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Special Feature: The Trademark Trial and Appeal Board Changes Its Rules of Practice: A New Era of Enhanced Disclosure

Friday, August 03, 2007

By Jonathan Hudis

Jonathan Hudis is a member of Oblon, Spivak, McClelland, Maier & Neustadt, P.C., located in Alexandria, Virginia, and practices in the Firm’s Trademark and Copyright Department. © 2007.

On August 1, 2007, the U.S. Department of Commerce announced sweeping changes to the Rules of Practice in inter partes matters (oppositions, cancellation proceedings, and concurrent use proceedings) before the Trademark Trial and Appeal Board (the "Board") of the U.S. Patent and Trademark Office (the "USPTO"). The initial proposal for these rules changes published in January 2006, so the publication of this final rules package has been percolating for 19 months. The implications of these changes are significant for any party (and its counsel) who litigates trademark registrability proceedings before the Board. According to the announcement in the Federal Register Notice (Fed. Reg. Vol. 72, No. 147, at pp. 42242-42264) the rules changes were promulgated to increase the efficiency of Board proceedings, enhance settlement possibilities, encourage greater disclosure of information, and promote procedural fairness. The rules changes, in their final form, are a pleasant far cry from the draconian changes originally proposed, due to significant comments from bar and industry groups.

The most important points of these proposed rules changes are as follows:

  1. A party’s opening pleading must be served by the plaintiff on the defendant at its last known address of record on file with the USPTO (under prior practice, the Board served the opening pleading after it was filed).
  2. With the consent of the party served, it will now be possible to serve pleadings by e-mail or by facsimile.
  3. The Board’s Standard Protective Order will automatically apply to all Board proceedings, unless the parties agree to another form which is approved by the Board.
  4. There is a new requirement for an initial discovery and settlement conference early in the proceedings, during which a Board Member or Interlocutory Attorney will participate if one of the parties timely requests this.
  5. There is a new requirement for initial mandatory disclosures, akin to what is now provided in Rule 26(a)(1), Fed. R. Civ. P. - with the disclosures being treated essentially as substantive evidence.
  6. Discovery may not be served and, with certain limited exceptions, a summary judgment motion may not be filed until after a party provides its initial mandatory disclosures.
  7. There is a new requirement for mandatory expert witness disclosures and discovery, akin to what is now provided in Rule 26(a)(2), Fed. R. Civ. P..
  8. There is a new requirement for pretrial mandatory disclosures, akin to what is now provided in Rule 26(a)(3), Fed. R. Civ. P. - with possible evidentiary consequences to the non-complying party.
  9. The opportunity for electronic filing of documents by CD-ROM has been repealed - due to earlier technical implementation problems.
  10. The Board has now clarified its rules on the page limits of briefs on motions.
  11. The Board has relaxed the rules on the technicalities required for making a party’s trademark registration of record for evidentiary purposes.
  12. Although the Board initially proposed to scale back the allowable number, the Board has left number of interrogatories a party may serve in a proceeding at 75 (accounting for sub-parts and compound questions).

While the Board’s rules changes bring its administrative litigation procedures closer to federal court litigation practice, it is the naïve litigator who would believe that skills acquired in court practice will directly and easily translate to Board practice. Registrability proceedings before the Board require a unique skill set, which includes not only general litigation knowledge but also detailed familiarity with U.S. trademark law as well as the rules insular to Board practice. The present rules changes put forward new challenges to parties who litigate registrability proceedings before the Board with any degree of regularity — the most significant of which will be the additional disclosure and adversarial communication requirements imposed at the beginning and at the end of the process. Whether these new requirements will benefit or detract from the efficiency of administrative trademark registrability proceedings shall remain an open question until the Trademark Bar has had the opportunity to test them in actual practice.

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