# Miscellaneous Changes to Trademark Trial and Appeal Board Rules of Practice

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URL: https://www.frixlaw.com/law-library/documents/fr%3A2016-23092

## Record

- **Collection:** Federal Register
- **Document type:** Rule
- **Published:** October 7, 2016
- **Citation:** 81 FR 69950

## Text

DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 2
[Docket No. PTO-T-2009-0030]
RIN 0651-AC35
Miscellaneous Changes to Trademark Trial and Appeal Board Rules of Practice

AGENCY:

United States Patent and Trademark Office, Commerce.

ACTION:

Final rule.

SUMMARY:

The United States Patent and Trademark Office (“USPTO” or “Office”) is amending the Trademark Rules of Practice (“Trademark Rules” or “Rules”), in particular the rules pertinent to practice before the Trademark Trial and Appeal Board (“Board”), to benefit the public by providing for more efficiency and clarity in inter partes and ex parte proceedings. Certain amendments are directed to reducing the burden on the parties, to conforming the rules to current practice, to updating references that have changed, to reflecting technologic changes, and to ensuring the usage of standard, current terminology. This final rule also furthers strategic objectives of the Office to increase end-to-end electronic processing.

DATES:

This rule is effective January 14, 2017.

FOR FURTHER INFORMATION CONTACT:

Cheryl Butler, Trademark Trial and Appeal Board, by email at
TTABFRNotices@uspto.gov,
or by telephone at (571) 272-4259.

SUPPLEMENTARY INFORMATION:

Executive Summary: Purpose:
The amendments to the rules emphasize the efficiency of electronic filing, which is already utilized by most parties in Board proceedings. In particular, all submissions will be filed through the Board's online filing system, the Electronic System for Trademark Trials and Appeals (“ESTTA”) (available at
http://www.uspto.gov
), except in certain limited circumstances. To simplify proceedings, the Office is resuming service requirements for notices of opposition, petitions for cancellation, and concurrent use proceedings, and is requiring parties to serve all other submissions and papers by email. The amended rules promote other efficiencies in proceedings, such as imposing discovery limitations, and allowing parties to take testimony by affidavit or declaration, with the option for oral cross-examination. The proportionality requirement implemented in the 2015 amendments to the Federal Rules of Civil Procedure is expressly reflected in the Board's amended rules, which in part adapt to recent changes to the Federal Rules of Civil Procedure while taking into account the administrative nature of Board proceedings.

Other amendments address the Board's standard protective order and codify recent case law, including the submission of internet materials. Recognition of remote attendance at oral hearings is codified, and new requirements for notification to the Office and the Board when review by way of civil action is taken are added in order to avoid premature termination of a Board proceeding. The amendments also make minor changes to correct or update certain rules so that they clearly reflect current Board practice and terminology.

Costs and Benefits:
This rulemaking is not economically significant under Executive Order 12866 (Sept. 30, 1993).

References below to “the Act,” “the Trademark Act,” or “the statute” refer to the Trademark Act of 1946, 15 U.S.C. 1051
et seq.,
as amended. References to “TBMP” refer to the June 2016 edition of the Trademark Trial and Appeal Board Manual of Procedure.

Background

Reasons for Proposed Rule Changes

The last major set of rule changes at the Board took effect in 2007; the time is ripe for changes that will assist stakeholders in achieving more efficient practice before the Board. In the years since 2007, technology changes have allowed Board operations to move much closer toward the goal of realizing a fully integrated paperless filing and docketing system. In addition, many stakeholders have embraced use of the Board's Accelerated Case Resolution (“ACR”) procedures, which have provided the Board with insight as to the effectiveness of the various procedures to which users of ACR have agreed, and which can be leveraged to benefit all parties involved in Board proceedings. The Federal Rules of Civil Procedure have changed in ways that are appropriate to recognize in Board rules at this time, and the Board rules must be updated to reflect precedential decisions of the Board and the courts.

Electronic Environment

Filing

The amended rules require all filings be made through ESTTA, except examining attorney filings in ex parte appeals which are filed through the Office's internal electronic system.

Service and Electronic Communication

In 2007, the USPTO amended the rules to require each plaintiff to serve the complaint on the defendant. This was a change from long-standing practice where the Board served the complaint on the defendant with the notice of institution. The rules now shift the responsibility for serving the complaint back to the Board. However, in keeping with the progress toward complete electronic communication, the Board will not forward a paper copy of the complaint, but rather will serve the complaint in the form of a link to, or web address for the Board's electronic case file system (“TTABVUE”) in the notice of institution.

Under the 2007 rules, parties were allowed (and encouraged) to stipulate to electronic service between the parties for all filings with the Board. Over the last few years, this has become the common practice, and the USPTO is codifying that practice in this final rule by requiring service between parties by email for all filings with the Board and any other papers served on a party not required to be filed with the Board (
e.g.,
disclosures, discovery, etc.). The rules nonetheless allow for parties to stipulate otherwise, to accommodate other methods of communication that may promote convenience and expediency (
e.g.,
a file hosting service that provides cloud storage, delivery of a USB drive, etc.). In addition, in the event service by email is not possible due to technical problems or extraordinary circumstances, and there is no stipulation to other methods, the party must include a statement with its submission or paper explaining why service by email was not possible, and the certificate of service must reflect the manner in which service was made. The statement is meant to assist the Board in ascertaining whether a repeating problem exists that may be alleviated with Board guidance. The statement is not intended to provide fertile ground for motion practice. In any event, methods of service of discovery requests and responses and document production remain subject to the parties' duty to cooperate under the Federal Rules of Civil Procedure and the Trademark Rules and are to be discussed during the settlement and discovery planning conference. Parties may avail themselves of Board participation in these conferences to ensure the most expeditious manner of service is achieved.

In view of service by email, the additional five days previously added to a prescribed period for response, to account for mail delays, is removed by

this final rule. The response period for a motion is initiated by its service date and runs for 20 days, except that the response period for summary judgment motions remains 30 days. Similarly, no additional time is available for the service of discovery responses.

Streamlining Discovery and Pretrial Procedure

The rules reflect amendments to the Federal Rules of Civil Procedure by addressing the concept of “proportionality” in process and procedure in discovery. In addition, this final rule codifies the ability of parties to stipulate to limit discovery by shortening the period, limiting requests, using reciprocal disclosures in lieu of discovery, or eliminating discovery altogether. To further reflect the Federal Rules of Civil Procedure, the rules explicitly include reference to electronically stored information (“ESI”) and tangible things as subject matter for discovery. The Board continues to view the universe of ESI within the context of its narrower scope of jurisdiction, as compared to that of the federal district courts. The burden and expense of e-discovery will weigh heavily in any consideration.
See Frito-Lay North America Inc.
v.
Princeton Vanguard LLC,
100 USPQ2d 1904, 1909 (TTAB 2011). The inclusion of ESI in the rule simply recognizes that many relevant documents are now kept in electronic form.

Under the amendments, motions to compel initial disclosures must be filed within 30 days after the deadline for initial disclosures.

The amended rules limit the number of requests for production of documents and requests for admissions to 75, the same as the current limitation on interrogatories, with the option to move for additional requests for good cause. In addition, the rules allow for each party that has received produced documents to serve one comprehensive request for admission on the producing party, whereby the producing party would authenticate specific produced documents or specify which of those documents cannot be authenticated. These limitations on discovery simply recognize general practice and are meant to curtail abuse and restrain litigation expense for stakeholders.

Many trial cases are quickly settled, withdrawn, or decided by default, and many others involve cooperative parties who engage in useful settlement and discovery planning conferences. For more contentious cases, parties may request involvement of a Board Interlocutory Attorney in the conference, and this final rule codifies the ability of the Interlocutory Attorneys to sua sponte participate in a discovery conference when they consider it useful. In addition, the circumstances under which telephone conferences with Interlocutory Attorneys can be sought by a party or initiated by the Interlocutory Attorney are broadened to encompass any circumstance in which they “would be beneficial.”

Under the amended rules, discovery must be served early enough in the discovery period that responses will be provided and all discovery will be complete by the close of discovery. This includes production of documents, which have to be produced or inspected by the close of discovery.

Under the amended rules, discovery disputes have to be resolved promptly following the close of discovery. The deadline for filing motions to compel discovery or to determine the sufficiency of responses to requests for admissions is now prior to the deadline for the plaintiff's pretrial disclosures for the first testimony period. These revisions are intended to avoid the expense and uncertainty that arise when discovery disputes erupt on the eve of trial. These changes also ensure that pretrial disclosures are made and trial preparation is engaged in only after all discovery issues have been resolved. In addition, the Board will be able to reset the pretrial disclosure deadline and testimony periods after resolving any motions relating to discovery and allowing time for compliance with any orders requiring additional responses or production.

In 2007, the rules were amended to make the Board's standard protective order applicable in all proceedings, during disclosure, discovery, and trial, though parties have been able to agree to alternative orders, subject to Board approval. This has worked well, and this final rule clarifies that the protective order is automatically applicable in all inter partes proceedings, subject to specified exceptions. Parties continue to have the flexibility to move forward under an alternative order by stipulation or motion approved by the Board. This final rule also codifies practice and precedent that the Board may treat as not confidential material that cannot reasonably be considered confidential, notwithstanding party designations.
See Edwards Lifesciences Corp.
v.
VigiLanz Corp.,
94 USPQ2d 1399, 1402-03 (TTAB 2010).

Since 2007, several types of consented motions for extensions and suspensions have been granted automatically by the Board's electronic filing system and this final rule codifies this practice, while retaining the ability of Board personnel to require that certain conditions be met prior to approval. Thus, the practice by which some consented motions to extend or suspend are not automatically approved and are reviewed and processed by a Board paralegal or attorney continues. In addition, non-dispositive matters can be acted on by paralegals, and the rules clarify that orders on motions under the designation, “By the Trademark Trial and Appeal Board,” have the same legal effect as orders by a panel of three judges.

To clarify the obligations of the parties and render the status and timeline for a case more predictable, this final rule provides that a trial proceeding is suspended upon filing of a timely, potentially dispositive motion.

As with the timing of motions relating to discovery disputes that remain unresolved by the parties at the close of discovery, referenced above, under the amended rules motions for summary judgment also have to be filed prior to the deadline for plaintiff's pretrial disclosures for the first testimony period. This avoids disruption of trial planning and preparation through the filing, as late as on the eve of trial, of motions for summary judgment.

The existing rule for convening a pretrial conference because of the complexity of issues is amended so that it is limited to exercise only by the Board, upon the Board's initiative.

Efficient Trial Procedures

For some time now, parties have had the option to stipulate to ACR, which can be adopted in various forms. A common approach is for parties to stipulate that summary judgment cross motions will substitute for a trial record and traditional briefs at final hearing and the Board may resolve any issues of fact that otherwise might be considered subject to dispute. Other approaches adopted by parties utilizing the efficiencies of the ACR process have included agreements to limit discovery, agreements to shorten trial periods or the time between trial periods, stipulations to facts or to the admissibility of documents or other evidence, and stipulations to proffers of testimony by declaration or affidavit. These types of efficiencies are codified through this final rule by specifically providing for such stipulations and, most significantly, by allowing a unilateral option for trial testimony by affidavit or declaration subject to the right of oral cross-examination by the adverse party or parties. Parties also continue to be able to stipulate to rely

on summary judgment materials as trial evidence.

This final rule codifies two changes in recent years, effected by case law and practice, expanding the option to submit certain documents by notice of reliance. First, this final rule codifies existing law that pleaded registrations and registrations owned by any party may be made of record via notice of reliance by submitting therewith a current copy of information from the USPTO electronic database records showing current status and title. The rules currently allow for such copies to be attached to the notice of opposition or petition for cancellation; the change specifically also allows for such copies to be submitted under notice of reliance. Second, this final rule codifies that internet materials also may be submitted under a notice of reliance, as provided by
Safer, Inc.
v.
OMS Investments, Inc.,
94 USPQ2d 1031 (TTAB 2010).

To alleviate any uncertainty, this final rule adds a paragraph to the requirements for a notice of reliance, specifically, to require that the notice indicate generally the relevance of the evidence and associate it with one or more issues in the proceeding. In an effort to curtail motion practice on this point, the rule explicitly states any failure of a notice of reliance to meet this requirement will be considered a curable procedural defect. This codifies the holding of
FUJIFILM SonoSite, Inc.
v.
Sonoscape Co.,
111 USPQ2d 1234, 1237 (TTAB 2014).

Under the rule changes, a party must file any motion to use a discovery deposition at trial along with its pretrial disclosures. Also, an adverse party is able to move to quash a notice of testimony deposition if the witness was not included in the pretrial disclosures, and an adverse party is able to move to strike testimony presented by affidavit or declaration if the witness was not included in the pretrial disclosure.

In response to
Cold War Museum Inc.
v.
Cold War Air Museum Inc.,
586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009), this final rule makes clear that while the file history of the subject application or registration is of record, statements in affidavits or declarations in the file are not testimony.

The Board has seen an increase in testimony deposition transcripts that do not include a word index, and the final rule requires a word index for all testimony transcripts. For ease of review, deposition transcripts also have to be submitted in full-sized format, not condensed with multiple pages per sheet. More broadly, the rules make clear that it is the parties' responsibility to ensure that all exhibits pertaining to an electronic submission must be clear and legible.

This final rule codifies case law and Board practice under which the Board may sua sponte grant judgment for the defendant when the plaintiff has not submitted evidence, even where the plaintiff has responded to the Board's show cause order for failure to file a brief but has either not moved to reopen its trial period or not been successful in any such motion.
Gaylord Entertainment Co.
v.
Calvin Gilmore Productions. Inc.,
59 USPQ2d 1369, 1372 (TTAB 2000).

To alleviate confusion and codify case law, the amended rules clarify that evidentiary objections may be set out in a separate appendix that does not count against the page limit for a brief and that briefs exceeding the page limit may not be considered by the Board.
Alcatraz Media Inc.
v.
Chesapeake Marine Tours Inc.,
107 USPQ2d 1750, 1753-54 (TTAB 2013) (Appropriate evidentiary objections may be raised in appendix or separate paper rather than in text of brief.),
aff'd,
565 F. App'x 900 (Fed. Cir. 2013) (mem.).

Remand Procedures/Appeal Procedures

Certain aspects of ex parte appeals procedure are clarified in the amendments. Under this final rule, evidence should not be filed with the Board after the filing of the notice of appeal to the Board and should be added to the record when attached to a timely request for reconsideration or via a request for remand. This is not a change to the substance of the existing rule, but is designed to address a recurring error by applicants during ex parte appeal to the Board.

Under the final rule, reply briefs in ex parte appeals are limited to 10 pages. To facilitate consideration and discussion of record evidence, citation to evidence in all the briefs for the appeal, by the applicant and examining attorney, are to the documents in the electronic application record by docket entry date and page number.

The amended rules align more closely the terminology of § 2.130 pertaining to the Board referring applications involved in inter partes proceedings back to the Trademark Examining Operation upon request with that of § 2.142(d) and (f)(6) remanding applications involved in ex parte appeals back to the Trademark Examining Operation. This is not a change to the substance of the existing rule.

Other Clarification of Board Practice and Codification of Case Law

Correlative to electronic filing and communication, the Board also has made it possible for parties, examining attorneys, and members of the Board to attend hearings remotely through video conference. This final rule codifies that option.

In §§ 2.106(a) and 2.114(a), this final rule codifies case law and practice to make it clear that when no answer has been filed, all other deadlines are tolled. If the parties have continued to litigate after an answer is late-filed, it will generally be viewed as a waiver of the technical default.

The amended rules provide that the grounds, goods, and services in a Notice of Opposition to an application under Trademark Act section 66(a) are limited to those identified on the ESTTA cover sheet. These amendments codify the holding of
Hunt Control Systems Inc.
v.
Koninklijke Philips Electronics N.V.,
98 USPQ2d 1558, 1561-62 (TTAB 2011). In addition, the rules clarify that after the close of the time period for filing a Notice of Opposition, the notice may not be amended to add a joint opposer.

Requirements for filing appeals of Board decisions are restructured to align with the rules governing review of Patent Trial and Appeal Board decisions. Further, all notices of appeal to the United States Court of Appeals for the Federal Circuit must be filed with the USPTO's Office of General Counsel and a copy filed with the Board via ESTTA. When a party seeks review of a Board inter partes decision by commencing a civil action, the amendments clarify that a notice of such commencement must be filed with the Board via ESTTA to avoid premature termination of the Board proceeding during pendency of the civil action. The amendments further require that both a notice and a copy of the complaint for review of an ex parte decision by way of civil action are to be filed with the USPTO's Office of General Counsel with a copy to be filed with the Board via ESTTA. In addition, requests to extend the time for filing an appeal, or commencing a civil action, are to be filed as provided in 37 CFR 104.2 and addressed to the attention of the Office of the Solicitor, and a copy should be filed with the Board via ESTTA.

Public Participation

The Board began in 2015 looking ahead to the implementation of changes in the Federal Rules of Civil Procedure then scheduled to take effect in December 2015. The Board also looked back on its multi-year campaign to

promote the use of ACR, to determine lessons learned, and to identify ways to leverage the benefits of ACR into all Board trial cases. For these and other reasons, it became clear that the timing was right to consider updating the Board's rules. On January 29, 2015, the Board held an ESTTA Users Forum, directed to issues and matters involving electronic filing. On February 19, 2015, the Board held a Stakeholder Roundtable concerning matters of practice and received comments and suggestions from various organizations representing intellectual property user groups, including in house counsel, outside counsel, and mark owners and applicants. That February roundtable involved discussion of many of the provisions that are now included in the rule package. The Board also engaged in significant stakeholder outreach throughout 2015, alerting users in locations across the country about the issues that they could expect to be addressed in prospective rulemaking. Finally, the Board engaged the Trademark Public Advisory Committee on process and procedure changes under consideration, on multiple occasions during the year. All of these events enriched the process through which the Board developed the rule changes and served as a precursor to the continuing discussion with stakeholders that the Office sought through the Notice of Proposed Rulemaking.

Proposed Rule and Request for Comments

A proposed rule was published in the
Federal Register
on April 4, 2016, at 81 FR 19295-19324. The Office received comments from five intellectual property organizations, two law firms, and 10 attorneys. These comments are posted on the Office's Web site at
http://www.uspto.gov/trademark/trademark-updates-and-announcements/comments-miscellaneous-changes-ttab-rules-practice,
and are addressed below.

The Office received many positive comments in favor of several rule changes and appreciates the public support. To streamline this final rule, such comments expressing support are not individually set forth and no specific responses to such comments are provided. In addition, comments and responses that apply more generally to issues and multiple rules are presented under the heading General Comments and Responses, while other comments and responses are interwoven into the Discussion of Rule Changes to provide context for those comments. Comments outside the scope of this rulemaking have been considered even if not specifically addressed herein.

General Comments and Responses

Electronic Filing

Comment:
One commenter noted that no ESTTA form exists for a combined notice of opposition and petition for cancellation, and suggested that either ESTTA should be enhanced to accommodate this filing, or an exception for paper filing with no fee should be permitted.

Response:
In view of the extremely small number of combined complaints, no ESTTA enhancement will be undertaken in the near future to accommodate this type of filing. Rather, a comparable outcome can be achieved by electronically filing separately a notice of opposition and a petition for cancellation and simultaneously requesting consolidation. The fee amount remains unchanged, as the combined filing did not provide any avoidance or reduction of fees per party or class sought to be opposed or cancelled.
See
TBMP section 305.02. Although the commenter noted the additional expense of requesting consolidation, the expense should be relatively minimal. Therefore, no exception to the requirement to file by ESTTA will be made for a combined filing, and prior case law allowing for this type of combined notice of opposition and petition for cancellation is superseded by the mandatory online filing requirement.

To facilitate proper handling, the motion for consolidation in this situation should be included in the same filing with the petition for cancellation, the institution of which will be processed by Board personnel rather than automatically instituted, as with most oppositions. The attached pleading should include a prominent reference to the motion to consolidate. This procedure will help bring the requested consolidation to the Board's attention more promptly.

Service by the Board

Comment:
Although all commenters who addressed the proposal supported the Board's resumption of its pre-2007 practice of serving the complaint, some commenters shared concerns about the manner of service. The proposed rules provided that, in all cases except those challenging a registered extension of protection under the Madrid Protocol, if the parties had provided email addresses to the Office, the Board would serve the complaint in the form of an email notice with a link to the appropriate entry in TTABVUE. Commenters articulated worry that the proposed method of serving the complaint may not sufficiently convey to pro se parties the seriousness of the proceeding or the importance of timely responding to the complaint. Some commenters expressed apprehensions that parties might mistake the email notice for a trademark-related solicitation, and therefore disregard it. Also regarding Board service of complaints by email, several commenters conveyed apprehensions that service emails may not reach the intended recipient either because of spam filtering or outdated email contact information. One commenter suggested informing applicants and registrants of the possibility of this type of email notification.

Response:
With regard to cancellations, at this juncture, the Board intends to serve by U.S. mail, pending system enhancements to facilitate email service. In anticipation of a future move toward email service of complaints in cancellation proceedings, the Office will supplement its existing efforts to emphasize to registrants the importance of maintaining correct and current email address information with the Office and taking steps to ensure that Office emails are not blocked by servers or spam filters, or diverted to junk mail folders.
See, e.g.,
the USPTO Web page entitled “Don't Miss Important E-Mails from the USPTO: Add the USPTO to your `Safe Senders' list,” which includes instructions to ensure that USPTO emails reach the recipient. In addition, the Office plans to implement the suggestion made by one commenter that the Office specifically notify registration owners when they receive their registration certificates that the Current Owner Address information in the USPTO's Trademark Status and Document Retrieval (“TSDR”) database, including the email address, may be used for service.

Turning to oppositions, the rules provide that notice of the opposition will be sent to the “email or correspondence address” of the appropriate recipient, as specified in the rules. Applicants would receive notices by email only if email communication has been authorized. Having authorized email communication, the recipient should be aware that this may include official USPTO correspondence requiring a timely response. Moreover, applicants who have authorized email during the examination of their applications likely will be accustomed to receiving important email notices from the Office, including Office Actions that required a timely response to avoid abandonment of the application. Thus, notice of an opposition to which they must respond will be similar. As all of the USPTO

electronic systems are enhanced and email communication is more widely authorized, the rule allows the Board the flexibility to increase the proportion of notices sent only by email. As a reminder, § 2.18(b)(1) requires applicants, registrants, and parties to proceedings to promptly notify the Office of any change in physical address or email address.

The Office also plans to continue its efforts to educate the public about trademark solicitations and how to distinguish them from USPTO communications.
See, e.g.,
the USPTO Web page entitled “WARNING: Non-USPTO Solicitations That May Resemble Official USPTO Communications” and the educational video on the USPTO Web site entitled “TM Newsflash 16: Solicitation Alert.” Also, the Office continues to work with enforcement agencies on fraudulent solicitations, including those that recipients are misled into believing come from the USPTO. The Office has been successfully using email communication in many aspects of Board proceedings and for other trademark-related communications, and will use this experience to make its email service of the notice of opposition as effective as possible.

Comment:
Some commenters noted that the USPTO's databases contain multiple fields for address and email address information, and sought clarification as to what address and email information would be used for service by the Board.

Response:
As noted above, at this juncture, in cancellation proceedings, the Board intends to serve by U.S. mail, pending system enhancements to facilitate email service at a later date. The Office plans to effect service using the “Current Owner Information” field or, if one has been appointed, the “Domestic Representative Information” field in the USPTO's TSDR database. For opposition proceedings, the terminology “email or correspondence address of record” in the rule refers to “correspondence address” as it is used throughout the Rules of Practice in Trademark Cases (
e.g.,
§§ 2.18, 2.21, 2.22, 2.23) and the addition of “email” merely highlights that an email correspondence address may be used when authorized.

Comment:
Other commenters inquired about any procedures the Board might follow prior to entry of default judgment when the Board served the complaint by email.

Response:
Where there is no authorized email address, the Board continues to mail both the institution notice and the notice of default to the appropriate physical address. Where there is an authorized email address, the notice of default will go to that same email address. When the Board serves the institution notice in an opposition proceeding using an authorized email address but receives a notification that the email was undeliverable, Board staff investigate other possible addresses for forwarding the institution notice; if no other address is found, the Board effects service by publication in the Official Gazette. In addition, the Office encourages trademark owners to exercise due diligence in monitoring the status of their registrations online through the USPTO database.

Comment:
One commenter proposed clarifying language in §§ 2.105(b)(2) and 2.113(b)(2) to provide that a plaintiff's domestic representative will be served with a copy of the notice of the opposition or the cancellation proceeding only if appointed as the domestic representative in the Board proceeding.

Response:
The proposed amendment of these rules only pertained to adding email as a possible correspondence address. The rule language for which clarification is sought by the commenter is longstanding, and there has been no confusion as a result of the wording. The current terminology “opposer has appointed” and “petitioner has appointed” refers to the parties' roles in the Board proceeding, and therefore contemplates an appointment in the proceeding. Therefore, no changes are made in response to the comment.

Effective Date Applicable for Pending Cases

Comment:
Some commenters expressed concern with the application of the new rules to all pending cases and requested assurance that the Board will remain flexible in granting extension of the discovery and trial periods to accommodate issues that may arise; for example, docketing issues regarding discovery, email service, and timing. The rules call for electronic service of documents between parties and remove the additional five days added to deadlines when parties choose to serve by mail.

Response:
The Board has accommodated these concerns by publishing this final rule well in advance of the effective date. This allows time for the parties to take appropriate actions in cases pending on the publication date and prepare their docketing for the new rules. In view of the delayed effective date, the Board does not anticipate many scheduling or other difficulties as a result of the new rules; however, the Board may entertain scheduling issues that still arise in cases pending prior to the publication date as a result of the final rules where appropriate. To the extent issues arise despite the delayed effective date, parties are encouraged to resolve issues by stipulation. With regard to service, under the new rules parties may stipulate to any type of service, including by mail, and the extra five days previously provided by § 2.119(c) are already built into the response time period.

Evidentiary Rulings

Comment:
One commenter suggested that one judge should rule on evidentiary issues and decide whether the panel of judges should see the evidence, so that judges ruling on the final decision have not seen evidence that has been stricken.

Response:
The Board has not observed any detrimental effect of having the same panel rule on the evidentiary objections and the final decision. The panel assigned at final decision reviews the complete record, which would include any determinations made on evidentiary objections. As the Board has noted, Rule 403 of the Federal Rules of Evidence “assumes a trial judge is able to discern and weigh the improper inferences that a jury might draw from certain evidence, and then balance those improprieties against probative value and necessity . . . . [as well as] exclude those improper inferences from his mind in reaching a decision.”
Ava Ruha Corp.
v.
Mother's Nutritional Ctr., Inc.,
113 USPQ2d 1575, 1579 (TTAB 2015) (quoting
Gulf States Utils. Co.
v.
Ecodyne Corp.,
735 F.2d 517, 510 (5th Cir. 1981)). To the extent that the comment is directed to procedural concerns, those are already handled by interlocutory decisions. Parties should make sure that curable defects are brought up early so that the objections may be considered. Those objections that are substantive in nature go to the weight of the evidence, which is routinely handled by judges.
See Kohler Co.
v.
Baldwin Hardware Corp.,
82 USPQ2d 1100, 1104 (TTAB 2007). This would also not be an efficient way of handling objections that are raised during testimony depositions in particular and in responses to affidavits, as many of these objections are not maintained in the briefs. Thus, such rulings would be premature.

Grammar/Nomenclature

Comment:
One commenter provided various comments to add commas, and change “may not” to “will not” or “shall not” etc., and to continue to use

the term Examiner as it is used in various other Trademark Rules.

Response:
The comma placement and use of “may” versus “will” or “shall” are purposeful and remain. With regard to retention of the term “Examiner,” the phraseology of choice for the Board in the amendments is “trademark examining attorney” or “examining attorney,” consistent with terminology in Board procedure.

Counting Dates

Comment:
One commenter expressed concern that the Rules and the TBMP do not explain whether in inter partes proceedings the initial day triggering the time period is to be counted, and whether the action is due on the final day or on the day after the final day of the specified period. The commenter indicated that it would be helpful if either the rules or the manual explained the inclusion/exclusion of the first and last days of the period, similar to Rule 6(a)(1) of the Federal Rules of Civil Procedure.

Response:
The Board has a longstanding practice that follows Rule 6(a)(1) of the Federal Rules of Civil Procedure pursuant to § 2.116 that has not presented problems. There is no foreseeable need to specify in the rules how to count days. To do so could require changing other rules beyond those proposed for amendment by the NPRM.

Creating Efficiencies

Comment:
One commenter questioned whether speeding up proceedings is an advantage. As previous statistics show, well over 90% of TTAB cases are withdrawn, settled, or defaulted and do not require a final decision. A major advantage of the slower paced proceedings is the time provided to permit resolution of the dispute without significant financial investment. With this in mind, the proposed rules designed to speed up the process are of questionable value.

Response:
Parties may continue to stipulate or request extensions or suspensions. The Board will continue its practice of being flexible to facilitate concurrent settlement of the Board case and other issues, which may involve use matters and other jurisdictions. However, the Board also recognizes, as do many parties, that deadlines facilitate settlement discussions. Where the parties seek speedier and more cost effective resolution, the new rules provide tools to support that goal.

Discovery Sanctions

Comment:
One commenter expressed concern that the Board's proposed rules provide no additional sanctions, and thus will not prevent parties from abusing discovery.

Response:
Although it is not the Board's practice to award monetary sanctions, the Board has available a full range of other sanctions, including judgment.
See Baron Philippe de Rothschild S.A.
v.
Styl-Rite Optical Mfg. Co.,
55 USPQ2d 1848 (TTAB 2000). The Board will continue its practice of active case management and the imposition of appropriate sanctions.

Withdrawal of Application Without Prejudice

Comment:
Two commenters suggested that applicants be able to withdraw an application without consent and without prejudice prior to the filing of an answer in oppositions before the Board. According to the comments, there are many reasons why a party may prefer not to litigate unrelated to the substantive merits of the case. Because of the claim-preclusive effect (in subsequent Board cases) of such a judgment, well positioned opposers are enabled to take advantage of applicants with limited financial resources to force them to surrender their rights with no chance to obtain trademark registration if circumstances change.

Response:
This subject is outside the scope of the current rulemaking. The Office notes this is a longstanding practice, but the Office may consider it in a future rulemaking. Currently, applicants may abandon an application without prejudice during the publication and extension of time periods prior to the filing of a notice of opposition.
See
TBMP section 218.

Judicial Notice of USPTO Records

Comment:
One commenter suggested that the Board take judicial notice of USPTO records, and, in particular, allow parties to introduce registrations into the record by only the registration number, rather than by the inclusion of the full content of the registration in document form.

Response:
The Board considered this option but decided not to adopt it at this time. The USPTO has an obligation to preserve a complete written record of Board proceedings that contains all of the evidence presented by the parties in documentary form for a variety of purposes, including possible judicial review.
See
15 U.S.C. 1071(a)(3) (the United States Court of Appeals for the Federal Circuit may request that the USPTO forward to the court the original or certified copies of the documents in the record). The official record of a Board proceeding must be complete, accurate, and reliable, especially because in direct appeals to the Federal Circuit the court's review of the Board's decision is confined to the four corners of the administrative record. Although parties can enter pleaded registration and application numbers into ESTTA when they submit a pleading, which automatically populates the party caption field in TTABVUE with links to the USPTO's trademark file for the specified registration or application number, unlike subject applications and registrations which are by rule automatically part of the record, the provision of the link to the trademark file does not make it of record in the Board proceeding. Moreover, the registration and application numbers in the party caption field may or may not be comprehensive because some pleaded registration and application numbers are only referenced in the attached pleading, which does not prepopulate the party caption field in TTABVUE. The burden of creating a complete evidentiary record by introducing in documentary form information contained in the USPTO's trademark file records is most appropriately borne by the party wishing to introduce such evidence rather than by the Board. Finally, parties are reminded that it is important for them to review their pleaded registrations to make sure the owner name and any assignments are up to date. As the USPTO plans for enhancements to its electronic systems and databases, user requests for a more streamlined approach for introducing USPTO records into evidence in a Board proceeding will be considered.

Create Central Online Docket for Dates and Deadlines

Comment:
One commenter requested that the Board, through either ESTTA or TTABVUE, provide a central online docket where the parties and the Board can access a definitive list of dates and deadlines in inter partes matters, which would be updated automatically to reflect the current status of the proceeding.

Response:
The suggestion falls outside the scope of the current rulemaking. However, this suggestion, which previously has been made in other venues for public comment on Board electronic systems, will be considered as the USPTO plans for enhancements to its electronic systems and databases.

Discussion of Rule Changes

Interferences and Concurrent Use Proceedings

Preliminary to Interference

The Office is amending § 2.92 to incorporate a nomenclature change from “Examiner of Trademarks” to “examining attorney.”

Comment:
Some commenters do not want this change because “examiner” is used in other parts of the Trademark Rules and “examining attorney” increases the length of briefs.

Response:
While the Trademark Rules continue to use the term “examiner” in some locations, the Board desires consistency within its rules of procedure and has retained these amendments.

Adding Party to Interference

The Office is amending § 2.98 to incorporate a nomenclature change from “examiner” to “examining attorney.”

Application To Register as a Concurrent User

The Office is amending § 2.99(c) and (d) to change “notification” to “notice of institution” or “notice,” and to specify that the notice may be transmitted via email.

The Office is revising § 2.99(d)(1) to remove the service requirement for applicants for concurrent use registration and to specify that the notice of institution will include a web link or web address to access the concurrent use proceeding.

The Office is amending § 2.99(d)(2) to clarify that an answer to the notice of institution is not required by an applicant or registrant whose application or registration is acknowledged in the concurrent use application.

The Office is amending § 2.99(d)(3) to clarify that a user who does not file an answer when required is in default, but the burden of providing entitlement to registration(s) remains with the concurrent use applicant(s).

The Office is amending § 2.99(f)(3) to incorporate a nomenclature change from “examiner” to “examining attorney.”

Opposition

Filing an Opposition

The Office is amending § 2.101(a) and (b) to remove the opposer's requirement to serve a copy of the notice of opposition on applicant.

The Office is amending § 2.101(b)(1) to require that oppositions be filed by the due date in paragraph (c) through ESTTA. The amendment codifies the use of electronic filing.

The Office is amending § 2.101(b)(2) to provide that an opposition against an application based on Sections 1 or 44 of the Trademark Act may be filed in paper form in the event that ESTTA is unavailable due to technical problems or when extraordinary circumstances are present. The amendment also requires that a paper opposition to an application must be accompanied by a Petition to the Director under § 2.146 with the required fees and showing, and to add that timeliness of the submission will be determined in accordance with §§ 2.195 through 2.198.

The Office is amending § 2.101(b) by adding a new paragraph (b)(3) that continues the existing unconditional requirement that an opposition to an application based on Section 66(a) of the Trademark Act must be filed through ESTTA.

The Office is amending § 2.101(c) by moving the content of paragraph (d)(1) to the end of paragraph (c).

The Office is amending § 2.101(d) by removing paragraphs (d)(1), (3), and (4), but retaining the content in paragraph (d)(2) as paragraph (d), and providing that an ESTTA opposition cannot be filed absent sufficient fees and a paper opposition accompanied by insufficient fees may not be instituted, but a potential opposer may resubmit the opposition with the required fee if time remains. The revisions are intended to simplify the rules pertaining to insufficient fees.

The Office is amending § 2.101(d)(4) to redesignate it as § 2.101(e) and clarify that the filing date of an opposition is the date of electronic receipt in the Office of the notice of opposition and required fee and to add that the filing date for a paper filing, where permitted, will be determined in accordance with §§ 2.195 through 2.198.

Comment:
One commenter expressed concerns about attorney docketing systems in light of the proposed amendments to § 2.101(d) and (e) regarding the filing date of an opposition filed electronically versus one filed on paper.

Response:
While the filing date of an opposition may depend on the method of filing, the filing date never complicates attorney docketing systems because the due date for an answer and subsequent proceeding deadlines are set by the Board's institution order and are not a function of the filing date.

Extension of Time for Filing an Opposition

The Office is amending § 2.102 to omit references to “written” requests for extensions of time, as it is unnecessary in view of the requirement in § 2.191 that all business be conducted in writing.

The Office is amending § 2.102(a)(1) to require that requests to extend the time for filing an opposition be filed through ESTTA by the opposition due date in paragraph 2.101(c). The amendment continues the existing requirement that an opposition to an application based on Section 66(a) of the Act must be filed through ESTTA, but provides that an opposition against an application based on Sections 1 or 44 of the Act may be filed in paper form in the event that ESTTA is unavailable due to technical problems or when extraordinary circumstances are present. The Office is amending § 2.102(a)(2) to require that a paper request to extend the opposition period must be accompanied by a Petition to the Director under § 2.146, with the required fees and showing, and to add that timeliness of the paper submission will be determined in accordance with §§ 2.195 through 2.198.

The Office is amending § 2.102(b) to clarify that an opposition filed during an extension of time must be in the name of the person to whom the extension was granted except in cases of misidentification through mistake or where there is privity.

The Office is amending § 2.102(c)(1) to clarify that a sixty-day extension is not available as a first extension of time to oppose. The Office is amending § 2.102(c)(3) to clarify that only a sixty-day time period is allowed for a final extension of the opposition period.

The Office is adding new § 2.102(d), which clarifies that the filing date of a request to extend the time for filing an opposition is the date of electronic receipt in the Office of the notice of opposition and that the filing date for a paper filing, where permitted, will be determined in accordance with §§ 2.195 through 2.198.

Comment:
One commenter sought clarification regarding the Office's method of notifying an applicant of an extension of time to oppose, suggesting email notification in cases where the applicant has authorized email communication.

Response:
Currently, the notices to applicants of extensions of time to oppose are delivered by postcards that are automatically generated. The Office intends to implement email notification of applicants who have authorized email communication in the future, but the transition requires system enhancements that cannot be made in the very near future.

Contents of Opposition

The Office is amending § 2.104(a) to specify that ESTTA requires the opposer to select relevant grounds for opposition, and the accompanying required statement supports and explains the grounds. The amendment codifies current Office practice.

The Office is adding new § 2.104(c) to clarify that with respect to an opposition to an application filed under Section 66(a) of the Trademark Act, the goods and/or services opposed and the grounds for opposition are limited to those set forth in the ESTTA cover sheet. The amendment conforms with Section 68(c)(3) of the Act, is consistent with the amendment to § 2.107(b), and codifies current case law and practice.

Comment:
One commenter suggested that the rules state that in situations where a party's ESTTA cover sheet is inconsistent with the accompanying pleading, the ESTTA cover sheet would be considered controlling. Another commenter suggested the opposite proposing that the rules specify that in such situations, the pleading would be considered controlling.

Response:
The ESTTA cover sheet is considered part of the complete opposition pleading.
See PPG Industries Inc.
v.
Guardian Industries Corp.,
73 USPQ2d 1926, 1928 (TTAB 2005) (“Since ESTTA's inception, the Board has viewed the ESTTA filing form and any attachments thereto as comprising a single document or paper being filed with the Board”). Proposed § 2.104(c) regarding the inability to add goods, services, or grounds beyond those set forth in the ESTTA cover sheet pertained only to oppositions to applications under Trademark Act section 66(a), 15 U.S.C. 1141f(a) (Madrid Protocol applications), and the final rule clarifies that for such oppositions only, the ESTTA cover sheet controls the scope of the opposition. Use of ESTTA has been and continues to be mandatory for the filing of either extensions of time to oppose or notices of opposition against Madrid Protocol applications. The requirement to use ESTTA for such filings enables the Office to fulfill its obligation to timely notify the International Bureau of the World Intellectual Property Organization (IB) of oppositions and the grounds therefor against Madrid Protocol applications. So, because the grounds for opposition indicated on the ESTTA cover sheet are used for the automatic electronic transmission of the requisite notice to the IB, they cannot be changed, even in circumstances where the attached complaint differs from the cover sheet.

However, with respect to oppositions against applications under Trademark Act sections 1 and 44, 15 U.S.C. 1051 and 1126, the concerns with Madrid Protocol applications and notification to the IB do not apply. Therefore, the scope of an opposition need not necessarily be limited to what is set forth in the ESTTA cover sheet, and the complete opposition pleading may inform the scope. Because the primary purpose of the pleadings is to give fair notice of the claims asserted, a complaint may be amended in accordance with Rule 15 of the Federal Rules of Civil Procedure.

Comment:
One commenter suggested clarifications in § 2.104(c) to add the prohibition against amending to add joint opposers, found in § 2.107(b), to the statement regarding the prohibition against adding opposed goods, services, and grounds not in the ESTTA cover sheet.

Response:
This suggested addition is not included in the final rule, but § 2.104(c) has been revised in light of the comment by removing references to amendments for pleadings, which are addressed in § 2.107(b). Section 2.104 concerns the contents of the incoming notice of opposition and the ESTTA cover sheet, and § 2.104(c) codifies the distinction that oppositions to Madrid Protocol applications are limited to the goods, services, or grounds set forth in the ESTTA cover sheet. By contrast, in oppositions to applications under Sections 1 or 44(e) of the Act, the ESTTA cover sheet does not control, and the goods, services, or grounds in the accompanying statement may be considered. With opposers, regardless of the basis of the opposition application, the opposers identified in the ESTTA cover sheet determine the fees paid through ESTTA. Any additional opposers named only in the accompanying statement, for whom no fees have been paid, will not be part of the proceeding, regardless of the filing basis of the opposed application.
See Syngenta Crop Protection Inc.
v.
Bio-Check LLC,
90 USPQ2d 1112, 1115 n.2 (TTAB 2009) (second opposer named in the notice of opposition but not on the ESTTA cover sheet, for whom no fee was paid, not party to the proceeding). Therefore, because no distinction exists in the treatment of joint opposers omitted from the ESTTA cover sheet but included in the accompanying statement, it was deemed inappropriate to include a reference to joint opposers in § 2.104(c), which is otherwise directed to a distinction for oppositions to Madrid Protocol applications.

Notification to Parties of Opposition Proceeding(s)

The Office is amending § 2.105(a) to remove the service requirement for opposers and to specify that the notice of institution constitutes service and will include a web link or web address to access the electronic proceeding record.

Comment:
One commenter suggested changing “mailing date of the notice” to “date the Board sends the notice” in § 2.105(a) and the corresponding rule in § 2.113(a) because the proposed rules provide that the Board may serve the notice by email.

Response:
The phrase “mailing date” in these rules refers to the date that appears on the order, whether generated by ESTTA or manually by Board staff, and therefore the Office has retained that phrasing.

The Office is amending § 2.105(b) and (c) to provide that it will effect service of the notice of opposition at the email or correspondence address of record for the parties, their attorneys, or their domestic representatives.

Answer

The Office is amending § 2.106(a) to add that default may occur after the time to answer is reset and that failure to file a timely answer tolls all deadlines until the issue of default is resolved. The amendment codifies current Office practice and is consistent with the Office's amendment to § 2.114(a).

The Office is amending § 2.106(b)(1) to require that answers be filed through ESTTA, but provides that they may be filed in paper form in the event that ESTTA is unavailable due to technical problems or when extraordinary circumstances are present. An answer filed on paper must be accompanied by a Petition to the Director under § 2.146, with the required fees and showing. The amendment codifies the use of electronic filing.

The Office is amending renumbered § 2.106(b)(2) to specify that a reply to an affirmative defense shall not be filed.

The Office is amending renumbered § 2.106(b)(3)(i) to add a requirement that an applicant subject to an opposition proceeding must promptly inform the Board of the filing of another proceeding between the same parties or anyone in privity therewith.

The Office is amending renumbered § 2.106(b)(3)(iv) to clarify that the Board may sua sponte reset the times for pleading, discovery, testimony, briefs, or oral argument.

Amendment of Pleadings in an Opposition Proceeding

The Office is amending § 2.107(a) to add that an opposition proceeding may not be amended to add a joint opposer.

The Office is amending § 2.107(b) to clarify that, with respect to an opposition to an application filed under Section 66(a) of the Trademark Act, pleadings may not be amended to add grounds for opposition or goods or services beyond those set forth in the cover sheet, or to add a joint opposer. The amendment conforms with Section 68(c)(3) of the Act, is consistent with the amendment to § 2.104(c), and codifies current case law and practice.

Comment:
A few commenters suggested clarifications or exceptions to the proposed prohibition in § 2.107 against the addition of joint opposers to an opposition proceeding after the close of the time period for filing an opposition. For example, commenters proposed that adding a joint opposer be permitted for assignees and successors in interest to the opposer in appropriate circumstances.

Response:
Although assignees or successors may be joined or substituted as party plaintiffs during a proceeding, even when they are “joined,” they are not considered joint opposers.
See
TBMP section 512. Rather, they stand in the shoes of the assignor or predecessor. The assignor or predecessor may be retained as a party for the limited purpose of facilitating discovery, but the assignee is the party in interest at that point, and no additional fees are charged to add a party, as would be required with a true joint opposer. In view thereof, adding the term “joint opposer” in the rule does not prohibit the joining or substituting of assignees or successors, and therefore the commenter's suggestion is not adopted.

Cancellation

Filing a Petition for Cancellation

The Office is amending § 2.111(a) and (b) to remove the petitioner's requirement to serve a copy of the petition to cancel on registrant.

The Office is amending § 2.111(c)(1) to require that a petition to cancel a registration be filed through ESTTA. The Office is amending § 2.111(c)(2) to provide that a petition to cancel may be filed in paper form in the event that ESTTA is unavailable due to technical problems or when extraordinary circumstances are present. The amendment also requires that a paper petition to cancel a registration must be accompanied by a Petition to the Director under § 2.146, with the required fees and showing, and to add that timeliness of the submission, if relevant to a ground asserted in the petition to cancel, will be determined in accordance with §§ 2.195 through 2.198. The amendments codify the use of electronic filing.

The Office is deleting § 2.111(c)(3) and adding a new § 2.111(d), which provides that a petition for cancellation cannot be filed via ESTTA absent sufficient fees and a paper petition accompanied by insufficient fees may not be instituted. The revisions are intended to simplify the rules pertaining to insufficient fees.

The Office is redesignating § 2.111(c)(4) as § 2.111(e), which clarifies that the filing date of a petition for cancellation is the date of electronic receipt in the Office of the petition and required fee and adds that the filing date for a paper petition for cancellation, where permitted, will be determined in accordance with §§ 2.195 through 2.198.

Contents of Petition for Cancellation

The Office is amending § 2.112(a) to add that the petition for cancellation must indicate, to the best of petitioner's knowledge, a current email address(es) of the current owner of the registration.

Comment:
Commenters noted concerns with the proposed rule requiring that the petition for cancellation include “to the best of petitioner's knowledge,” contact information for the current owner as well as “any attorney reasonably believed by the petitioner to be a possible representative of the owner in matters relating to the registration.” While no commenters objected to providing known contact information, many sought clarification or revised rule language to make clear that no obligation exists for the petitioner to conduct due diligence or any research. Several other commenters objected to this requirement when the necessary contact information for service already appears in the USPTO database and one commenter objected to providing information about possible owners where there is a domestic representative in the record.

Response:
The final rule language retains the current requirement that the name and address of the current owner must be included, “to the best of petitioner's knowledge.” This standard has been in the rule for some time, and has not created problems for petitioners. Based on the objections and concerns expressed by commenters, the proposed addition regarding information about possible attorneys is not included in the final rule. Plaintiffs are still encouraged to provide information about a new owner even if there is a listed domestic representative, as the domestic representative of the prior owner may not be aware of the change. Also, plaintiffs are encouraged to provide current contact information for attorneys or, in the case of registrations under Section 66(a) of the Act, current contact information for the designated representative for the international registration, which may not be in the USPTO database. Providing such information facilitates the Board's location and service of the proper parties in order to avoid defaults that may subsequently be set aside and thus prolong the process.

The Office is further amending § 2.112(a) to specify that ESTTA requires the petitioner to select relevant grounds for cancellation, and that the required accompanying statement supports and explains the grounds. The amendment codifies current Office practice.

Notification of Cancellation Proceeding

The Office is amending § 2.113(a) to remove the service requirement for petitioners and to specify that the notice of institution constitutes service and will include a web link or web address to access the electronic proceeding record.

The Office is amending § 2.113(b) and (c) to provide that it will effect service of the petition for cancellation at the email or correspondence address of record for the parties, their attorneys, or their domestic representatives. The Office is further amending § 2.113(c) to create new paragraphs (c)(1) and (2) for clarity.

Comment:
One commenter inquired why the Office proposed that for cancellations filed against registered extensions of protection under the Madrid Protocol (Madrid registrations), service would be effected on the international registration holder's designated representative rather than on the owner, as with other registrations. One commenter suggested eliminating the word “only” before “to the domestic representative” in proposed § 2.113(c)(2).

Response:
Upon further review, the Office has withdrawn the proposal to serve cancellations filed against Madrid registrations differently, and the final rule sets forth consistent procedures for the service of cancellations, regardless of the basis of the registration. However, for Madrid registrations, the Board will endeavor to forward a courtesy copy of the notice to the international registration holder's designated representative. Regarding the suggested deletion of “only” from § 2.113(c)(2), the word has been retained to reflect

that service will be through the domestic representative's address rather than the current owner's address. However, the Office retains the discretion to send courtesy copies to whomever the Office deems appropriate.

Comment:
One commenter inquired about the inconsistency among § 2.113(c)(1), (2), and (3) where not every section included an explicit statement that service of the institution order constitutes service.

Response:
The inconsistency has been eliminated by the deletion of § 2.113(c)(3). The Office is amending § 2.113(d) to remove “petition for cancellation” and to provide that the courtesy copy of the notice of institution that shall be forwarded to the alleged current owner of the registration will include a web link or web address to access the electronic proceeding record.

Answer

The Office is amending § 2.114(a) to add that default may occur after the time to answer is reset and that failure to file a timely answer tolls all deadlines until the issue of default is resolved. The revision codifies current Office practice and is consistent with the Office's amendment to § 2.106(a).

The Office is amending § 2.114(b)(1) to require that answers be filed through ESTTA, but provides that they may be filed in paper form in the event that ESTTA is unavailable due to technical problems or when extraordinary circumstances are present. An answer filed on paper must be accompanied by a Petition to the Director under § 2.146, with the required fees and showing. The amendment codifies the use of electronic filing.

The Office is amending renumbered § 2.114(b)(2) to clarify that a reply to an affirmative defense shall not be filed. The Office is further amending § 2.114(b)(1) to add that a pleaded registration is a registration identified by number by the party in the position of plaintiff in an original or counterclaim petition for cancellation.

Comment:
One commenter questioned why there is a difference between the wording in proposed § 2.106(b)(1), now in renumbered § 2.106(b)(2), which uses “shall not” and the wording in § 2.114(b)(2), which uses “need not.” The commenter suggested § 2.114(b)(2) be amended to “shall not.”

Response:
The Office has adopted the suggested change.

The Office is amending renumbered § 2.114(b)(3)(i) to add a requirement that a party in the position of respondent and counterclaim plaintiff must promptly inform the Board of the filing of another proceeding between the same parties or anyone in privity therewith.

The Office is amending renumbered § 2.114(b)(3)(iii) to clarify that the Board may sua sponte reset the period for filing an answer to a counterclaim. The Office is amending renumbered § 2.114(b)(3)(iv) to clarify that the Board may sua sponte reset the times for pleading, discovery, testimony, briefs, or oral argument.

The Office is amending § 2.114(c) to add that counterclaim petitions for cancellation may be withdrawn without prejudice before an answer is filed.

Procedure in Inter Partes Proceedings

Federal Rules of Civil Procedure

The Office is amending § 2.116(e) to add that the submission of notices of reliance, declarations, and affidavits, as well as the taking of depositions, during the testimony period corresponds to the trial in court proceedings. The revision codifies current Office practice and is consistent with amendments relating to declarations and affidavits.

The Office is amending § 2.116(g) to clarify that the Board's standard protective order, which is available on the Office's Web site, is automatically applicable throughout all inter partes proceedings, subject to specified exceptions. The Office is further amending § 2.116(g) to add that the Board may treat as not confidential material which cannot reasonably be considered confidential, notwithstanding a party's designation. The revisions codify current case law and Office practice.

Comment:
One commenter expressed concern with the proposed amendment to § 2.116(g) providing that the Board may treat information and documents which it determines cannot reasonably be considered confidential as not confidential, notwithstanding a party's designation. It was suggested that the Board provide prior notice, and an opportunity to respond, before reclassifying confidential (and highly confidential or trade secret/commercially sensitive) information or documents. Further, the commenter requested confirmation that the applicable Standard Protective Order is the one currently provided on the USPTO Web site.

Response:
The purpose of the rule is to codify existing practice to treat improperly designated material that is public information as public. This is narrowly applied and only done when necessary to articulate the Board decision.
See, e.g., Couch/Braunsdorf Affinity, Inc.
v.
12 Interactive, LLC,
110 USPQ2d 1458, 1461 (TTAB 2014). The applicable Standard Protective Order is available on the USPTO Web site, TTAB home page, and is clearly labeled with its effective date. The prior Standard Protective Order is also available, labeled as “retired,” with a retirement date.

Suspension of Proceedings

The Office is amending § 2.117(c) to clarify that the Board may suspend proceedings sua sponte and retains discretion to condition approval of consented or stipulated motions to suspend on the provision by parties of necessary information about the status of settlement talks or discovery or trial activities.

Undelivered Office Notices

The Office is amending § 2.118 to add notification of non-delivery in paper or electronic form of Board notices and to delete the time period prescribed by the Director.

Service and Signing

The Office is incorporating the word “submissions” throughout § 2.119 to codify the use of electronic filing.

The Office is amending § 2.119(a) to remove the service requirements for notices of opposition and petitions to cancel, consistent with amendments to §§ 2.101(a) and (b) and 2.111(a) and (b).

The Office is amending § 2.119(b) to require that all submissions filed with the Board and any other papers served on a party be served by email, unless otherwise stipulated or service by email cannot be made due to technical problems or extraordinary circumstances.

Comment:
Commenters generally approved of the proposed requirement in § 2.119 that parties in Board proceedings serve each other by email unless they agree to an alternative service method, or unless technical problems or extraordinary circumstances prevent email service. However, some requested clarification about how to address service of voluminous documents for which email might be impractical. Others sought further guidance as to what types of situations might qualify for the exception to email service, even in the absence of agreement between the parties on an alternative method.

Response:
The Board encourages parties to agree on an effective alternative method of service, such as file hosting services, if email is not practical. In cases where the parties anticipate voluminous productions, for example, this would be a worthwhile issue to discuss at the discovery conference, with Board participation if

the parties deem it necessary. The parties are reminded that under the 2015 amendments to the Federal Rules of Civil Procedure there is a focus on party cooperation in the discovery process which includes service of discovery responses.

The Office is amending § 2.119(b)(3) to revise the manner of service on a person's residence by stating that a copy of a submission may be left with some person of suitable age and discretion who resides there. The amendment is consistent with both the Patent Rules of Practice and the Federal Rules of Civil Procedure.

The Office is amending § 2.119(b)(6) to remove the requirement for mutual agreement by the parties for service by other forms of electronic transmission and to remove service by notice published in the
Official Gazette.

The Office is amending § 2.119(c) to remove the provision adding five days to the prescribed period for action after service by the postal service or overnight courier. All fifteen-day response dates initiated by a service date are amended to twenty days.

Comment:
Some commenters expressed various concerns that the proposed rules call for electronic service of documents between parties and remove the additional five days, provided by the previously existing § 2.119(c), which were added to deadlines when parties choose to serve by first class mail, Priority Mail Express® and overnight courier.

Response:
Under the amended rules, parties may stipulate to any type of service, including by mail. The extra five days provided for in former § 2.119(c) are already built into the response time period.

The Office is amending § 2.119(d) to add that no party may serve submissions by means of the postal service if a party to an inter partes proceeding is not domiciled in the United States and is not represented by an attorney or other authorized representative located in the United States.

Discovery

The Office is amending § 2.120(a)(1) to add the use of proportionality in process and procedure in discovery, in conformance with the 2015 amendments to the Federal Rules of Civil Procedure, and to reorganize portions of the text for clarity.

The Office is amending § 2.120(a)(2) to add headings for paragraphs (a)(2)(i) through (v) and to reorganize portions of the text for clarity.

The Office is amending renumbered § 2.120(a)(2)(i) to specify that a Board Interlocutory Attorney or Administrative Trademark Judge will participate in a discovery conference when the Board deems it useful. The revision codifies current Office practice.

Comment:
One commenter stated with regard to the proposed revisions to § 2.120(a)(2)(i) that it would be useful to have an Interlocutory Attorney or Administrative Trademark Judge consistently available by phone to actively intervene and manage discovery disputes, motion practice, and overly contentious proceedings. The commenter also stated that it would be useful for the Board to issue short minute orders memorializing phone conferences, and to issue orders precluding parties from filing papers without prior leave in overly contentious cases.

Response:
The Board notes that each of these comments may be satisfied under the existing rules.

The Office is amending renumbered § 2.120(a)(2)(iii) to add that the Board may issue an order regarding expert discovery either on its own initiative or on notice from a party of the disclosure of expert testimony.

The Office is amending renumbered § 2.120(a)(2)(iv) to add that parties may stipulate that there will be no discovery, that the number of discovery requests or depositions be limited, or that reciprocal disclosures be used in place of discovery. The amendment codifies some of the stipulations successfully used by parties in ACR procedures and other proceedings incorporating ACR-type efficiencies. The Office is further amending § 2.120(a)(2)(iv) to require that an expert disclosure deadline must always be scheduled prior to the close of discovery. The Office is further amending § 2.120(a)(2)(iv) to clarify that extensions of the discovery period granted by the Board will be limited.

Comment:
Several commenters expressed concern over the amendment to § 2.120(a)(2)(iv) expressly providing that “limited extensions of the discovery period may be granted upon stipulation or the parties approved by the Board, upon motion granted by the Board. . . .” Commenters commended the Board's flexibility in its proceedings and urged continued flexibility, noting that trademark constituents chose to litigate before the Board over district court because of the Board's flexibility and that the majority of the Board's cases settle because of the Board's flexible schedule and forum, which encourages settlement. Among the recommendations made by commenters were: That the language be removed; that the Board remain liberal in granting requests to extend the discovery period; that, in view of the amendment to § 2.120(a)(2)(v) requiring all discovery to be served and completed during the discovery period, the Board remain flexible in granting extensions of the discovery period to allow the parties to be able to complete discovery during the discovery period and supplement discovery as required by Rule 26(e) of the Federal Rules of Civil Procedure, as well as to accommodate settlement, especially in view of the acknowledgement that the majority of Board cases settle; and that the Board take a more active role in case management and in exercising its authority to control the disposition of cases.

Response:
The Board appreciates the commenters' recognition of the flexibility provided by its proceedings. The amendment to § 2.120(a)(2)(iv) reflects existing Board practice, allowing for active case management while meeting the needs of the parties. It imposes neither a numerical limit on extensions of the discovery period nor a stricter standard for granting an extension.

The Office is amending § 2.120(a)(3) to require that discovery requests be served early enough in the discovery period that responses will be due no later than the close of discovery, and when the time to respond is extended, discovery responses may not be due later than the close of discovery. The amendment is intended to alleviate motion practice prompted by responses to discovery requests served after discovery has closed.

Comment:
Many commenters expressed general support for the amendment requiring that all discovery requests must be served early enough in the discovery period so that all responses will be due no later than the close of the discovery period. One commenter expressed its view that the amendment will facilitate the orderly conclusion of fact discovery and should reduce the frequency of motions to re-open discovery following a party's receipt of a deficient discovery response after the close of discovery. Some commenters, reciting that the stated intent of the amendment is to alleviate motion practice prompted by responses to discovery requests served after discovery has closed, sought clarification of how the proposed rule will alleviate motions practice, noting that the objective may not be accomplished where a party refuses to provide responses and the adversary must bring a motion to compel. One commenter inquired how the amended rule will impact the parties' ongoing obligation to supplement discovery as

required under Rule 26(e) of the Federal Rules of Civil Procedure.

Response:
The amendment has no impact on current Board practice concerning the ability of parties to seek extensions of the discovery period. The Board anticipates that the amendment will alleviate motion practice by avoiding the uncertainty created by discovery disputes arising after the discovery period has closed where responses have not been served. As observed by one commenter, there will be fewer motions to reopen discovery based on responses received after discovery closed. Similarly, there will be fewer motions to extend the trial schedule because a party is awaiting responses to discovery requests after the close of the discovery period, or has received allegedly insufficient responses after the close of the discovery period. Instead the focus of any dispute will be on the sufficiency of the responses at issue. The amendment also has no effect on a party's duty to supplement discovery as required under Rule 26(e) of the Federal Rules of Civil Procedure.

Comment:
Two comments were submitted concerning the effect of the proposed amendment to § 2.120(a)(3).

Response:
The amendment has no impact on current Board practice concerning the ability of parties to seek extensions of the discovery period. The Board anticipates that the amendment will alleviate motion practice by avoiding the uncertainty created by discovery disputes arising after the discovery period has closed where responses have not been served. Instead, the focus of any dispute will be on the sufficiency of the responses at issue.

The Office is amending § 2.120(b) to require that any agreement by the parties as to the location of a discovery deposition shall be made in writing.

The Office is amending the title of § 2.120(c) to clarify that it applies to foreign parties within the jurisdiction of the United States.

Comment:
Several comments addressed a proposed amendment to § 2.120(c)(2) requiring that a party must inform every adverse party when a foreign party has or will have, during a time set for discovery, an officer, director, managing agent, or other person who consents to testify on its behalf present within the United States. One commenter stated that some of its members believed the change would be positive and eliminate the need to seek this information by interrogatory. The remaining commenters, however, expressed concerns about the proposed amendment. The concerns generally related to practicality, particularly for large foreign parties; scope, because the proposed amendment was not limited to individuals with knowledge relevant to the Board proceeding; and privacy, both for parties collecting travel information and counsel conveying it to adverse parties.

Response:
In response to the commenters' concerns, the proposed addition to § 2.120(c)(2) of the clause “the party must inform every adverse party of such presence” has been eliminated. The Board notes, however, that parties retain the ability to request such information through interrogatories.

The Office is revising § 2.120(d) such that it addresses only interrogatories, deleting paragraphs (d)(1) and (2). Provisions relating to requests for production are moved to revised § 2.120(e), and § 2.120(f) through (k) are renumbered in conformance.

The Office is amending § 2.120(e) to limit the total number of requests for production to seventy-five and to provide a mechanism for objecting to requests exceeding the limitation parallel to § 2.120(d).

The Office is further amending § 2.120(e) to clarify that the rule applies to electronically stored information as well as documents and tangible things; to provide that the time, place, and manner for production shall comport with the provisions of Rule 34 of the Federal Rules of Civil Procedure, or be made pursuant to agreement of the parties; and to remove the provision that production will be made at the place where the documents and things are usually kept.

Comment:
One commenter asked that the rules reflect the prominence of electronic production by requiring production of responsive documents, rather than retaining the option to make documents available for inspection, and requiring parties to produce documents electronically when possible.

Response:
The rule incorporates by reference, and is consistent with, Rule 34 of the Federal Rules of Civil Procedure. Parties may agree to other manners of production of documents, ESI, and tangible things. The Board encourages electronic production whenever possible and reminds the parties that production of ESI, which is generally limited in Board proceedings, is a subject for discussion at the discovery conference.
See Frito-Lay North America Inc.
v.
Princeton Vanguard LLC,
100 USPQ2d 1904, 1909 (TTAB 2011).

The Office is amending renumbered § 2.120(f)(1) to clarify that the rule applies to ESI as well as documents and tangible things. The Office is further amending § 2.120(f)(1) to require that a motion to compel initial disclosures must be filed within thirty days after the deadline therefor and include a copy of the disclosures. The Office is further amending § 2.120(f)(1) to require that a motion to compel discovery must be filed prior to the deadline for pretrial disclosures for the first testimony period, rather than the commencement of that period. The Office is further amending § 2.120(f)(1) to clarify that the request for designation pertains to a witness. The Office is further amending § 2.120(f)(1) to require a showing from the moving party that the party has made a good faith effort to resolve the issues presented in the motion.

Comment:
In the proposed amendment to § 2.120(f)(1), one commenter requested an enlargement of the time for filing motions to compel initial disclosures from 30 to 60 days.

Response:
Parties have many options for changing the timing of initial disclosures and any resulting motions to compel, including stipulated extensions, waiver, or suspension for settlement discussions. The Board does not discern a benefit to parties by extending this deadline further into the 180-day discovery period. The amendment to § 2.120(f) facilitates preserving essentially three months of the six-month discovery period for service of written discovery, in order that responses can be served before the close of discovery. Extending the deadline for a motion to compel initial disclosures to 60 days from the due date of the disclosure will further erode the remaining discovery period.

Comment:
Commenters who addressed the amendments to § 2.120(f) and (i) requiring that motions to compel expert testimony disclosures be filed prior to the close of discovery and that motions to compel discovery and to test the sufficiency of any objection be filed prior to the deadline for pre-trial disclosures for the first testimony period approved of the changes.

Response:
The changes encourage efficiency in the schedule. The parties will focus on discovery during the assigned period and be able to resolve any disputes or outstanding discovery matters before trial. Once pretrial disclosures are served, the parties will focus on trial matters, or settlement, if appropriate.

The Office is amending renumbered § 2.120(f)(2) to clarify that when a motion to compel is filed after the close of discovery, the parties need not make pretrial disclosures until directed to do so by the Board.

Comment:
One commenter asked that § 2.120(f)(2) be amended to clarify whether a case is automatically deemed

suspended on the filing of a motion for an order to compel initial disclosures, expert testimony disclosure, or discovery.

Response:
By comparison, an amendment to § 2.127(d) specifies that a case “is suspended” when a party timely files a potentially dispositive motion. Motions to compel under § 2.120(f)(2), however, present different considerations, including the requirement of a showing of good-faith effort to resolve the issues presented in the motion. In order to retain its discretion in managing discovery, the Board does not amend § 2.120(f)(2) commensurately with § 2.127(d). While suspension in this situation occurs only upon issuance of a suspension order, ordinarily such suspension is effective as of the date of the filing of the motion to compel.

Comment:
One commenter suggested that the USPTO amend § 2.120(f) (motion for an order to compel discovery) to include a mirror provision (analogous to Rule 37(a)(5)(B) of the Federal Rules of Civil Procedure)—
i.e.,
if the motion to compel is denied, the Board may issue a protective order. This would make the provisions for motions to compel and motions for protective order symmetrical.

Response:
There is no need to issue a protective order as the purpose is already served by the order denying the motion to compel.

The Office is amending renumbered § 2.120(g) to conform to Federal Rule of Civil Procedure 26(c).

The Office is amending renumbered § 2.120(i) to limit the total number of requests for admission to 75 and to provide a mechanism for objecting to requests exceeding the limitation parallel to § 2.120(d) and (e).

Comment:
Several commenters addressed the proposed amendments to § 2.120(e) and (i) limiting requests for production and admission to 75, and the proposed amendment to § 2.120(d) to delete motions for leave to serve additional interrogatories beyond the existing limit of 75. Some commenters expressed support for the proposed limits, stating that they would be sufficient and beneficial in most cases, with some requesting that motions for leave to propound more than 75 requests in unusual cases be permitted. However, several commenters objected to the proposed limit on requests for admission. Some commenters also asked for clarification regarding how the requests for production and admission will be counted under the proposed amendments.

Response:
Requests for admission will be counted reflecting the form articulated in Rule 36(a)(2) of the Federal Rules of Civil Procedure: “Each matter must be separately stated.” Requests for production will be counted in the same manner as interrogatories, that is, each subpart will count as a separate request. The Board has revised the proposed amendments to § 2.120(d), (e), and (i) to permit motions to serve more than 75 interrogatories, requests for production, and requests for admission on a showing of good cause. With respect to the latter, examples that may support a showing of good cause include cases involving foreign parties from whom oral discovery may be unavailable, or requests intended to narrow the issues in dispute in proceedings involving multiple marks and applications or registrations with lengthy identifications of goods and services.

The Office is further amending renumbered § 2.120(i) to permit a party to make one comprehensive request for an admission authenticating specific documents produced by an adverse party, or specifying which of those documents cannot be authenticated.

Comment:
Two comments addressed a proposed amendment to § 2.120(i) permitting a party to make one comprehensive request for an admission authenticating documents produced by an adverse party. One commenter favored the proposed amendment, while the other expressed concern that it would shift the burden of proof for the right to use the document from the recipient to the producing party.

Response:
The proposed amendment has been revised in the final rule to clarify that the party propounding a comprehensive request for admission must identify each document for which it seeks authentication. Specifically, the first sentence of Rule 36(a)(2) of the Federal Rules of Civil Procedure, requiring that “[e]ach matter must be separately stated,” will not apply to this single comprehensive request for an admission authenticating documents produced by an adverse party.

The Office is amending renumbered § 2.120(i)(1) to require that any motion to test the sufficiency of any objection, including a general objection on the ground of excessive number, must be filed prior to the deadline for pretrial disclosures for the first testimony period, rather than the commencement of that period. The Office is further amending § 2.120(i)(1) to require a showing from the moving party that the party has made a good faith effort to resolve the issues presented in the motion.

The Office is amending renumbered § 2.120(i)(2) to clarify that when a motion to determine the sufficiency of an answer or objection to a request for admission is filed after the close of discovery, the parties need not make pretrial disclosures until directed to do so by the Board.

The Office is amending renumbered § 2.120(j)(1) to state more generally that the Board may schedule a telephone conference whenever it appears that a stipulation or motion is of such nature that a telephone conference would be beneficial. The Office is amending § 2.120(j)(2) to remove provisions allowing parties to move for an in-person meeting with the Board during the interlocutory phase of an inter partes proceeding and the requirement that any such meeting directed by the Board be at its offices. The Board is adding new § 2.120(j)(3) to codify existing practice that parties may not make a recording of the conferences referenced in § 2.120(j)(1) and (2).

Comment:
One commenter asked for the reason supporting the proposed amendment to § 2.120(j)(3), which states that parties may not make a recording of the conferences referenced in § 2.120(j)(1) and (2).

Response:
The amendment codifies existing Board practice, promotes candid discussion during conferences, and protects the privacy of the parties.

The Office is amending renumbered § 2.120(k)(2) to change the time for a motion to use a discovery deposition to when the offering party makes its pretrial disclosures and to clarify that the exceptional circumstances standard applies when this deadline has passed.

The Office is amending renumbered § 2.120(k)(3)(i) to clarify that the disclosures referenced are initial disclosures, to remove the exclusion of disclosed documents, and to incorporate a reference to new § 2.122(g).

The Office is amending renumbered § 2.120(k)(3)(ii) to add that a party may make documents produced by another party of record by notice of reliance alone if the party has obtained an admission or stipulation from the producing party that authenticates the documents. This amendment is consistent with the amendment in renumbered § 2.120(i) permitting a party to make one comprehensive request for an admission authenticating specific documents produced by an adverse party.

The Office is amending renumbered § 2.120(k)(7) to add an authenticated produced document to the list of evidence that may be referred to by any party when it has been made of record.

Assignment of Times for Taking Testimony and Presenting Evidence

The Office is amending § 2.121(a) to clarify that evidence must be presented during a party's testimony period. The Office is further amending § 2.121(a) to add that the resetting of a party's testimony period will result in the rescheduling of the remaining pretrial disclosure deadlines without action by any party. These amendments codify current Office practice.

The Office is amending § 2.121(c) to add that testimony periods may be shortened by stipulation of the parties approved by the Board or may be extended on motion granted by the Board or order of the Board. The Office is further amending § 2.121(c) to add that the pretrial disclosure deadlines associated with testimony periods may remain as set if a motion for an extension is denied. These amendments codify current Office practice.

The Office is amending § 2.121(d) to add that stipulations to reschedule the deadlines for the closing date of discovery, pretrial disclosures, and testimony periods must be submitted through ESTTA with the relevant dates set forth and an express statement that all parties agree to the new dates. The amendment codifies the use of electronic filing.

The Office is amending § 2.121(e) to add that the testimony of a witness may be either taken on oral examination and transcribed or presented in the form of an affidavit or declaration, as provided in amendments to § 2.123.

The Office is further amending § 2.121(e) to add that a party may move to quash a noticed testimony deposition of a witness not identified or improperly identified in pretrial disclosures before the deposition. The amendment codifies current Office practice.

The Office is further amending § 2.121(e) to add that when testimony has been presented by affidavit or declaration, but was not covered by an earlier pretrial disclosure, the remedy for any adverse party is the prompt filing of a motion to strike, as provided in §§ 2.123 and 2.124. The amendment aligns the remedy for undisclosed testimony by affidavit or declaration with the remedy for undisclosed deposition testimony.

Matters in Evidence

The Office is amending § 2.122(a) to clarify the heading of the paragraph and to specify that parties may stipulate to rules of evidence for proceedings before the Board. The Office is further amending § 2.122(a), consistent with § 2.120(k)(7), to add that when evidence has been made of record by one party in accordance with these rules, it may be referred to by any party for any purpose permitted by the Federal Rules of Evidence. The amendments codify current Office practice.

Comment:
On commenter viewed the last sentence of § 2.122(a) as redundant with § 2.120(k)(7) and suggested retaining the sentence in § 2.122(a) and deleting it from § 2.120(k)(7) as unnecessary.

Response:
The language in § 2.120(k)(7) is longstanding and the Office is retaining it for consistency and to avoid any confusion as to the implications of a potential deletion of that language from that section.

The Office is amending § 2.122(b) to clarify the heading of the paragraph and to clarify that statements made in an affidavit or declaration in the file of an application for registration or in the file of a registration are not testimony on behalf of the applicant or registrant and that matters asserted in the files of applications and registrations are governed by the Federal Rules of Evidence, the relevant provisions of the Federal Rules of Civil Procedure, the relevant provisions of Title 28 of the United States Code, and the provisions of this part of title 37 of the Code of Federal Regulations.

Comment:
One commenter supported the specification that statements in affidavits or declarations submitted in connection with an application during ex parte examination are not considered evidence. However, one commenter requested clarification as to why § 2.122(b)(2) excludes statements made in an affidavit or declaration in the file of an application or registration from evidence, and requested that the rule about specimens not being in evidence unless reintroduced be deleted.

Response:
Section 2.122(b) provides that the subject application or registration file is automatically of record; however, the existing rule also provides that the dates of first use and specimens are not evidence. The final rule has been amended to provide that statements made in affidavits and declarations in a subject application or registration file are not testimony. Matter residing in an application or registration file reflects an applicant or registrant having met certain requirements or having overcome certain refusals during the ex parte prosecution of an application or maintenance of a registration. Although part of the record of the proceeding, such material constitutes hearsay (except for statements falling under Fed. R. Evid. 801(d)), further compounded by the fact that the affidavits or declarations were not subject to contemporaneous cross-examination. Now that testimony by affidavit or declaration is unilaterally available, it is necessary to clearly distinguish material residing in an application or registration from testimony introduced in the proceeding. Self-authenticating exhibits (
e.g.,
printed publications, internet printouts with the URL and date) attached to affidavits or declarations in applications or registrations may have evidentiary value for what they show on their face. The final rule has been further amended to clarify that while application and registration materials are “of record,” they are subject to the Federal Rules of Evidence, Federal Rules of Civil Procedure, Title 28 of the United States Code, and the provisions of this part of title 37 of the Code of Federal Regulations.

The Office is amending § 2.122(d)(1) to replace “printout” with “copy.” The Office is amending § 2.122(d)(2) to add a cross-reference to new § 2.122(g) and to specify that a registration owned by a party may be made of record via notice of reliance accompanied by a current copy of information from the electronic database records of the Office showing the current status and title of the registration. These amendments codify current case law and Office practice.

Comment:
One commenter suggested replacing the word “printout” with “download” for making registrations of record under § 2.122(d). In addition, the commenter questioned whether the wording “current status of and current title to” in § 2.122(d)(1) and (2) has a different meaning from the wording “current status and title of” in § 2.122(d)(1) and (2).

Response:
Currently, a registration is not considered of record when the number is input into the ESTTA form. To make a registration of record, a copy of the electronic database records of the Office must be attached to the pleading. The word “download” does not encompass all possible manners in which a copy may be attached. The Board amended § 2.122(d) by replacing the word “printout” with the word “copy” to broaden the manner in which a registration may be attached to include, for example, printouts or downloads. The Office has retained the slightly different wording in § 2.122(d)(1) and (2) but the wording does not have different meanings.

The Office is amending § 2.122(e) to designate a new paragraph (e)(1), clarify that printed publications must be relevant to a particular proceeding, and add a cross-reference to new § 2.122(g).

The Office is adding new § 2.122(e)(2) permitting admission of internet

materials into evidence by notice of reliance and providing requirements for their identification. The amendment codifies current case law and Office practice.

The Office is adding new § 2.122(g) detailing the requirements for admission of evidence by notice of reliance. Section 2.122(g) provides that a notice must indicate generally the relevance of the evidence offered and associate it with one or more issues in the proceeding, but failure to do so with sufficient specificity is a procedural defect that can be cured by the offering party within the time set by Board order. The amendment codifies current case law and Office practice.

Comment:
One commenter suggested that the requirement in § 2.122(g) to indicate generally the relevance of proffered evidence and associate it with one or more issues, specify that the offering party should indicate the relevance of each document or group of documents within each exhibit, and that the omissions may be cured without reopening the testimony period.

Response:
While this suggestion reflects language from Board cases, the final rule provides sufficient guidance and accommodates broader potential circumstances, to allow for flexibility and not encourage motion practice.

Trial Testimony in Inter Partes Cases

The Office is amending § 2.123(a)(1) to permit submission of witness testimony by affidavit or declaration and in conformance with the Federal Rules of Evidence, subject to the right of any adverse party to take and bear the expense of oral cross-examination of that witness, as provided in amendments to § 2.121(e), and to add that the offering party must make that witness available. The amendment is intended to promote efficient trial procedure.

Comment:
Several commenters approved of the unilateral option, some noting that many already submit testimony by affidavit as a form of ACR which reduces costs; however, some commenters expressed a desire to be able to submit video depositions as testimony.

Response:
The Board has never accepted video testimony and has not experienced any detrimental effect. The current online filing system is not able to accept video testimony; however, this possibility may be considered in subsequent rulemakings as TTAB's online systems are enhanced.

Comment:
One commenter expressed concern in light of the preclusive effect of Board decisions that affidavit/declaration testimony is less like a district court proceeding.

Response:
The general concept of issue preclusion already applies to summary judgment decisions in district courts, which are often presented on testimony by affidavit or declaration.
See
18 Charles Alan Wright et al., Fed. Prac. & Proc. Juris. section 4419 (2d ed. 2016). The same is true of Board decisions granting summary judgment. In addition, the option for stipulated ACR has been available for several years and also results in final decisions made on a record based on affidavit or declaration testimony. The new procedure retains what the Supreme Court focused on in
B&B Hardware, Inc.
v.
Hargis Industries, Inc.,
135 S. Ct. 1293, 113 USPQ2d 2045 (2015): That testimony be under oath and subject to cross-examination. The ability to elect cross-examination of the witness in the new unilateral procedure maintains the fairness and weightiness of Board proceedings.

Comment:
Several commenters expressed concern with the cost-shifting of cross-examination because it puts the burden on the party seeking cross-examination to pay the costs for traveling to the adversary's place of business, and that it is generally unfair and detrimental.

Response:
Even with oral testimony depositions, the party cross-examining the witness must pay its own travel expense and its own attorney expenses. The proffering party has had and will retain the expense of producing its witness. The final rule adds no burden on these points. The provision that the party seeking oral cross-examination must bear the expense of oral cross-examination is intended to cover the expense of the court reporter. Any redirect and recross is to be taken at the same time, with the party that originally sought cross-examination bearing the cost of the court reporter. The goal of the final rule is to minimize the ability of a party seeking cross-examination to thwart the other party's efforts to rein in the cost of litigation by opting for testimony by affidavit or declaration.

Comment:
Some commenters requested that the final rule clearly provide that affidavit/declaration testimony be duly sworn under penalty of perjury and that the testimony and introduction of evidence in a testimony affidavit or declaration are subject to the Federal Rules of Evidence,
i.e.,
only contain facts admissible in evidence. It was noted in particular that § 2.20 allows for statements on information and belief. Finally, one commenter queried whether the unilateral option for testimony by affidavit or declaration might increase the number of cases proceeding through trial and thereby impact Board pendency.

Response:
The Office has adopted language in the final rule directed to the concerns expressed regarding affidavit testimony by explicitly requiring that the affidavit or declaration pursuant to § 2.20 be made in conformance with the Federal Rules of Evidence. Regarding the concern raised about affidavit or declaration testimony being “duly sworn” and under penalty of perjury, the testimony affidavit is a sworn statement, while the declaration permits a comparable alternative unsworn statement.
See
28 U.S.C. 1746. Either option is under penalty of perjury, and statements in Board proceedings are subject to 18 U.S.C. 1001. With regard to concern over the pendency of Board proceedings, the experience with ACR proceedings provides some insight. Recently, ACR cases, where affidavit or declaration testimony is commonly used, accounted for one in six final decisions in fiscal year 2014. During this same time period, the Board did not see an increase in pendency for final decisions. Even in cases that were not counted as ACR cases, the parties frequently agreed to use testimony by affidavit or declaration. Despite the increasing use of affidavit or declaration testimony, overall pendency has decreased the last four fiscal years in a row.

The Office is further amending § 2.123(a)(1) to move to § 2.123(a)(2) a provision permitting a motion for deposition on oral examination of a witness in the United States whose testimonial deposition on written questions has been noticed.

Comment:
Related to the similar issue in § 2.120(c), some concern has been expressed that the requirement in § 2.123(a)(2) that the proffering party must inform every adverse party when it knows its foreign witness will be within the jurisdiction of the United States during such party's testimony period, improperly places counsel in the position of informing on their clients and incentivizes counsel to advise foreign parties not to meet in the United States or not to travel to the United States for conferences and other business, and that existing procedures for seeking discovery and testimony of foreign parties are sufficient.

Response:
In response to the expressed concerns, this requirement has been deleted. It is noted that parties may continue to request such information during discovery in the form of an interrogatory that is subject to the duty to supplement.

The Office is amending § 2.123(b) to remove the requirement for written agreement of the parties to submit testimony in the form of an affidavit, as provided in amendments to § 2.123(a)(1), and to clarify that parties may stipulate to any relevant facts.

The Office is amending § 2.123(c) to remove the option of identifying a witness by description in a notice of examination and to clarify that such notice shall be given to adverse parties before oral depositions.

The Office is further amending § 2.123(c) to add that, when a party elects to take oral cross-examination of an affiant or declarant, the notice of such election must be served on the adverse party and a copy filed with the Board within 20 days from the date of service of the affidavit or declaration and completed within 30 days from the date of service of the notice of election.

The Office is further amending § 2.123(c) to add that the Board may extend the periods for electing and taking oral cross-examination and, when necessary, shall suspend or reschedule proceedings in the matter to allow for the orderly completion of oral cross-examination(s) that cannot be completed within a testimony period.

Comment:
Proposed § 2.123(c) provided that the notice to take a cross-examination deposition must be served on the adverse party and filed with the Board “within 10 days from the date of service of the affidavit or declaration and completed 20 days from the date of service of the notice of election.” One commenter expressed concern that the time periods are too short to permit sufficient time to review declaration and affidavit testimony and accompanying exhibits, confer with clients and witnesses, determine whether a cross-examination deposition is necessary, and notice such cross-examination deposition, especially where numerous testimony declarations with voluminous exhibits are served on the same date and/or at the end of the assigned testimony period. The commenter recommended allowing at least 20 days from the date of service of the affidavit or declaration testimony to serve a notice of a cross-examination testimony deposition, and at least 30 days from the date of service of the notice to complete such depositions.

Response:
The Office has adopted the suggestion to increase the time frames to accommodate scheduling considerations raised by the commenter. The notice to take a cross-examination deposition must be served on the adverse party and filed with the Board “within 20 days from the date of service of the affidavit or declaration and completed 30 days from the date of service of the notice of election.”

The Office is amending § 2.123(e)(1) to specify that a witness must be sworn before providing oral testimony. The Office is further amending § 2.123(e)(1) to move from § 2.123(e)(3) the provision that cross-examination is available on oral depositions. The Office is further amending § 2.123(e)(1) to add that, where testimony is proffered by affidavit or declaration, cross-examination is available for any witness within the jurisdiction of the United States, as provided in amendments to § 2.123(a)(1).

The Office is amending § 2.123(e)(2) to remove provisions permitting depositions to be taken in longhand, by typewriting, or stenographically and to specify that testimony depositions shall be recorded.

The Office is amending § 2.123(e)(3) to delete the provision that cross-examination is available on oral depositions, which the Office is moving to § 2.123(e)(1), and to insert paragraphs (e)(1)(i) and (ii) for clarity.

The Office is amending § 2.123(e)(4) to specify that the rule regarding objections pertains to oral examination.

The Office is amending § 2.123(e)(5) to clarify that the rule regarding witness signature relates to the transcript of an oral deposition.

The Office is amending § 2.123(f)(2) to require that deposition transcripts and exhibits shall be filed in electronic form using ESTTA. If the nature of an exhibit, such as CDs or DVDs, precludes electronic transmission via ESTTA, it shall be submitted by mail. The amendment codifies the use of electronic filing.

The Office is amending § 2.123(g)(1) to add that deposition transcripts must be submitted in full-sized format (one page per sheet), not condensed (multiple pages per sheet). The Office is amending § 2.123(g)(3) to add that deposition transcripts must contain a word index, listing the pages where the words appear in the deposition.

Comment:
One commenter requested clarification to the form for exhibits attached to affidavit or declaration testimony.

Response:
The Office has not set out in the final rule any specific requirements regarding the form of exhibits. The Board and the parties have experience with such submissions in connection with summary judgment motions and ACR procedures as described in the TBMP at sections 528.05(b) and 702.04, which do not specify requirements for the form of exhibits, and this has not created problems. Notably, documents submitted under an affidavit or declaration but not identified therein cannot be considered as exhibits. The parties are encouraged to be guided by the form requirements set out for exhibits to depositions in § 2.123(g)(2) and the mailing requirements for certain exhibits set out in § 2.123(f)(2).

The Office is removing § 2.123(i), which permits inspection by parties and printing by the Office of depositions after they are filed in the Office. Section 2.123(j) through (l) is renumbered § 2.123(i) through (k) in conformance.

The Office is amending renumbered § 2.123(j) to add that objection may be made to receiving in evidence any declaration or affidavit. The Office is further amending renumbered § 2.123(j) to provide that objections may not be considered until final hearing.

Depositions Upon Written Questions

The Office is adding new § 2.124(b)(3) to provide that a party desiring to take cross-examination by written questions of a witness who has provided testimony by affidavit or declaration shall serve notice on each adverse party and file a copy of the notice with the Board.

The Office is amending § 2.124(d)(1) to clarify that the procedures for examination on written questions apply to both direct testimony and cross-examination. The Office is further amending § 2.124(d)(1) to specify the procedure for cross-examination by written questions of a witness who has provided testimony by affidavit or declaration.

The Office is adding new § 2.124(d)(3) to provide that service of written questions, responses, and cross-examination questions shall be in accordance with § 2.119(b).

Filing and Service of Testimony

The Office is amending § 2.125 to renumber paragraphs (a) through (e) as (b) through (f) and to add new § 2.125(a) to require that one copy of a declaration or affidavit prepared in accordance with § 2.123, with exhibits, shall be served on each adverse party at the time the declaration or affidavit is submitted to the Board during the assigned testimony period.

The Office is amending renumbered § 2.125(b) to add a cross-reference to § 2.124 and to clarify that the paragraph applies to testimony depositions, including depositions on written questions.

The Office is amending renumbered § 2.125(f) to permit sealing of a part of an affidavit or declaration.

Form of Submissions to the Trademark Trial and Appeal Board

The Office is amending § 2.126 to renumber paragraph (a) as (b) and to add new paragraph (a) to require that submissions to the Board must be made via ESTTA. The amendment codifies the use of electronic filing.

Comment:
Commenters who addressed the proposal to mandate the electronic filing of all submissions to the Board via ESTTA generally expressed approval, although a few commenters requested ESTTA enhancements to increase the permissible file size limits for attachments and to allow multimedia submissions. Several commenters asked that an exception to the ESTTA filing requirement be made for voluminous and multimedia submissions.

Response:
While the Office continually strives to improve its electronic systems, the requested ESTTA enhancements cannot be made in the near future. The lack of these features, however, need not prevent effective electronic filing. ESTTA currently permits a filing to include multiple PDF attachments totaling less than 53 MB, which more than suffices for the vast majority of filings. ESTTA's “Tips for Attaching Large PDF Files,” available from a help link within ESTTA, provide useful recommendations to minimize attachment file size. If, despite following best practices, file size remains a concern, an ESTTA submission may be divided into separate filings. While some commenters noted that such a procedure is more burdensome for a filer than simply submitting via paper, a paper filing would impose a similar or greater burden on the Office to receive and route the papers, to scan and upload them into the electronic official record, and to store and later destroy the papers in accordance with the Office's document retention policy. The Office deems it most appropriate that on the rare occasion when a single ESTTA filing cannot accommodate all the attachments, the effort of separating the attachments into multiple filings should rest with the filer. This is because the filer has the greatest opportunity to minimize the need for attachments, as well as to ensure that its expectations for image quality and color of the submissions are met.

Turning to multimedia, ESTTA currently is not configured to accept such submissions, and the Office does not anticipate an ESTTA enhancement to accept multimedia in the near future. Board proceedings are conducted exclusively on the written record. While the Office acknowledges that some commenters have suggested the Board consider accepting video depositions, under the current requirements and practice, such submissions are not permitted, thus rendering it unnecessary to make an electronic filing exception for that purpose. Multimedia files such as specimens for sound or motion marks, having been submitted through the Trademark Electronic Application System (TEAS), may be included in the electronic official record in ex parte appeals. The need to submit multimedia evidence in Board inter partes proceedings infrequently arises when a party submits video or audio evidence, such as commercials. The Board will continue its current practice of accepting DVDs or CDs for this limited purpose, and the submission of such exhibits will be exempt from the requirement to file using ESTTA. When making such a submission of exhibits, parties are advised to include in the accompanying ESTTA filing a “placeholder” exhibit page to indicate the CD or DVD exhibit, and to mail the CD or DVD to the Board. If in the future the Board's electronic filing system can be enhanced to allow the submission of multimedia material, similar to TEAS, the Board will revisit its acceptance of CDs or DVDs.

Comment:
Numerous commenters expressed concerns about the interpretation and implementation of the proposed excepti

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/fr%3A2016-23092. Public record. Not legal advice.