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USPTO Alters Its Trademark Rules of Practice

Source: Grill IP patents news

uspto-trademark-rules-amendmentsThe US Patent and Trade Office published a Federal Register Notice of Final Rulemaking amending the Trademark Rules of Practice on October 7th. These rules of practice govern practice before the Trademark Trial and Appeal Board. These amendments reduce the burden of the parties and hasten TTAB proceedings.

    These amendments include administrative alterations, a new unilateral option to submit trial testimony via the declaration of an affidavit and new limitations to discovery requests. All substantive criteria used to determine cases remain unchanged. These amendments take effect on January 14th, and will apply to all proceedings pending at that point or filed afterward.

    The TTAB’s online filing system, the Electronic System for Trademark Trials and Appeals (ESTTA) must now be used for all case filings. Additionally, for the sake of simplification, the amendments eliminate service requirements for parties initiating cancellation, opposition, or concurrent use proceedings. Instead, the USPTO assumes this role, issuing notices of opposition and petitions for cancellation to defendants via email links to the TTABVUE database. Any other papers served on a party and other submissions to the TTAB must be delivered by email, ridding parties of a need to stipulate to electronic services. That said, these rules also permit parties to stipulate to alternative communication methods (ex. file sharing services).

    Discovering limitations are included in these amendments, streamlining TTAB proceedings. These changes limit the number of requests for production and documents and for admission to 75. All discoveries, including the inspection and production of trial documents, must be finalized by six-months. This contrasts with the current process, whereby all parties may serve discovery requests until the last day of discovery, which effectively makes response deadlines extend past the close of discovery. Additionally, the 2015 proportionality requirement to the Federal Rules of Civil Procedure are adopted with this current batch of amendments.

    The new rules alter trial procedure, which codify common practice and recent case law. The most substantial changes permit parties to unilaterally select to submit trial testimony by declaration or affidavit, subject to the adverse parties’ rights to bear the expense of oral cross-examination. This option for producing testimony is just one form of Accelerated Case Resolution (ACR), whose availability is contingent on the agreement of all parties in the dispute.

    The amendments codify other forms of ACR, such as stipulating that summary judgment cross-motions substitute for traditional briefs and trial records at hearings, shortened trial periods, and stipulating to factors or to the admissibility of evidence.

    Further amendments codifying TTAB practice and case law involve the ability to submit Internet materials under a notice of reliance, the option for TTAB members and parties to remotely attend oral hearings, and the Board’s discretion to treat materials that cannot reasonably be deemed confidential as not confidential.

    These revised Trademark Rules are essentially a confirmation of existing practice, aligning de facto and formal procedure. They stand to quicken litigation and trademark approval, although whether or not that will lead to an increase in cases appearing before the TTAB remains to be seen.

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Author: grill-ip

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