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Big Changes Ahead for Trademark Trial and Appeal Board Practice

With the recent implementation of major amendments to the Trademark Rules (“Rules”), next year promises to bring significant changes to practice before the Trademark Trial and Appeal Board (“Board”). The Board is responsible for administering Appeals, Oppositions to Registration, Cancellation proceedings against registered marks, and Concurrent Use proceedings in trademark matters before the U.S. Patent and Trademark Office (“USPTO”).  Effective January 2017, the amendments to the Rules and fee adjustments are designed to encourage and facilitate electronic filing and discovery practices, discourage excessive discovery and delays in proceedings, and align fees with full costs. Five noteworthy amendments to the Rules are discussed below:

1.         Electronic Filing Requirement
Technology changes since the last time the Rules were amended in 2007 permit the Board to move closer towards its goal of a fully integrated paperless filing and docketing system. Accordingly, the amended Rules require all filings be made through the Board’s online filing system, the Electronic System for Trademark Trials and Appeals (ESTTA).
2.         Service and Electronic Communication
Under the current Rules, the plaintiff in an Opposition, Cancellation, or Concurrent Use proceeding is required to serve the complaint on the defendant. The amended Rules shift the responsibility for serving the complaint to the Board. In keeping with the electronic filing requirement, the Board will now serve the complaint in the form of a link to the Board’s electronic case file system (“TTABVUE”) in the notice of institution.
While the current Rules permit and encourage parties to stipulate to electronic service for all filings with the Board, the amended Rules require electronic service for all filings with the Board and any papers served on a party not required to be filed with the Board (e.g., discovery). However, the amended Rules do allow parties to stipulate to other methods of service that may promote expediency (e.g., delivery of a USB drive).
3.         Discovery Limitations
Under the current Rules, there are no limitations on the number of Requests for Production of Documents and Requests for Admissions, which has led to abusive discovery tactics. Interrogatories are currently limited to 75, which is still in excess of the practice in many federal courts. The amended Rules limit the number of Requests for Production of Documents and Requests for Admissions to 75, the same as the current limitation on Interrogatories. Parties have the option to move for additional requests for good cause. Furthermore, all parties who receive documents may serve one comprehensive Request for Admission on the producing party to authenticate all produced documents or identify what documents cannot be authenticated.
4.         Discovery Must be Complete at Close of Six-Month Discovery Period
The amended Rules streamline the discovery process by requiring that all discovery, including the production and inspection of documents, be complete by the close of discovery. This amendment is designed to prevent parties from serving discovery requests up to the last day of discovery. Thus, the amended Rules require parties to serve discovery requests at least thirty days before the close of discovery.
5.         Fee Increases
Finally, the USPTO will be increasing fees to align with its full costs. Starting in January 2017, the ex parte appeal filing fee will increase from $100 to $200, per class. Likewise, the official fee for filing a Notice of Opposition or Petition for Cancellation will increase from $300 to $400, per class.
Also, the USPTO is establishing new fees for filing Extensions of Time to oppose a published application. While the initial 30-day Extension of Time will continue to have no official fee, the amended Rules will require a $100 fee for filing a second 60-day Extension of Time and a $200 fee for filing the final permitted 60-day Extension of Time.
Nath, Goldberg & Meyer regularly represents clients in matters before the Board. Please do not hesitate to contact us should you have any questions regarding the amendments to the Rules.

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Email: ip@nathlaw.com