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Trademark Trial and Appeal Board Publishes Package of Revisions to Rules of Practice

Intellectual Property Law Alert Jonathan Hudis

Today, October 7, 2016, the Trademark Trial and Appeal Board (TTAB or Board) of the U.S. Patent and Trademark Office (USPTO), published a rather large and significant package of changes to its Rules of Practice. Here is a link to the Amended Rules as published, and a chart summarizing the changes.

On April 4, 2016, the USPTO published a Notice of Proposed Rulemaking, suggesting extensive changes to the TTAB’s Rules of Practice. After undertaking numerous outreach efforts to effected members of the trademark bar and their clients, the TTAB today published its package of the final Rules changes at 81 Fed. Reg. 69950. The revised rules take effect on January 14, 2017.

Some of the chief revisions to the Board’s Rules of Practice include:

  1. All filings with the TTAB must be submitted electronically through its Electronic System for Trademark Trials and Appeals (ESTTA), unless excused via Petition to Director of the USPTO.
  2. Instead of the Plaintiff, the TTAB will once again undertake the responsibility for service on the Defendant of the initial pleading in the proceedings (such as the Notice of Opposition or Petition for Cancellation), and service will be by e-mail.
  3. Service of all papers (by the TTAB and by the parties on each other) must be by e-mail.
  4. As is presently the limitation on interrogatories, requests for production and requests for admissions will be limited to 75 in number. One additional comprehensive admission request will be permitted for authentication of the adverse party’s produced documents. Parties may seek leave from the TTAB to exceed these limitations upon a showing of good cause.
  5. Parties will have the right to submit trial testimony by declaration or affidavit. However, an adverse party shall have the right to take testimonial depositions to cross-examine each declarant/affiant.
  6. The minimum character size for written submissions to the TTAB will remain at 11 point font.
  7. All discovery must be completed during the discovery period. Therefore, discovery requests must be served sufficiently in advance of the discovery deadline so that the responses are due on or before the deadline.
  8. The requirements for Notices of Reliance have been updated to reflect current TTAB practice (for example, printouts of Internet documents).

We recommend that counsel representing trademark owners before the Board study these changes and modify their TTAB practices accordingly.

For questions, please contact Jonathan Hudis at jonathan.hudis@quarles.com/(202) 372-9528, or your Quarles & Brady attorney.