testimony periods often need to be any case of default or in any case in trademark rules governing Board
adjusted or reset. The requirement for which a defendant files a motion under practice in 1998, it included provisions
limited pretrial disclosures of the Federal Rule of Civil Procedure 12 providing for suspension of cases until
witnesses a party expects to present or directed to plaintiff’s pleading, the discovery motions are decided. It may
may present if needed is maintained in Board will reset discovery, disclosure be possible for parties to continue with
this final rule. The suggestions to and trial dates. Similarly, when a discovery activities while other
stagger pretrial disclosures and to defendant includes a counterclaim with discovery matters involved in discovery
schedule the first such disclosure closer its answer, the Board must reset these motions are decided, especially when
to the time of trial have been adopted dates to account for the addition of the the case is in the early part of the
and are included in the final rule. The counterclaim. In short, there are many discovery period. However, the Board
final rule also includes clarifying potential triggers that will prompt the receives many motions relating to
language on what is necessary to Board to reset discovery, disclosure and discovery late in the discovery period or
identify a witness and the expected trial dates and any attempt to codify after the discovery period has closed but
topics of the planned testimony of the them all in § 2.120 would be prior to trial. In these cases in
witness. The subject of motions cumbersome. The final rule states that particular, it is more efficient to
addressing asserted improper or disclosure obligations may be reset by suspend proceedings and stay trial until
inadequate disclosure is covered below order of the Board and the discovery matters have been resolved. It
in the discussion of comments on Supplementary Information section of would be cumbersome to have different
motions relating to all required this final rule addresses the ways in rules governing suspension for
disclosures and the obligation to which the Board may exercise this discovery motions, depending on when
supplement required disclosures. authority. such motions are filed. Accordingly, the
Comments subject 11 (Scheduling The Board has traditionally been very Office retains the rule providing for
Issues; Accommodating Settlement liberal in its willingness to suspend suspension as a matter of course. The
Talks): Some comments argued for cases to accommodate settlement final rule has, however, been amended
clarification that initial disclosures negotiations between parties. This in response to some comments to
prevent service of additional discovery pretrial disclosures. This comment also pretrial disclosures are not a discovery
requests after filing and service of a sought clarification whether a party activity, and a motion to compel is not
motion relating to discovery, even prior would have to respond to a motion for available. Accordingly, the approach
to the Board’s issuance of a suspension summary judgment if it believed the varies when an adversary does not make
order. moving party had not made adequate pretrial disclosures, or provides
The entire discovery and trial initial disclosures, the process for inadequate pretrial disclosures. The
schedule, including disclosure determining whether an initial possibilities include a motion for
deadlines, has not been included in the disclosure was adequate, clarification of sanctions, a motion to quash a notice of
final rule. Dates must be reset when a the penalties for inadequate initial testimony deposition, or a motion to
defendant files a counterclaim, and disclosures and clarification whether a strike testimony, depending on the
often are reset once issues relating to a party seeking imposition of such circumstances.
defendant’s default or a defendant’s penalties would have to file a motion to The requirement that a party make its
motions under Federal Rule 12 are compel. Another comment also sought initial disclosures before filing a motion
decided. Accordingly, it would be addition of a rule specifying the for summary judgment, except for
cumbersome and unwieldy to craft a consequences for failing to disclose facts motions based on claim or issue
rule that would account for all possible as of the initial disclosure deadline. preclusion or asserted lack of
circumstances and permutations of Response: When the Federal Rules of jurisdiction of the Board, is retained in
dates. Civil Procedure were amended to the final rules. Given the scaled back
Comments subject 12 (Motions require disclosures, many commentators nature of initial disclosures, making the
relating to Disclosures): One comment suggested that significant satellite required disclosures should not prove a
argued that ‘‘all-encompassing’’ initial litigation would result. The actual result significant obstacle to a party that
disclosures would lead to motions to was not nearly as severe as feared. decides to seek summary judgment on
compel such disclosures, motions Further, most of the comments any other ground.
challenging the sufficiency of such advancing similar arguments in Comments subject 13 (Briefing of
disclosures and motions to preclude response to the proposed rule appear to Motions): One comment argued that the
introduction of testimony, documents or be based on the extent and number of proposed rule results in a de facto
other evidence because of inadequate initial disclosures perceived to be a part reduction in the page limit for briefs on
disclosures. Numerous other comments of the proposed rule, which are motions.
also asserted that such satellite litigation significantly scaled back in this final Response: The proposed rule only
would result from the proposed rule. Specific consequences for failure reflects current practice and does not
required disclosures. Some of these of a party to make timely, proper or reduce the stated page limit for motions
comments suggested that such problems adequate disclosures have not been set on briefs. This final rule adopts the
could be limited by adopting the out in the final rule. The Board must clarifying language presented by the
disclosures of Federal Rule 26. One retain the discretion to tailor sanctions proposed rule.
comment asserted that the Board lacks to the particular circumstances of each Comments subject 14 (Removal of
adequate sanctioning authority to stem case. However, the final rules have been option to file materials on CD–ROM):
evasive and incomplete discovery clarified in certain respects. A party One comment noted that restrictions on
responses and may face the same may seek to strike any testimony or CD–ROM submissions may not be
problem with disclosures. Some portions of testimony, whether or not imposed by the courts and stated the
comments sought clarification that from an expert, when related assumption that the Office might
supplementation of disclosures will be disclosures were untimely, improper or reconsider permitting such submissions
permitted and implied that this may inadequate. The rule has been clarified if improvements in technology make
ameliorate some motion practice to state that a motion to strike testimony them more suitable for the Board to
relating to disclosures. One comment of a witness for inadequate pretrial handle. One comment supported the
sought clarification that a party may disclosure may seek to strike that proposal.
move to strike or preclude expert portion of the testimony that was not Response: The Office is willing to
testimony for improper or untimely adequately covered by the disclosure. reconsider allowing submissions by CD–
disclosure. One comment suggested that A motion for sanctions for a party’s ROM in inter partes trademark
a final rule permit motions to strike failure to participate in the discovery proceedings if technology eventually
portions of testimony for inadequate or conference must be filed prior to the will allow such submissions to be
improper pretrial disclosure. One deadline for initial disclosures because efficiently incorporated in the Board’s
comment sought an explanation why a one subject for discussion in such a electronic proceeding files. The removal
motion for sanctions for a party’s failure conference is disclosure. Further, if the of the option to file materials on CD–
to participate in a discovery conference motion seeks a sanction that is ROM is adopted in this final rule.
must be filed prior to the due date for potentially dispositive of the case, a
initial disclosures and also argued that suspension order is issued under the Rule Making Considerations
if such a motion is filed proceedings existing rules and no further Regulatory Flexibility Act: For the
should be suspended. Two comments amendment is needed to so specify. A reasons set forth herein, the Deputy
argued that a party should be permitted motion to compel is the available General Counsel for General Law of the
to file a motion for summary judgment remedy when an adversary has failed to United States Patent and Trademark
prior to making its initial disclosures if make, or has made inadequate, initial Office has certified to the Chief Counsel
the ground for the motion for summary disclosures or disclosures of expert for Advocacy of the Small Business
judgment is unrelated to the disclosures. testimony. Both of these types of Administration that the changes in this
One comment argued for, on the one disclosures are made during discovery, final rule will not have a significant
hand, specification of the consequences and a motion to compel must precede a economic impact on a substantial
for a party’s failure to meet the deadline motion for sanctions. A motion for number of small entities. See 5 U.S.C.
for pretrial disclosures and, on the other sanctions is only appropriate if a motion 605(b).
hand, procedures available to a party to compel these respective disclosures The United States Patent and
attempting to remedy its failure to make has already been granted. In contrast, Trademark Office (Office) is amending
its rules in 37 CFR part 2 governing disclosure obligations otherwise process where none of the disclosure
initiation of inter partes proceedings at provided for by the rules. For example, obligations will have arisen, the
the Trademark Trial and Appeal Board if a case is suspended to allow the requirements for disclosures should not
(Board) and the prosecution and defense parties to discuss settlement, as occurs create a significant economic burden for
of such proceedings, and making in the vast majority of Board cases, no most parties. Even in cases that do not
corrections or modifications that disclosure would be required during settle, parties are free to agree to greater
conform rules to current practice. There settlement talks. In addition, parties can or lesser use of disclosures, subject to
are no new fees or fee changes stipulate, subject to approval of the approval of their agreement by the
associated with any of the final rules. Board, that disclosure is not necessary Board, and can therefore modify their
The changes in this final rule involve in a particular case and can specify their reciprocal responsibilities in whatever
interpretive rules, or rules of agency own plans for exchanging information. manner they believe will promote an
practice and procedure, and prior notice One comment received in response to efficient and fair procedure.
and an opportunity for public comment the notice of proposed rule making For the small percentage of cases that
are not required pursuant to 5 U.S.C. specifically addressed the Regulatory proceed far enough that initial
553(b)(A) (or any other law). Because Flexibility Act, making two points: disclosures will be necessary and where
prior notice and an opportunity for First, the requirement that a plaintiff the parties have not by agreement
public comment were not required for serve a copy of its complaint on the modified their obligations, the number
the changes in the proposed rule, a defendant will create a burden. Second, and breadth of initial disclosures have
Regulatory Flexibility Act analysis was the requirement that any party must, been scaled back significantly from the
also not required. See 5 U.S.C. 603. under certain circumstances, make proposed rule. The final rule essentially
Nevertheless, the Office published a particular disclosures will be a burden. requires a party only to identify
notice of proposed rule making in the The Office does not find the arguments individuals who are knowledgeable
Federal Register and in the Official persuasive, for reasons that follow: about matters for which the party bears
Gazette of the United States Patent and (1) In regard to the service the burden of proof, and to identify the
Trademark Office, in order to solicit requirement, the final rule has been existence and location of documents
public participation with regard to this clarified in response to many comments that would help the party bear its
rule package. and has been scaled back from the burden of proof. These types of
The primary changes in this rule are: proposed rule. Under existing practice, information must currently be provided
(1) Plaintiffs will serve certain papers every plaintiff, including a small anyway, if a party’s adversary asks, and
(complaints or claims of right to a business, must serve a copy of every most parties that do not settle prior to
concurrent use registration) directly on paper the plaintiff files during a discovery do ask not only for these
defendants, and (2) parties will, on a proceeding on the defendant. See 37 items of information but for much more.
reciprocal basis, identify individuals CFR 2.119. During the course of a Thus, initial disclosures merely require
with knowledge that could be used to proceeding, this could amount to many a party to provide, without being asked,
support their claims or defenses and filings. The sole exception is the a small portion of that which it would
identify the existence and location of plaintiff’s initial pleading or complaint. routinely be asked to provide in any
documents which could support their Id. The final rule merely requires that case that proceeds into the discovery
claims or defenses, will disclose, as part the single filing (the pleading or phase. While the party must make
of the discovery phase, expert witnesses complaint) that does not currently carry limited disclosures, it also receives the
to be used during the trial phase of a service requirement will now be benefit of disclosures from its adversary
Board proceedings, and will, during a treated the same as all other filings and without having to employ costly
pretrial phase, disclose the identify of carry such a requirement. Thus, this is discovery requests or motions related
witnesses the party expects to call not a significant economic burden on thereto, so the requirement for initial
during trial. any plaintiff. In addition, while parties disclosures creates no net adverse
These rules will not have a significant could not previously meet the service economic effect.
economic impact on large or small requirement by using electronic Disclosure of expert testimony will
entities. With regard to the first change, transmissions (e-mail or fax), the final not create a significant economic burden
very little (if any) additional cost is rule allows for such forwarding of on any business, including a small
associated with the rules because service copies, when the parties agree to business, because expert witnesses are
plaintiffs must currently serve these use of that form of communication. so expensive to employ that even large
papers on the Office, which, in turn, Since many parties now routinely use e- entities utilize experts in only the rarest
serves the papers on the defendants. mail or fax to communicate, the Board of cases. Under current practice, plans
Changing the recipient of the papers expects that the vast majority of parties to use experts must be revealed if the
will not have a significant economic will agree to use of e-mail or fax and party is asked; so, again, the rule only
impact on any party to a Board this will facilitate compliance with the requires a minimal disclosure without
proceeding. With regard to the second requirement for service of the the need for an adverse party to serve
change, very little (if any) additional complaint. For this reason, too, the discovery requests. For any party that
cost is associated with these rules amended service requirement will not does retain an expert, any additional
because under current Board create a significant economic burden on expense associated with disclosures
procedures, parties are obligated to any plaintiff. would be minimal, compared to the
provide almost all of this information, (2) In regard to the disclosure expense of retaining the expert.
when requested through discovery. This requirements, there are three types of Finally, pretrial disclosures only
rule simply affects when the disclosures called for under the final require that a party, in advance of the
information is exchanged and rule. There are initial disclosures, presentation of its testimony, inform its
eliminates the need for a party to incur disclosures of expert witnesses expected adversary of the names of, and certain
expenses associated with preparing to testify, and pretrial disclosures. minimal identifying information about,
requests for the information. Because ninety-five percent or more of the individuals who are expected to
The rules also contemplate many Board cases settle, and most of these testify at trial. The benefits to all parties
instances in which parties may avoid settle or can be settled at a point in the of knowing in advance what witnesses
will be presented, so parties can prepare ■ 2. Revise § 2.99(b), (c) and (d)(1) to address of record in the Office. The
for trial and avoid surprise witnesses, read as follows: opposer must include with the
far outweigh the negligible expense opposition proof of service pursuant to
associated with informing adverse § 2.99 Application to register as § 2.119 at the correspondence address of
concurrent user.
parties of witnesses who will be record in the Office. If any service copy
presented at trial. * * * * * of the opposition is returned to the
For these reasons, the Office has (b) If it appears that the applicant is opposer as undeliverable, the opposer
concluded that none of the three types entitled to have the mark registered, must notify the Board within ten days
of required disclosures will have a subject to a concurrent use proceeding, of receipt of the returned copy. The
significant net adverse economic effect the mark will be published in the opposition need not be verified, but
on any parties, including small Official Gazette as provided by § 2.80. must be signed by the opposer or the
businesses. (c) If no opposition is filed, or if all opposer’s attorney, as specified in
Executive Order 13132: This rule oppositions that are filed are dismissed § 10.1(c) of this chapter, or other
making does not contain policies with or withdrawn, the Trademark Trial and authorized representative, as specified
federalism implications sufficient to Appeal Board will send a notification to in § 10.14(b) of this chapter. Electronic
warrant preparation of a Federalism the applicant for concurrent use signatures pursuant to § 2.193(c)(1)(iii)
Assessment under Executive Order registration (plaintiff) and to each are required for oppositions filed
13132 (Aug. 4, 1999). applicant, registrant or user specified as through ESTTA under paragraphs (b)(1)
Executive Order 12866: This rule a concurrent user in the application or (2) of this section.
making has been determined to be not (defendants). The notification for each * * * * *
significant for purposes of Executive defendant shall state the name and (d) * * *
Order 12866 (Sept. 30, 1993). address of the plaintiff and of the (4) The filing date of an opposition is
Paperwork Reduction Act: The plaintiff’s attorney or other authorized the date of receipt in the Office of the
proposed amendments to the Trademark representative, if any, together with the notice of opposition, with proof of
Trial and Appeal Board Rules did not serial number and filing date of the service on the applicant, or its attorney
impose any collection of information application. If a party has provided the or domestic representative of record, if
requirements within the meaning of the Office with an e-mail address, the one has been appointed, at the
Paperwork Reduction Act of 1995 (44 notification may be transmitted via e- correspondence address of record in the
U.S.C. 3501, et seq.) (PRA). Accordingly, mail. Office, and the required fee, unless the
the PRA did not apply to the proposed (d)(1) Within ten days from the date notice is filed in accordance with
amendments. This final rule also does of the Board’s notification, the applicant § 2.198.
not impose any such requirements. for concurrent use registration must ■ 4. Revise § 2.105(a) and the
Interested persons are requested to serve copies of its application, introductory text of paragraph (c) to
send comments to the Office of specimens and drawing on each read as follows:
Information and Regulatory Affairs, applicant, registrant or user specified as
a concurrent user in the application for § 2.105 Notification to parties of
Office of Management and Budget, New
opposition proceeding(s).
Executive Office Building, Room 10202, registration, as directed by the Board. If
725 17th Street, NW., Washington, DC any service copy is returned to the (a) When an opposition in proper
20503, Attention: Desk Officer for the concurrent use applicant as form (see §§ 2.101 and 2.104), with
Patent and Trademark Office; and (2) undeliverable, the concurrent use proof of service in accordance with
Gerard F. Rogers, Trademark Trial and applicant must notify the Board within § 2.101(b), has been filed and the correct
Appeal Board, P.O. Box 1451, ten days of receipt of the returned copy. fee has been submitted, the Trademark
Alexandria, VA 22313–1451. Trial and Appeal Board shall prepare a
* * * * *
Notwithstanding any other provision notification, which shall identify the
of law, no person is required to respond ■ 3. Revise § 2.101(a), (b) introductory title and number of the proceeding and
to nor shall a person be subject to a text and (d)(4) to read as follows: the application involved and shall
penalty for failure to comply with a designate a time, not less than thirty
§ 2.101 Filing an opposition. days from the mailing date of the
collection of information subject to the
requirements of the Paperwork (a) An opposition proceeding is notification, within which an answer
Reduction Act unless that collection of commenced by filing in the Office a must be filed. If a party has provided the
information displays a currently valid timely notice of opposition with the Office with an e-mail address, the
OMB control number. required fee. The notice must include notification may be transmitted via e-
proof of service on the applicant, or its mail.
List of Subjects in 37 CFR Part 2 attorney or domestic representative of * * * * *
Administrative practice and record, at the correspondence address of (c) The Board shall forward a copy of
procedure, Trademarks. record in the Office, as detailed in the notification to applicant, as follows:
■ For the reasons set forth in the
§§ 2.101(b) and 2.119. * * * * *
(b) Any person who believes that he, ■ 5. Revise § 2.111(a), (b) and (c)(4) to
preamble, and under the authority
she or it would be damaged by the read as follows:
contained in 35 U.S.C. 2 and 15 U.S.C.
registration of a mark on the Principal
1123, as amended, 37 CFR Part 2 is § 2.111 Filing petition for cancellation.
Register may file an opposition
amended as follows:
addressed to the Trademark Trial and (a) A cancellation proceeding is
PART 2—RULES OF PRACTICE IN Appeal Board and must serve a copy of commenced by filing in the Office a
TRADEMARK CASES the opposition, including any exhibits, timely petition for cancellation with the
on the attorney of record for the required fee. The petition must include
■ 1. The authority citation for 37 CFR applicant or, if there is no attorney, on proof of service on the owner of record
part 2 continues to read as follows: the applicant or on the applicant’s for the registration, or the owner’s
Authority: 15 U.S.C. 1123, 35 U.S.C. 2, domestic representative, if one has been domestic representative of record, at the
unless otherwise noted. appointed, at the correspondence correspondence address of record in the
Office, as detailed in §§ 2.111(b) and § 2.111(b), has been filed and the correct § 2.119 Service and signing of papers.
2.119. fee has been submitted, the Trademark (a) Every paper filed in the United
(b) Any person who believes that he, Trial and Appeal Board shall prepare a States Patent and Trademark Office in
she or it is or will be damaged by a notification which shall identify the inter partes cases, including notices of
registration may file a petition, title and number of the proceeding and appeal, must be served upon the other
addressed to the Trademark Trial and the registration(s) involved and shall parties. Proof of such service must be
Appeal Board, for cancellation of the designate a time, not less than thirty made before the paper will be
registration in whole or in part. days from the mailing date of the considered by the Office. A statement
Petitioner must serve a copy of the notification, within which an answer signed by the attorney or other
petition, including any exhibits, on the must be filed. If a party has provided the authorized representative, attached to or
owner of record for the registration, or Office with an e-mail address, the appearing on the original paper when
on the owner’s domestic representative notification may be transmitted via e- filed, clearly stating the date and
of record, if one has been appointed, at mail. manner in which service was made will
the correspondence address of record in * * * * * be accepted as prima facie proof of
the Office. The petitioner must include service.
with the petition for cancellation proof (c) The Board shall forward a copy of
the notification to the respondent (see (b) * * *
of service, pursuant to § 2.119, on the (6) Electronic transmission when
owner of record, or on the owner’s § 2.118). The respondent shall be the
party shown by the records of the Office mutually agreed upon by the parties.
domestic representative of record, if one
to be the current owner of the * * * * *
has been appointed, at the
correspondence address of record in the registration(s) sought to be cancelled, ■ 10. Revise § 2.120, paragraphs (a),
Office. If any service copy of the except that the Board, in its discretion, (d)(1), (e), (f), (g), (h)(2), (i), (j)
petition for cancellation is returned to may join or substitute as respondent a introductory text, (j)(3) and (j)(5)
the petitioner as undeliverable, the party who makes a showing of a current through (8) to read as follows:
petitioner must notify the Board within ownership interest in such
§ 2.120 Discovery.
ten days of receipt of the returned copy. registration(s).
(a) In general. (1) Wherever
The petition for cancellation need not * * * * *
appropriate, the provisions of the
be verified, but must be signed by the
■ 7. Add § 2.116(g) to read as follows: Federal Rules of Civil Procedure relating
petitioner or the petitioner’s attorney, as
specified in § 10.1(c) of this chapter, or to disclosure and discovery shall apply
§ 2.116 Federal Rules of Civil Procedure.
other authorized representative, as in opposition, cancellation, interference
* * * * * and concurrent use registration
specified in § 10.14(b) of this chapter.
Electronic signatures pursuant to (g) The Trademark Trial and Appeal proceedings except as otherwise
§ 2.193(c)(1)(iii) are required for Board’s standard protective order is provided in this section. The provisions
petitions submitted electronically via applicable during disclosure, discovery of Federal Rule of Civil Procedure 26
ESTTA. The petition for cancellation and at trial in all opposition, relating to required disclosures, the
may be filed at any time in the case of cancellation, interference and conference of the parties to discuss
registrations on the Supplemental concurrent use registration proceedings, settlement and to develop a disclosure
Register or under the Act of 1920, or unless the parties, by stipulation and discovery plan, the scope, timing
registrations under the Act of 1881 or approved by the Board, agree to an and sequence of discovery, protective
the Act of 1905 which have not been alternative order, or a motion by a party orders, signing of disclosures and
published under section 12(c) of the to use an alternative order is granted by discovery responses, and
Act, or on any ground specified in the Board. The standard protective order supplementation of disclosures and
section 14(3) or (5) of the Act. In all is available at the Office’s Web site, or discovery responses, are applicable to
other cases, the petition for cancellation upon request, a copy will be provided. Board proceedings in modified form, as
and the required fee must be filed No material disclosed or produced by a noted in these rules and as may be
within five years from the date of party, presented at trial, or filed with detailed in any order instituting an inter
registration of the mark under the Act or the Board, including motions or briefs partes proceeding or subsequent
from the date of publication under which discuss such material, shall be scheduling order. The Board will
section 12(c) of the Act. treated as confidential or shielded from specify the deadline for a discovery
(c) * * * public view unless designated as conference, the opening and closing
(4) The filing date of a petition for protected under the Board’s standard dates for the taking of discovery, and the
cancellation is the date of receipt in the protective order, or under an alternative deadlines within the discovery period
Office of the petition for cancellation, order stipulated to by the parties and for making initial disclosures and expert
with proof of service on the owner of approved by the Board, or under an disclosure. The trial order setting these
record, or on the owner’s domestic order submitted by motion of a party deadlines and dates will be included
representative, if one has been granted by the Board. with the notice of institution of the
appointed, at the correspondence proceeding.
■ 8. Revise § 2.118 to read as follows:
address of record in the Office, and with (2) The discovery conference shall
the required fee, unless the petition is § 2.118 Undelivered Office notices. occur no later than the opening of the
filed in accordance with § 2.198. discovery period, and the parties must
When a notice sent by the Office to
■ 6. Remove § 2.113(e) and revise
discuss the subjects set forth in Federal
any registrant or applicant is returned to
§ 2.113(a) and (c) to read as follows: Rule of Civil Procedure 26(f) and any
the Office undelivered, additional
subjects set forth in the Board’s
notice may be given by publication in
§ 2.113 Notification of cancellation institution order. A Board Interlocutory

proceeding. the Official Gazette for the period of
Attorney or Administrative Trademark
time prescribed by the Director.
(a) When a petition for cancellation in Judge will participate in the conference
proper form (see §§ 2.111 and 2.112), ■ 9. Revise § 2.119(a) and add paragraph upon request of any party made after
with proof of service in accordance with (b)(6) to read as follows: answer but no later than ten days prior
to the deadline for the conference. The the discovery period as originally set or fails to attend a deposition or fails to
participating attorney or judge may as reset. Responses to interrogatories, answer any question propounded in a
expand or reduce the number or nature requests for production of documents discovery deposition, or any
of subjects to be discussed in the and things, and requests for admission interrogatory, or fails to produce and
conference as may be deemed must be served within thirty days from permit the inspection and copying of
appropriate. The discovery period will the date of service of such discovery any document or thing, the party
be set for a period of 180 days. Initial requests. The time to respond may be entitled to disclosure or seeking
disclosures must be made no later than extended upon stipulation of the discovery may file a motion to compel
thirty days after the opening of the parties, or upon motion granted by the disclosure, a designation, or attendance
discovery period. Disclosure of expert Board, or by order of the Board. The at a deposition, or an answer, or
testimony must occur in the manner and resetting of a party’s time to respond to production and an opportunity to
sequence provided in Federal Rule of an outstanding request for discovery inspect and copy. A motion to compel
Civil Procedure 26(a)(2), unless will not result in the automatic initial disclosures or expert testimony
alternate directions have been provided rescheduling of the discovery and/or disclosure must be filed prior to the
by the Board in an institution order or testimony periods; such dates will be close of the discovery period. A motion
any subsequent order resetting rescheduled only upon stipulation of to compel discovery must be filed prior
disclosure, discovery or trial dates. If the parties approved by the Board, or to the commencement of the first
the expert is retained after the deadline upon motion granted by the Board, or by testimony period as originally set or as
for disclosure of expert testimony, the order of the Board. reset. A motion to compel discovery
party must promptly file a motion for * * * * * shall include a copy of the request for
leave to use expert testimony. Upon (d) * * * (1) The total number of designation or of the relevant portion of
disclosure by any party of plans to use written interrogatories which a party the discovery deposition; or a copy of
expert testimony, whether before or may serve upon another party pursuant the interrogatory with any answer or
after the deadline for disclosing expert to Rule 33 of the Federal Rules of Civil objection that was made; or a copy of
testimony, the Board may issue an order Procedure, in a proceeding, shall not the request for production, any proffer
regarding expert discovery and/or set a exceed seventy-five, counting subparts, of production or objection to production
deadline for any other party to disclose except that the Trademark Trial and in response to the request, and a list and
plans to use a rebuttal expert. The Appeal Board, in its discretion, may brief description of the documents or
parties may stipulate to a shortening of allow additional interrogatories upon things that were not produced for
the discovery period. The discovery motion therefor showing good cause, or inspection and copying. A motion to
period may be extended upon upon stipulation of the parties, compel initial disclosures, expert
stipulation of the parties approved by approved by the Board. A motion for testimony disclosure, or discovery must
the Board, or upon motion granted by leave to serve additional interrogatories be supported by a written statement
the Board, or by order of the Board. If must be filed and granted prior to the from the moving party that such party
a motion for an extension is denied, the service of the proposed additional or the attorney therefor has made a good
discovery period may remain as faith effort, by conference or
interrogatories and must be
originally set or as reset. Disclosure correspondence, to resolve with the
accompanied by a copy of the
deadlines and obligations may be other party or the attorney therefor the
interrogatories, if any, which have
modified upon written stipulation of the issues presented in the motion but the
already been served by the moving
parties approved by the Board, or upon parties were unable to resolve their
party, and by a copy of the
motion granted by the Board, or by differences. If issues raised in the
interrogatories proposed to be served. If
order of the Board. If a stipulation or motion are subsequently resolved by
a party upon which interrogatories have
motion for modification is denied, agreement of the parties, the moving
been served believes that the number of
disclosure deadlines may remain as party should inform the Board in
interrogatories exceeds the limitation
originally set or reset and obligations writing of the issues in the motion
specified in this paragraph, and is not which no longer require adjudication.
may remain unaltered. The parties are willing to waive this basis for objection, (2) When a party files a motion for an
not required to prepare or transmit to the party shall, within the time for (and order to compel initial disclosures,
the Board a written report outlining instead of) serving answers and specific expert testimony disclosure, or
their discovery conference discussions, objections to the interrogatories, serve a discovery, the case will be suspended
unless the parties have agreed to alter general objection on the ground of their by the Board with respect to all matters
disclosure or discovery obligations set excessive number. If the inquiring party, not germane to the motion. After the
forth by these rules or applicable in turn, files a motion to compel motion is filed and served, no party
Federal Rules of Civil Procedure, or discovery, the motion must be should file any paper that is not
unless directed to file such a report by accompanied by a copy of the set(s) of germane to the motion, except as
a participating Board Interlocutory the interrogatories which together are otherwise specified in the Board’s
Attorney or Administrative Trademark said to exceed the limitation, and must suspension order. Nor may any party
Judge. otherwise comply with the requirements serve any additional discovery until the
(3) A party must make its initial of paragraph (e) of this section. period of suspension is lifted or expires
disclosures prior to seeking discovery, * * * * * by or under order of the Board. The
absent modification of this requirement (e) Motion for an order to compel filing of a motion to compel any
by a stipulation of the parties approved disclosure or discovery. (1) If a party disclosure or discovery shall not toll the
by the Board, or a motion granted by the fails to make required initial disclosures time for a party to comply with any
Board, or by order of the Board. or expert testimony disclosure, or fails disclosure requirement or to respond to
Discovery depositions must be taken, to designate a person pursuant to Rule any outstanding discovery requests or to
and interrogatories, requests for 30(b)(6) or Rule 31(a) of the Federal appear for any noticed discovery
production of documents and things, Rules of Civil Procedure, or if a party, deposition.
and requests for admission must be or such designated person, or an officer, (f) Motion for a protective order. Upon
served, on or before the closing date of director or managing agent of a party motion by a party obligated to make
initial disclosures or expert testimony make any appropriate order, as specified made of record in the case by filing the
disclosure or from whom discovery is in paragraph (g)(1) of this section. deposition or any part thereof with any
sought, and for good cause, the (h) * * * exhibit to the part that is filed, or a copy
Trademark Trial and Appeal Board may (2) When a party files a motion to of the interrogatory and answer thereto
make any order which justice requires determine the sufficiency of an answer with any exhibit made part of the
to protect a party from annoyance, or objection to a request for an answer, or a copy of the request for
embarrassment, oppression, or undue admission, the case will be suspended admission and any exhibit thereto and
burden or expense, including one or by the Board with respect to all matters the admission (or a statement that the
more of the types of orders provided by not germane to the motion. After filing party from which an admission was
clauses (1) through (8), inclusive, of and service of the motion, no party requested failed to respond thereto), or
Rule 26(c) of the Federal Rules of Civil should file any paper that is not a copy of the written disclosure,
Procedure. If the motion for a protective germane to the motion, except as together with a notice of reliance. The
order is denied in whole or in part, the otherwise specified in the Board’s notice of reliance and the material
Board may, on such conditions (other suspension order. Nor may any party submitted thereunder should be filed
than an award of expenses to the party thereafter serve any additional during the testimony period of the party
prevailing on the motion) as are just, discovery until the period of suspension that files the notice of reliance. An
order that any party comply with is lifted or expires by or under order of objection made at a discovery
disclosure obligations or provide or the Board. The filing of a motion to deposition by a party answering a
permit discovery. determine the sufficiency of an answer question subject to the objection will be
(g) Sanctions. (1) If a party fails to or objection to a request for admission considered at final hearing.
participate in the required discovery shall not toll the time for a party to (ii) A party that has obtained
conference, or if a party fails to comply comply with any disclosure requirement documents from another party through
with an order of the Trademark Trial or to respond to any outstanding disclosure or under Rule 34 of the
and Appeal Board relating to disclosure discovery requests or to appear for any Federal Rules of Civil Procedure may
or discovery, including a protective noticed discovery deposition. not make the documents of record by
order, the Board may make any (i) Telephone and pretrial notice of reliance alone, except to the
appropriate order, including those conferences. (1) Whenever it appears to extent that they are admissible by notice
provided in Rule 37(b)(2) of the Federal the Trademark Trial and Appeal Board of reliance under the provisions of
Rules of Civil Procedure, except that the that a stipulation or motion filed in an § 2.122(e).
Board will not hold any person in inter partes proceeding is of such nature
contempt or award expenses to any * * * * *
that its approval or resolution by (5) Written disclosures, an answer to
party. The Board may impose against a correspondence is not practical, the
party any of the sanctions provided in an interrogatory, or an admission to a
Board may, upon its own initiative or request for admission, may be submitted
Rule 37(b)(2) in the event that said party upon request made by one or both of the
or any attorney, agent, or designated and made part of the record only by the
parties, address the stipulation or receiving or inquiring party except that,
witness of that party fails to comply resolve the motion by telephone
with a protective order made pursuant if fewer than all of the written
conference. disclosures, answers to interrogatories,
to Rule 26(c) of the Federal Rules of (2) Whenever it appears to the
Civil Procedure. A motion for sanctions or fewer than all of the admissions, are
Trademark Trial and Appeal Board that offered in evidence by the receiving or
against a party for its failure to
questions or issues arising during the inquiring party, the disclosing or
participate in the required discovery
interlocutory phase of an inter partes responding party may introduce under a
conference must be filed prior to the
proceeding have become so complex notice of reliance any other written
deadline for any party to make initial
that their resolution by correspondence disclosures, answers to interrogatories,
disclosures.
(2) If a party fails to make required or telephone conference is not practical or any other admissions, which should
initial disclosures or expert testimony and that resolution would likely be in fairness be considered so as to make
disclosure, and such party or the party’s facilitated by a conference in person of not misleading what was offered by the
attorney or other authorized the parties or their attorneys with an receiving or inquiring party. The notice
representative informs the party or Administrative Trademark Judge or an of reliance filed by the disclosing or
parties entitled to receive disclosures Interlocutory Attorney of the Board, the responding party must be supported by
that required disclosures will not be Board may, upon its own initiative or a written statement explaining why the
made, the Board may make any upon motion made by one or both of the disclosing or responding party needs to
appropriate order, as specified in parties, request that the parties or their rely upon each of the additional written
paragraph (g)(1) of this section. If a attorneys, under circumstances which disclosures or discovery responses
party, or an officer, director, or will not result in undue hardship for listed in the disclosing or responding
managing agent of a party, or a person any party, meet with the Board at its party’s notice, and absent such
designated under Rule 30(b)(6) or 31(a) offices for a disclosure, discovery or statement the Board, in its discretion,
of the Federal Rules of Civil Procedure pretrial conference. may refuse to consider the additional
to testify on behalf of a party, fails to (j) Use of discovery deposition, answer written disclosures or responses.
attend the party’s or person’s discovery to interrogatory, admission or written (6) Paragraph (j) of this section will
deposition, after being served with disclosure. not be interpreted to preclude reading or
proper notice, or fails to provide any * * * * * use of written disclosures or documents,
response to a set of interrogatories or to (3)(i) A discovery deposition, an a discovery deposition, or answer to an
a set of requests for production of answer to an interrogatory, an interrogatory, or admission as part of the
documents and things, and such party admission to a request for admission, or examination or cross-examination of
or the party’s attorney or other a written disclosure (but not a disclosed any witness during the testimony period
authorized representative informs the document), which may be offered in of any party.
party seeking discovery that no response evidence under the provisions of (7) When a written disclosure, a
will be made thereto, the Board may paragraph (j) of this section, may be discovery deposition, or a part thereof,
or an answer to an interrogatory, or an alternate schedule as may be provided respect to any witness, an adverse party
admission, has been made of record by by order of the Board, the party may cross-examine that witness under
one party in accordance with the scheduled to present evidence must protest while reserving the right to
provisions of paragraph (j)(3) of this disclose the name and, if not previously object to the receipt of the testimony in
section, it may be referred to by any provided, the telephone number and evidence. Promptly after the testimony
party for any purpose permitted by the address of each witness from whom it is completed, the adverse party, to
Federal Rules of Evidence. intends to take testimony, or may take preserve the objection, shall move to
(8) Written disclosures or disclosed testimony if the need arises, general strike the testimony from the record,
documents, requests for discovery, identifying information about the which motion will be decided on the
responses thereto, and materials or witness, such as relationship to any basis of all the relevant circumstances.
depositions obtained through the party, including job title if employed by A motion to strike the testimony of a
disclosure or discovery process should a party, or, if neither a party nor related witness for lack of proper or adequate
not be filed with the Board, except to a party, occupation and job title, a pretrial disclosure may seek exclusion
when submitted with a motion relating general summary or list of subjects on of the entire testimony, when there was
to disclosure or discovery, or in support which the witness is expected to testify, no pretrial disclosure, or may seek
of or in response to a motion for and a general summary or list of the exclusion of that portion of the
summary judgment, or under a notice of types of documents and things which testimony that was not adequately
reliance, when permitted, during a may be introduced as exhibits during disclosed in accordance with § 2.121(e).
party’s testimony period. the testimony of the witness. Pretrial A motion to strike the testimony of a
■ 11. Revise paragraphs (a) and (d), and disclosure of a witness under this witness for lack of proper or adequate
add paragraph (e), to read as follows: subsection does not substitute for notice of examination must request the
issuance of a proper notice of exclusion of the entire testimony of that
§ 2.121 Assignment of times for taking examination under § 2.123(c) or
testimony. witness and not only a part of that
§ 2.124(b). If a party does not plan to testimony.
(a) The Trademark Trial and Appeal take testimony from any witnesses, it
Board will issue a trial order setting a * * * * *
must so state in its pretrial disclosure.
deadline for each party’s required ■ 14. Amend § 2.126 as follows:
When a party fails to make required
pretrial disclosures and assigning to ■ A. Revise paragraph (a)(6).
pretrial disclosures, any adverse party
each party its time for taking testimony. ■ B. Remove paragraph (b).
or parties may have remedy by way of
No testimony shall be taken except ■ C. Redesignate paragraphs (c) and (d)
a motion to the Board to delay or reset
during the times assigned, unless by any subsequent pretrial disclosure as paragraphs (b) and (c), respectively.
stipulation of the parties approved by deadlines and/or testimony periods. § 2.126 Form of submissions to the
the Board, or upon motion granted by ■ 12. Revise § 2.122(d)(1) to read as Trademark Trial and Appeal Board.
the Board, or by order of the Board. The follows:
deadlines for pretrial disclosures and (a) * * *
the testimony periods may be § 2.122 Matters in evidence. (6) Exhibits pertaining to a paper
rescheduled by stipulation of the parties submission must be filed on paper and
* * * * *
approved by the Board, or upon motion comply with the requirements for a
(d) * * *
granted by the Board, or by order of the (1) A registration of the opposer or paper submission.
Board. If a motion to reschedule any petitioner pleaded in an opposition or * * * * *
pretrial disclosure deadline and/or petition to cancel will be received in ■ 15. Revise § 2.127(a), (c), and (e) to
testimony period is denied, the pretrial evidence and made part of the record if read as follows:
disclosure deadline or testimony period the opposition or petition is
and any subsequent remaining periods accompanied by an original or § 2.127 Motions.
may remain as set. The resetting of the photocopy of the registration prepared (a) Every motion must be submitted in
closing date for discovery will result in and issued by the United States Patent written form and must meet the
the rescheduling of pretrial disclosure and Trademark Office showing both the requirements prescribed in § 2.126. It
deadlines and testimony periods current status of and current title to the shall contain a full statement of the
without action by any party. registration, or by a current printout of grounds, and shall embody or be
* * * * * information from the electronic database accompanied by a brief. Except as
(d) When parties stipulate to the records of the USPTO showing the provided in paragraph (e)(1) of this
rescheduling of a deadline for pretrial current status and title of the section, a brief in response to a motion
disclosures and subsequent testimony registration. For the cost of a copy of a shall be filed within fifteen days from
periods or to the rescheduling of the registration showing status and title, see the date of service of the motion unless
closing date for discovery and the § 2.6(b)(4). another time is specified by the
rescheduling of subsequent deadlines * * * * * Trademark Trial and Appeal Board, or
for pretrial disclosures and testimony the time is extended by stipulation of
■ 13. Revise § 2.123(e)(3) to read as
periods, a stipulation presented in the the parties approved by the Board, or
follows:
form used in a trial order, signed by the upon motion granted by the Board, or
parties, or a motion in said form signed § 2.123 Trial testimony in inter partes upon order of the Board. If a motion for
by one party and including a statement cases. an extension is denied, the time for
that every other party has agreed * * * * * responding to the motion remains as
thereto, shall be submitted to the Board. (e) * * * specified under this section, unless
(e) A party need not disclose, prior to (3) Every adverse party shall have full otherwise ordered. Except as provided
its testimony period, any notices of opportunity to cross-examine each in paragraph (e)(1) of this section, a
reliance it intends to file during its witness. If pretrial disclosures or the reply brief, if filed, shall be filed within
testimony period. However, no later notice of examination of witnesses fifteen days from the date of service of
than fifteen days prior to the opening of served pursuant to paragraph (c) of this the brief in response to the motion. The
each testimony period, or on such section are improper or inadequate with time for filing a reply brief will not be
extended. The Board will consider no extended. The Board will consider no to the application or registration, the
further papers in support of or in further papers in support of or in Board will allow the party time in
opposition to a motion. Neither the brief opposition to a motion for summary which to file a motion that the
in support of a motion nor the brief in judgment. application or registration be amended
response to a motion shall exceed (2) For purposes of summary to conform to the findings of the Board,
twenty-five pages in length in its judgment only, the Board will consider failing which judgment will be entered
entirety, including table of contents, any of the following, if a copy is against the party.
index of cases, description of the record, provided with the party’s brief on the * * * * *
statement of the issues, recitation of the summary judgment motion: written ■ 18. Revise § 2.142(e)(1) to read as
facts, argument, and summary. A reply disclosures or disclosed documents, a follows:
brief shall not exceed ten pages in discovery deposition or any part thereof
length in its entirety. Exhibits submitted with any exhibit to the part that is filed, § 2.142 Time and manner of ex parte
in support of or in opposition to a an interrogatory and answer thereto appeals.
motion are not considered part of the with any exhibit made part of the * * * * *
brief for purposes of determining the answer, a request for production and the (e)(1) If the appellant desires an oral
length of the brief. When a party fails to documents or things produced in hearing, a request should be made by a
file a brief in response to a motion, the response thereto, or a request for separate notice filed not later than ten
Board may treat the motion as admission and any exhibit thereto and days after the due date for a reply brief.
conceded. An oral hearing will not be the admission (or a statement that the Oral argument will be heard by at least
held on a motion except on order by the party from which an admission was three Administrative Trademark Judges
Board. requested failed to respond thereto). of the Trademark Trial and Appeal
* * * * * * * * * * Board at the time specified in the notice
(c) Interlocutory motions, requests, ■ 16. Revise § 2.129(a) to read as
of hearing, which may be reset if the
and other matters not actually or follows: Board is prevented from hearing the
potentially dispositive of a proceeding argument at the specified time or, so far
may be acted upon by a single § 2.129 Oral argument; reconsideration. as is convenient and proper, to meet the
Administrative Trademark Judge of the (a) If a party desires to have an oral wish of the appellant or the appellant’s
Trademark Trial and Appeal Board or argument at final hearing, the party attorney or other authorized
by an Interlocutory Attorney of the shall request such argument by a representative.
Board to whom authority so to act has separate notice filed not later than ten * * * * *
been delegated. days after the due date for the filing of ■ 19. Revise § 2.173(a) to read as
* * * * * the last reply brief in the proceeding. follows:
(e)(1) A party may not file a motion Oral arguments will be heard by at least
for summary judgment until the party three Administrative Trademark Judges § 2.173 Amendment of registration.
has made its initial disclosures, except of the Trademark Trial and Appeal (a) A registrant may apply to amend
for a motion asserting claim or issue Board at the time specified in the notice a registration or to disclaim part of the
preclusion or lack of jurisdiction by the of hearing. If any party appears at the mark in the registration. The registrant
Trademark Trial and Appeal Board. A specified time, that party will be heard. must submit a written request
motion for summary judgment, if filed, If the Board is prevented from hearing specifying the amendment or disclaimer
should be filed prior to the the case at the specified time, a new and, if the registration is involved in an
commencement of the first testimony hearing date will be set. Unless inter partes proceeding before the
period, as originally set or as reset, and otherwise permitted, oral arguments in Trademark Trial and Appeal Board, the
the Board, in its discretion, may deny as an inter partes case will be limited to request must be filed by appropriate
untimely any motion for summary thirty minutes for each party. A party in motion to the Board. This request must
judgment filed thereafter. A motion the position of plaintiff may reserve part be signed by the registrant and verified
under Rule 56(f) of the Federal Rules of of the time allowed for oral argument to or supported by a declaration under
Civil Procedure, if filed in response to present a rebuttal argument. § 2.20, and accompanied by the required
a motion for summary judgment, shall * * * * * fee. If the amendment involves a change
be filed within thirty days from the date ■ 17. Revise § 2.133 (a) and (b) to read
in the mark, the registrant must submit
of service of the summary judgment as follows: a new specimen showing the mark as
motion. The time for filing a motion used on or in connection with the goods
under Rule 56(f) will not be extended. § 2.133 Amendment of application or or services, and a new drawing of the
If no motion under Rule 56(f) is filed, a registration during proceedings. amended mark. The registration as
brief in response to the motion for (a) An application subject to an amended must still contain registrable
summary judgment shall be filed within opposition may not be amended in matter, and the mark as amended must
thirty days from the date of service of substance nor may a registration subject be registrable as a whole. An
the motion unless the time is extended to a cancellation be amended or amendment or disclaimer must not
by stipulation of the parties approved by disclaimed in part, except with the materially alter the character of the
the Board, or upon motion granted by consent of the other party or parties and mark.
the Board, or upon order of the Board. the approval of the Trademark Trial and * * * * *
If a motion for an extension is denied, Appeal Board, or upon motion granted ■ 20. Revise § 2.176 to read as follows:
the time for responding to the motion by the Board.
for summary judgment may remain as (b) If, in an inter partes proceeding, § 2.176 Consideration of above matters.
specified under this section. A reply the Trademark Trial and Appeal Board The matters in §§ 2.171 to 2.175 will
brief, if filed, shall be filed within finds that a party whose application or be considered in the first instance by the
fifteen days from the date of service of registration is the subject of the Post Registration Examiners, except for
the brief in response to the motion. The proceeding is not entitled to registration requests to amend registrations involved
time for filing a reply brief will not be in the absence of a specified restriction in inter partes proceedings before the
Trademark Trial and Appeal Board, as § 2.146. If the registrant does not Dated: July 19, 2007.
specified in § 2.173(a), which shall be respond to an adverse action of the Jon W. Dudas,
considered by the Board. If an action of Examiner within six months of the Under Secretary of Commerce for Intellectual
the Post Registration Examiner is mailing date, the matter will be Property and Director of the United States
adverse, registrant may petition the considered abandoned. Patent and Trademark Office.
Director to review the action under [FR Doc. E7–14702 Filed 7–31–07; 8:45 am]
BILLING CODE 3510–16–P

Rule: Practice and Procedure: Trademark Trial and Appeal Board Rules Miscellaneous Changes

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