On 14 January 2017, the United States Patent and Trademark Office (USPTO) implemented several important amendments to the rules of practice governing opposition, cancellation and concurrent use proceedings before the Trademark Trial and Appeal Board (TTAB). These changes have retroactive effect and apply to all filings and cases pending as of January 14, 2017, and any filings or cases commenced thereafter. The amendments are intended to encourage electronic filings, simplify various procedures, reduce certain discovery and trial burdens placed on litigants, and will bring the rules in line with the recent amendments to the Federal Rules of Civil Procedure. While the changes are numerous and nuanced, some key highlights include:
Mandatory Electronic Filing & Service
Filing: Absent technical problems or extraordinary circumstances, all filings must now be made electronically, through the TTAB’s Electronic System for Trademark Trials and Appeals (ESTTA). In recent years, the majority of filings have been submitted electronically through ESTTA and therefore, this change is only expected to impact the small percentage of litigants and practitioners who are accustomed to filing on paper.
Service: The TTAB will now be responsible for serving applicants and respondents with notices of opposition, petitions for cancellation, and concurrent use proceedings by email, which will be sent to the parties automatically, with a link to access the pleading online. In doing so, the USPTO has shifted the burden of serving defendants back to the Board, which is consistent with the TTAB’s practice prior to 2007. All other documents must be served by the parties electronically, by email, unless stipulated otherwise. As a result, the rules no longer allow parties to claim the benefit of a five-day grace period (commonly known as the "mailbox rule"), which previously allotted for additional time to respond to documents served by mail or courier.
Limitations on Discovery
Consistent with the 2015 amendments to the Federal Rules of Civil Procedure, the new TTAB rules explicitly incorporate the principle of "proportionality." Parties are now expected to consider the significance of the discovery sought in light of the particular issues at stake, the importance of the information, and the relative costs involved. The rules also place a cap on the number document requests and requests for admission to seventy-five. The maximum amount of interrogatories that may be served will remain at seventy-five. In addition, motions to compel and motions for summary judgment must now be filed prior to the plaintiff’s deadline for filing pretrial disclosures.
During the trial or "testimony" phase of the case, the parties now have the option of unilaterally submitting witness testimony by affidavit or declaration, subject to the adverse party’s right to conduct a live cross-examination of that witness at the adverse party’s expense – a practice that was previously permitted by stipulation alone. In addition, notices of reliance, which are used to identify the documents to be relied upon at trial, must explain the relevance of the evidence introduced and must tie that piece of evidence to one or more of the issues at stake in the proceeding.
The USPTO has implemented a new schedule of fees. Most notably, the USPTO will now charge a fee for requesting an extension of time to oppose an application for any extensions beyond 30 days. For example, a subsequent 60-day extension of time will cost $100 per application, as will an initial 90-day extension of time. The final 60-day extension of time, which requires the consent of the applicant, will cost $200 per application. Additionally, the fee to electronically file a statement of use (under Sections 8 and 71) will increase from $100 to $125 per class, whereas the fee to file an electronic extension of time to file a statement of use will decrease from $150 per class to $125 per class.