Alert: New Trademark Trial and Appeal Board Rules Coming January 14, 2017

In October, the Trademark Office issued amendments to the rules of practice before the Trademark Trial and Appeal Board (TTAB).  The TTAB oversees, among other things, trademark opposition and cancellation proceedings.

The new rules, set forth in a Notice of Final Rulemaking, are intended to provide for more efficiency and clarity, move the TTAB toward a fully integrated paperless filing system, streamline the discovery process, and prevent undue delay.  The rules go into effect on January 14, 2017, and apply to both newly filed and pending proceedings.

Changes include:

  • The filing fee for a notice of opposition or a petition to cancel will be $400 (up from $300).
  • There will be a fee to extend time to file a notice of opposition, following an initial 30-day extension.  The fee will be $100 per class for the first 60 days, and $200 per class for an additional 90 days.
  • All filings must be made electronically.
  • The TTAB will automatically serve notices of opposition, cancellation and concurrent use proceedings on the respondent electronically.  All subsequent filings and other documents requiring service must be served via email.
  • Direct testimony will be allowed by declaration or affidavit.  (Currently, this can be done only if both parties consent.)  The opposing party will have the right to orally cross-examine witnesses who testify by declaration or affidavit.
  • Discovery must be served in time to be responded to during the discovery window.  Discovery requests therefore must be served at least 30 days before the close of the discovery period.
  • Requests for production of documents and requests for admission will both be capped at a maximum of 75.
  • The scope of discovery requests must align with the 2015 amendments to the Federal Rules of Civil Procedure, and be “proportional to the needs of the case” (rather than the old “reasonably calculated to lead to the discovery of admissible evidence” standard).

The TTAB is expected to publish a revised version of the Trademark Trial and Appeal Board Manual of Procedure early in 2017 to reflect the practice changes implemented by the new rules. The USPTO has published a chart summarizing all of the rule changes.

The new rules seem sensible, and should make contested trademark proceedings less costly, more streamlined, and more convenient for the parties involved.  The new rules are especially important in the wake of the Supreme Court’s 2015 B&B Hardwaredecision, which held TTAB decisions may have preclusive effect on subsequent court actions. Clients who litigate trademark disputes before the TTAB must do so with great care, given the potentially binding effect of Board decisions.