Miscellaneous Changes to Trademark Trial and Appeal Board Rules

DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 2 and 3

[Docket No. 970428100-7100-01]

RIN 0651-AA87

Miscellaneous Changes to Trademark Trial and Appeal Board Rules

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rulemaking.

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SUMMARY: The Patent and Trademark Office (PTO) proposes to amend its

rules governing practice before the Trademark Trial and Appeal Board

(Board) to expedite inter partes proceedings. These proposed changes

enlarge the time periods for discovery, testimony, and response to

motions, and concomitantly limit the circumstances in which extensions

may be obtained. In addition, they impose strict limitations on the

number of written discovery requests which one party may serve upon

another party in a proceeding. Other proposed inter partes rule

amendments clarify the rules, conform the rules to current practice,

simplify practice, and correct cross-references. Finally the PTO

proposes to amend 37 CFR 2.76(a), 2.76(g), and 2.76(h), which affect

practice in ex parte appeals to the Board, to conform these rules to

current practice.

DATES: Written comments must be received on or before August 4, 1997 to

ensure consideration. An oral hearing will not be conducted.

ADDRESSES: Written comments may be sent by mail addressed to Assistant

Commissioner for Trademarks, Box TTAB--No Fee, 2900 Crystal Drive,

Arlington, Virginia 22202-3513, marked to the attention of Ellen J.

Seeherman. Written comments may also be sent by facsimile transmission

to (703) 308-9333, marked to the attention of Ellen J. Seeherman.

Written comments will be available for public inspection in Suite 900,

on the 9th Floor of the South Tower Building, 2900 Crystal Drive,

Arlington, Virginia 22202-3513.

FOR FURTHER INFORMATION CONTACT: Ellen J. Seeherman, Administrative

Trademark Judge, Trademark Trial and Appeal Board, by telephone at

(703) 308-9300, extension 206, or by mail marked to her attention and

addressed to Assistant Commissioner for Trademarks, Box TTAB--No Fee,

2900 Crystal Drive, Arlington, Virginia 22202-3513 or by facsimile

transmission marked to her attention and sent to (703) 308-9333.

SUPPLEMENTARY INFORMATION: This notice of proposed rulemaking is

designed to improve practice and expedite proceedings in inter partes

cases before the Trademark Trial and Appeal Board (Board). In addition,

the proposed amendments codify and clarify certain practices of the

Board and correct certain references to citations of the Trademark Act

and the Code of Federal Regulations.

The proposed amendments, and the reasons for the amendments, are

discussed below.

The Board's workload has increased dramatically in the last several

years because of a rapid growth in the number of inter partes and ex

parte proceedings filed with the Board. Along with this increase in the

number of proceedings, there has been a marked increase in the number

of motions and other papers filed in each inter partes case. It appears

to the Board that this proliferation of papers has been due, in large

part, to the fact that in recent years, many attorneys practicing

before the Board in inter partes cases have taken an increasingly

aggressive approach by filing every possible motion that may be filed

and by responding to every paper filed to the point of sur-reply and

sur-sur-reply briefs. It also appears that some of the papers filed are

part of a strategy to bury the adverse party with paper, so that it

becomes too expensive for that party to proceed with the case, and the

party is forced to settle or capitulate. Whatever the reason, in many

cases the number of papers filed goes far beyond what is reasonably

needed for a Board proceeding. The filing of these papers causes

needless work and expense for the parties and the Board. Moreover, the

rapid growth in the number of papers filed has caused substantial

delays in all phases of the Board's work, including the resolution of

motions and the final determination of proceedings.

A number of the rule amendments proposed in this notice, namely,

the proposed amendments to Secs. 2.120(a), 2.120(d)(1), 2.120(d)(2),

2.120(e), 2.120(h), 2.121(a)(1), 2.121(c), 2.127(a), 2.127(b),

2.127(d), and 2.127(e)(1), are designed to address these problems by

changing certain Board practices relating to discovery, testimony

periods, and motions. In addition, Sec. 2.120(a) is proposed to be

amended to clarify Board discovery practice in the wake of the December

1, 1993 amendments to the Federal Rules of Civil Procedure.

Other amendments proposed in this notice serve to clarify the

rules, conform the rules to current Board practice, simplify practice,

and correct certain cross-references in the rules. The rules affected

by these proposed amendments are Secs. 2.76(a), 2.76(g), 2.76(h),

2.85(e), 2.87(c), 2.101(d)(1), 2.102(d), 2.111(b), 2.111(c)(1),

2.117(a), 2.117(b), 2.119(d), 2.120(g)(1), 2.121(d), 2.122(b)(1),

2.122(d)(1), 2.123(b), 2.123(f), 2.125(c), 2.127(f), 2.134(a), and

2.146(e)(1).

Proposed Amendments Relating to Discovery

It is the experience of the Board that a large number of motions

and requests are filed in connection with discovery. Many of these

filings relate to repeated requests for extensions of time,

[[Page 30803]]

specifically, extensions of the discovery period and the time to

respond to discovery requests.

Moreover, at present, the Board sets the closing date for the

taking of discovery, with the date set being 90 days after the date of

the initial trial order. However, discovery in Board proceedings opens

at the times specified in Rules 30, 33, 34, and 36 of the Federal Rules

of Civil Procedure as they read prior to the December 1, 1993

amendments to those rules. See ``Effect of December 1, 1993 Amendments

to the Federal Rules of Civil Procedure on Trademark Trial and Appeal

Board Inter Partes Proceedings,'' 1159 TMOG 14 (February 1, 1994).

Thus, interrogatories, requests for production of documents and things,

and requests for admission may be served upon the plaintiff after the

proceeding commences (i.e., after the notice of opposition or petition

for cancellation is filed in an opposition proceeding, and after the

mailing by the Board of the notice of institution in an interference or

concurrent use proceeding), and upon the defendant with or after

service of the complaint by the Board. Discovery depositions generally

may be taken by any party after commencement of the proceeding, except

that the Board's permission must be obtained first in certain specified

situations. Further, the Board still follows the practice embodied in

Rules 33(a), 34(b), and 36(a) of the Federal Rules of Civil Procedure,

as they read prior to the December 1, 1993 amendments, that a defendant

may serve responses to interrogatories, requests for production of

documents and things, and requests for admission either within 30 days

after service of a discovery request (35 days if service of the request

for discovery is made by first-class mail, ``Express Mail,'' or

overnight courier--see Sec. 2.119(c)), or within 45 days after service

of the complaint upon it by the Board, whichever is later. These

practices relating to the opening of discovery and the time for the

service of discovery responses by the defendant are complicated, and

unpopular with practitioners.

In order to simplify the opening of discovery, and reduce the

number of motions to extend the discovery period and the time to

respond to discovery requests, it is proposed to amend Sec. 2.120(a) to

provide that the Board will specify the opening and closing dates for

the taking of discovery, and that the discovery period will be set for

a period of 180 days. The section is also proposed to be amended to

include a provision that responses to interrogatories, requests for

production of documents and things, and requests for admission must be

served within 40 days from the date of service of such discovery

requests.

Because of the proposed enlargements of the discovery and response

periods, it is also proposed to limit the circumstances in which

extensions will be granted. Specifically, Sec. 2.120(a) is proposed to

be amended to provide that extensions of the discovery period will be

granted only upon stipulation of the parties approved by the Board,

while the time to respond to interrogatories, requests for production

of documents and things, and requests for admission may be extended

only upon stipulation of the parties or upon motion showing

extraordinary circumstances granted by the Board. (The Board, of

course, retains its inherent power to sua sponte reset, and thereby

extend, the discovery period and response times.) In addition, the

section is proposed to be amended to include a provision (now found, in

somewhat different form, in Sec. 2.121(a)(1)), that the resetting of a

party's time to respond to an outstanding request for discovery will

not result in the automatic rescheduling of the discovery and/or

testimony periods, and that ``the discovery period will be rescheduled

only upon stipulation of the parties approved by the Board, and

testimony periods will be rescheduled only upon stipulation of the

parties approved by the Board, or upon motion showing extraordinary

circumstances approved by the Board.'' The quoted portion is somewhat

different from its counterpart in present Sec. 2.121(a), but is

consistent with the provisions of Sec. 2.121(a)(1) as proposed to be

amended. Because of the proposed amendment of Sec. 2.120(a) to include

provisions governing discovery response periods and extensions thereof,

it is believed that Sec. 2.120(a), rather than Sec. 2.121(a)(1), which

governs the scheduling and rescheduling of testimony periods, is the

most logical place for the provision now proposed to be moved.

The enlargement of the discovery period and of the time to respond

to discovery requests, and the concomitant limitations on the

situations in which extensions of these times will be granted, will

reduce the number of extension requests filed, reduce delays in the

service of discovery responses, and expedite proceedings before the

Board.

Another proposed change to Sec. 2.120(a) clarifies Board discovery

practice in the wake of the December 1, 1993 amendments to the Federal

Rules of Civil Procedure. Section 2.116(a) provides that, except as

otherwise provided, and wherever applicable and appropriate, procedure

and practice in Board inter partes proceedings shall be governed by the

Federal Rules of Civil Procedure. Section 2.120(a) provides, in part,

that the provisions of the Federal Rules of Civil Procedure relating to

discovery shall apply in opposition, cancellation, interference, and

concurrent use registration proceedings except as otherwise provided in

Sec. 2.120; and that the opening of discovery is governed by the

Federal Rules of Civil Procedure. Thus, where the Board has its own

rule concerning a particular matter of practice or procedure, that rule

governs; if there is no Board rule concerning the matter, the Federal

Rules of Civil Procedure apply, where applicable and appropriate.

The December 1, 1993 amendments to the Federal Rules of Civil

Procedure substantially changed discovery procedures in civil actions.

The amended rules included provisions which, inter alia, mandated

automatic disclosure, scheduling conferences, conferences to discuss

settlement and to develop a plan for discovery, and transmission to the

court of a written report outlining the discovery plan. Moreover, under

the amended Federal Rules, the commencement of discovery hinged upon

completion of the mandated discovery plan conference. The PTO concluded

that the application of these provisions in inter partes proceedings

before the Board would increase the complexity and cost of the

proceedings and be unduly burdensome to the parties and the Board.

Therefore, in a notice published in the Official Gazette, the

Commissioner stated that these provisions were not appropriate for, and

would not be applicable in, Board proceedings. See ``Effect of December

1, 1993 Amendments to the Federal Rules of Civil Procedure on Trademark

Trial and Appeal Board Inter Partes Proceedings,'' 1159 TMOG 14

(February 1, 1994). The Commissioner also stated that the PTO would, in

due course, publish a notice of proposed rulemaking to amend, as might

be necessary, the trademark rules governing practice and procedure in

inter partes proceedings before the Board. Accordingly, Sec. 2.120(a)

is proposed to be amended to specify that the provisions of the Federal

Rules relating to automatic disclosure, scheduling conferences,

conferences to discuss settlement and to develop a discovery plan, and

transmission to the court of a written report outlining the discovery

plan, do not apply to Board proceedings, and that the Board will

specify the opening and closing dates

[[Page 30804]]

for the taking of discovery. In addition, the first sentence of the

section, which specifies that the provisions of the Federal Rules of

Civil Procedure shall apply in opposition, cancellation, interference,

and concurrent use registration proceedings, except as otherwise

provided in Sec. 2.120, is proposed to be amended to include the

prefatory words ``Wherever appropriate.'' The proposed amendment is

consistent with an analogous provision in Sec. 2.116(a), and makes it

clear that even when there is no provision in Sec. 2.120 relating to a

particular discovery matter, the provisions of the Federal Rules of

Civil Procedure relating to that matter apply only if they are

appropriate for Board proceedings.

Another of the proposed amendments to Sec. 2.120(a) would require

that interrogatories, requests for production of documents and things,

and requests for admission be served in sufficient time for responses

to fall due prior to the close of the discovery period, and that

discovery depositions be noticed and taken prior to the close of the

discovery period. It is believed that the proposed 180-day discovery

period will allow more than sufficient time for the service of

discovery requests to be made early enough in the discovery period so

that responses to such requests will fall due prior to the close of

discovery. Moreover, as indicated hereafter, Sec. 2.120(e) is proposed

to be amended to provide that a motion to compel discovery must be

filed within 30 days after the close of the discovery period, as

originally set or as reset. The proposed requirement that discovery

requests be served in sufficient time for responses to fall due prior

to the close of discovery will enable the propounding party to file a

motion to compel, if such a motion is deemed necessary, within 30 days

after the close of the discovery period. Litigants should note that if

they agree to an extension of time to respond to discovery requests,

such that the responses would be due shortly before or after the due

date for any motion to compel, then they should also stipulate to

reschedule the closing date of the discovery period, if the propounding

party wishes to preserve its time to file a motion to compel.

The Board has observed that parties misuse the discovery process

for purposes of harassing their adversaries, resulting in numerous

motions to compel and motions for protective orders. Section 2.120(d)

was amended effective November 16, 1989, to restrict to 75 (counting

subparts) the total number of interrogatories a party may serve, in a

proceeding, upon another party. The final rule notice was published in

the Federal Register on August 22, 1989, at 54 FR 34886 and in the

Patent and Trademark Office Official Gazette of September 12, 1989, at

1106 TMOG 26. It is the Board's experience that, despite that

limitation, parties continue to serve interrogatories, as well as other

written discovery requests, which are irrelevant, unnecessary, and/or

harassing. In view thereof, and given the restricted scope of Board

proceedings, and the availability of the discovery deposition as an

alternate and/or additional discovery device, it is the Board's belief

that the total number of discovery requests which one party may serve

upon another party in a proceeding should be limited to 25

interrogatories (counting subparts), 15 requests for production of

documents and things (counting subparts), and 25 requests for admission

(counting subparts). Sections 2.120(d)(1), 2.120(d)(2), and 2.120(h)

are proposed to be amended to state such limitations. Moreover, because

it is believed that 25 interrogatories are an adequate number for a

proceeding before the Board, the motion procedure for obtaining leave

to serve interrogatories in excess of the limit set forth in

Sec. 2.120(d)(1) is proposed to be deleted. Similarly, no such

procedure is proposed to be provided for requests for production of

documents and things and requests for admission. The provisions

proposed to be added to Secs. 2.120(d)(2) and 2.120(f), including

provisions governing the action which may be taken by a party served

with discovery requests which it believes to be excessive in number,

parallel those of Sec. 2.120(d)(1), as proposed to be amended. It is

believed that the proposed limitations on the number of

interrogatories, document production requests, and requests for

admission that may be served will reduce the number of motions to

compel filed, since the parties presumably will use the more limited

number of discovery requests for only relevant and appropriate

inquiries, and not for purposes of harassment. A reduction in the

number of motions to compel filed will serve to expedite proceedings.

The first sentence of Sec. 2.120(h), which provides that requests

for admission shall be governed by Rule 36 of the Federal Rules of

Civil Procedure, except that the Board does not have authority to award

any expenses to any party, is proposed to be deleted. The sentence

suggests that the only provision in Federal Rule 36 which does not

apply in Board proceedings is that pertaining to the awarding of

expenses. However, there are also other provisions in Rule 36 which do

not apply in Board proceedings. For example, the provision of Rule

36(a), that without leave of court or written stipulation, requests for

admission may not be served before the time specified in Rule 26(d) of

the Federal Rules of Civil Procedure, is not applicable in Board

proceedings. See ``Effect of December 1, 1993 Amendments to the Federal

Rules of Civil Procedure in Trademark Trial and Appeal Board Inter

Partes Proceedings,'' supra. Moreover, Sec. 2.120(a), as proposed to be

amended, specifies that wherever appropriate, the provisions of the

Federal Rules of Civil Procedure relating to discovery shall apply in

opposition, cancellation, interference, and concurrent use registration

proceedings, except as otherwise provided in Sec. 2.120. Further,

Secs. 2.120(g)(1) and 2.127(f), as proposed to be amended, provide that

the Board will not hold any person in contempt or award any expenses to

any party. Accordingly, the first sentence of Sec. 2.120(h) is proposed

to be deleted because it is redundant and confusing.

Section 2.120(h) is also proposed to be amended to provide that a

motion to test the sufficiency of an answer or objection to a request

for admission must be filed within 30 days after the close of the

discovery period, as originally set or as reset. In addition, the

section is proposed to be amended to specify that when a party files a

motion to test the sufficiency of an answer or objection to a request

for admission, the case will be suspended by the Board with respect to

all matters not germane to the motion, and no party should file any

paper which is not germane to the motion, except as otherwise specified

in the Board's suspension order. These proposed provisions correspond

to similar provisions proposed to be added to Sec. 2.120(e), which

governs motions to compel discovery. It is the intention of the Board,

when setting trial dates in cases arising under these rules as proposed

to be amended, to schedule an interval of 60 days between the closing

date of the discovery period and the opening date of the first

testimony period. The motion to compel and the motion to test the

sufficiency of an answer or objection to a request for admission deal

with pre-trial matters and should, therefore, be filed and determined

prior to trial. The proposed provisions governing the time for filing

these motions and the suspension of proceedings pending the

determination thereof, coupled with the Board's intention to schedule

an interval of 60 days between the close of the discovery period and

the opening of the first

[[Page 30805]]

testimony period, will provide for a more orderly administration of the

proceeding and allow parties more certainty in scheduling testimony.

Moreover, the proposed amendment to Sec. 2.120(a) to set the discovery

period for 180 days, and to require that discovery requests be served

in sufficient time for responses to the requests to fall due prior to

the close of the discovery period, will enable the propounding party to

file a motion to compel or a motion to test the sufficiency of an

answer or objection to a request for admission, if such a motion is

deemed necessary, within 30 days after the close of the discovery

period.

Section 2.120(h) is proposed to be further amended to provide that

the filing of a motion to determine the sufficiency of an answer or

objection to a request for admission shall not toll the time for a

party to respond to any outstanding discovery requests or to appear for

any noticed deposition. The proposed provision corresponds to similar

provisions proposed to be added to Sec. 2.120(e), with respect to

motions to compel, and to Sec. 2.127(d), with respect to motions for

summary judgment, and is explained in greater detail in our discussion

of the proposed amendments to the latter rule.

Finally, because of the length and complexity of Sec. 2.120(h), as

proposed to be amended, the present paragraph is proposed to be

redesignated as (h)(2) and revised; the provisions governing the

proposed limitation on the number of requests for admission which may

be served by one party upon another are proposed to be included in a

new paragraph designated (h)(1); and the proposed provisions relating

to the suspension of proceedings when a motion to test the sufficiency

of an answer or objection to a request for admission is filed are

proposed to be included in a new paragraph designated (h)(3).

Section 2.120(e) is proposed to be amended to provide that a motion

to compel discovery must be filed within 30 days after the close of the

discovery period, as originally set or as reset; that when a party

files a motion to compel discovery, the case will be suspended by the

Board with respect to all matters not germane to the motion and no

party should file any paper which is not germane to the motion, except

as otherwise specified in the Board's suspension order; and that the

filing of a motion to compel shall not toll the time for a party to

respond to any outstanding discovery requests or to appear for any

noticed discovery deposition. These proposed provisions correspond to

similar provisions proposed to be added to Sec. 2.120(h). The latter

proposed provision also corresponds to a similar provision proposed to

be added to Sec. 2.127(d) and is explained in greater detail in our

discussion of the proposed amendments to that rule.

Proposed Amendments Relating to Testimony Periods

It has come to the attention of the Board that trial is sometimes

delayed because an adverse party feels compelled to stipulate to

reschedule or extend testimony periods, knowing that to oppose such a

request and await the Board's decision on the contested motion will

create a greater delay than if the party were to consent to the

rescheduling or extension. In order to remedy this problem, the third

sentences in Secs. 2.121(a)(1) and 2.121(c) are proposed to be amended

to provide that testimony periods may be rescheduled

(Sec. 2.121(a)(1)), or extended (Sec. 2.121(c)), only by stipulation of

the parties approved by the Board, or upon motion showing extraordinary

circumstances granted by the Board, and that if such a motion is

denied, the testimony periods will remain as set. At the same time,

Sec. 2.121(c) is proposed to be amended to lengthen the testimony

period for the plaintiff and defendant to present their cases in chief

from 30 to 60 days, and to lengthen the period for the plaintiff to

present evidence in rebuttal from 15 to 30 days. The enlargement of

testimony periods should, in general, eliminate the number of extension

requests filed by parties and expedite the disposition of proceedings.

Moreover, the enlargement of the testimony periods should lessen any

inconvenience to the parties from the elimination of the ``good cause''

standard for obtaining extensions of time.

Those portions of Secs. 2.121(a)(1) and 2.121(c) which refer to the

rescheduling or extension of testimony periods ``by order of the

Board'' are proposed to be deleted to clarify that a party may not

simply make a motion that the Board order the resetting of testimony

periods. That is, parties may move to reschedule or extend testimony

periods only upon consent, or upon motion showing extraordinary

circumstances. The Board still retains its authority to sua sponte

reschedule or extend testimony periods.

As indicated above, under the heading ``Proposed Amendments

Relating to Discovery,'' the last sentence of Sec. 2.121(a)(1), which

now provides that the resetting of a party's time to respond to an

outstanding request for discovery will not result in the automatic

rescheduling of the discovery and/or testimony periods, and that such

dates will be rescheduled only upon stipulation of the parties approved

by the Board, or upon motion granted by the Board, or by order of the

Board, is proposed to be moved to the end of Sec. 2.120(a), as proposed

to be amended. It is believed that Sec. 2.120(a), as proposed to be

amended, is the most logical place for this sentence. In addition, the

latter part of the sentence is proposed to be revised to read ``the

discovery period will be rescheduled only upon stipulation of the

parties approved by the Board, and testimony periods will be

rescheduled only upon stipulation of the parties approved by the Board,

or upon motion showing extraordinary circumstances granted by the

Board.'' The proposed revision of the latter part of the sentence is

consistent with the third sentence of Sec. 2.121(a)(1), as proposed to

be amended.

Proposed Amendments Relating to Motion Practice

Section 2.127(a) is proposed to be amended to clarify Board

practice with respect to the filing of reply briefs and additional

papers in support of or in opposition to motions. The rule as now

written makes no reference to such papers. As a result, parties often

file reply briefs on motions, sur-reply briefs, responses to sur-reply

briefs, and motions for leave to file, as well as motions to strike,

such papers. It has been the Board's experience that reply briefs may

be helpful in deciding a motion, but that additional papers generally

consist of reargument. Moreover, the filing of such additional papers

often escalates as each party wishes to have the last word. The result

is needless expense to the parties, additional work for the Board, and

delays in rendering decisions. Accordingly, the rule is proposed to be

amended to provide for the filing of a reply brief, if desired, within

15 days from the date of service of the brief in response to the

motion; and to specify that the time for filing a reply brief will not

be extended, and that additional papers in support of or in opposition

to a motion will be given no consideration. The proposed time limit for

the filing of a reply brief on a motion applies to all types of motions

except motions for summary judgment. Section 2.127(e)(1), which governs

the time for filing a motion for summary judgment, is proposed to be

amended, as indicated hereafter, to allow 30 days for this purpose in

the case of a reply brief on a motion for summary judgment.

Section 2.127(a) is also proposed to be amended to enlarge the time

for responding to a motion from 15 to 30

[[Page 30806]]

days. The proposed time limit applies to all types of motions except

motions for summary judgment. Section 2.127(e)(1) is proposed to be

amended to allow 60 days for the filing of a brief in response to a

motion for summary judgment.

Concomitantly, Sec. 2.127(a) is proposed to be amended to provide

that extensions of time for filing a brief in opposition to a motion

will be granted only upon stipulation of the parties approved by the

Board, or upon motion showing extraordinary circumstances granted by

the Board, and that, ``if such a motion for an extension is denied, the

time for responding to the motion remains as specified under this

section.'' A similar provision is proposed to be included in

Sec. 2.127(e)(1) regarding extensions of time for filing a brief in

opposition to a motion for summary judgment. It is believed that 30

days (or 60 days in the case of a summary judgment motion) is a

sufficient time to respond to a motion. Moreover, this enlargement of

the response time, coupled with the requirement that extension requests

be made with consent or show extraordinary circumstances, and the

accompanying provision leaving the time for responding to a motion

unchanged if a motion to extend is denied, will reduce the number of

extension requests filed, expedite the disposition of proceedings, and

prevent parties from using the delays inherent in the filing and

deciding of motions to enlarge their time to respond to motions.

Section 2.127(a) is proposed to be further amended to impose a page

limit for briefs and reply briefs on motions, namely, 25 pages for

briefs in support of and in opposition to motions, and 10 pages for

reply briefs, and to specify form requirements for such briefs. It is

believed that the proposed page limitations are more than sufficient

for parties to adequately argue motions in proceedings before the

Board.

Section 2.127(b) is proposed to be amended to change the

specification of the time period for filing a request for

reconsideration or modification of an order or decision on a motion

from ``thirty days'' to ``one month.'' The proposed amendment conforms

the time period with that specified in Sec. 2.129(c), which governs

requests for reconsideration or modification of a decision after final

hearing.

Certain modifications are proposed to be made to the rules

governing summary judgment motions. It appears that in some cases,

parties that have been served with discovery requests, and know that it

is Board policy to suspend proceedings once a summary judgment motion

has been filed, move for summary judgment in an effort to avoid having

to make timely response to the discovery requests. Accordingly, the PTO

proposes to amend Sec. 2.127(d), which concerns suspension of

proceedings when a potentially dispositive motion has been filed, to

specify that the filing of a summary judgment motion shall not toll the

time for the moving party to respond to any outstanding discovery

requests or to appear at a noticed discovery deposition, but that it

shall toll the time for the nonmoving party to respond to outstanding

discovery requests or to appear at a noticed deposition. The nonmoving

party's time to respond is proposed to be tolled because a party which

files a motion for summary judgment is, by its motion, asserting that

it needs no further evidence to demonstrate that it is entitled to

judgment. The proposed amendment will eliminate the noted abuse of the

summary judgment procedure. Moreover, it may also reduce the number of

motions for discovery filed pursuant to Rule 56(f) of the Federal Rules

of Civil Procedure because parties opposing motions for summary

judgment will be able to receive responses to outstanding discovery

requests prior to the time for responding to the summary judgment

motion.

The first sentence of Sec. 2.127(d), which provides, in essence,

that when any party files a potentially dispositive motion, the case

will be suspended by the Board with respect to all matters not germane

to the motion, and no party should file any paper which is not germane

thereto, is proposed to be amended by adding to the end thereof the

phrase ``except as otherwise specified in the Board's suspension

order.'' The proposed amendment clarifies the rule.

Section 2.127(e)(1), which governs the time for filing a motion for

summary judgment, is proposed to be amended to specify that a motion

for summary judgment may not be filed until notification of the

proceeding has been sent to the parties by the Board. This proposed

amendment codifies current Board practice, as set forth in Nabisco

Brands Inc. v. Keebler Co., 28 USPQ2d 1237 (TTAB 1993). In Board

opposition and cancellation proceedings, as under the Federal Rules,

the proceeding commences with the filing of the complaint, i.e., the

notice of opposition or the petition for cancellation. See

Secs. 2.101(a) and 2.111(a). However, in Board proceedings, formal

service of the complaint upon the defendant is made by the Board, not

by the plaintiff. Further, the Board does not serve the complaint upon

the defendant until after the Board has first examined the complaint to

determine whether it has been filed in proper form, with the required

fee, and, then, if so, has (1) obtained the application or registration

file which is the subject of the proceeding, (2) set up a proceeding

file with an assigned proceeding number, and (3) entered information

concerning the proceeding in the electronic records of the PTO. Thus,

there is a time gap between the filing of a notice of opposition or

petition for cancellation and the issuance of the Board's action

notifying the defendant of the filing of the proceeding, notifying both

parties of the institution of the proceeding, and forwarding a copy of

the complaint to defendant. Although a plaintiff may send a courtesy

copy of the complaint to the defendant, the defendant does not know

that the complaint has been filed in proper form, and that the

proceeding has been instituted by the Board, unless and until it

receives from the Board the notice of institution along with a copy of

the complaint. Accordingly, the Board considers a motion for summary

judgment filed prior to the issuance of the notice of institution to be

premature. Moreover, the filing of a motion for summary judgment prior

to the Board's formal institution of the proceeding may cause

administrative difficulties for the Board, particularly where the Board

has not yet assigned a proceeding number to the case.

Section 2.127(e)(1) is proposed to be further amended to add new

provisions governing the time for filing papers in response to a motion

for summary judgment, as well as the time for filing a reply brief

thereon. Specifically, the section is proposed to be amended to provide

that a motion under Rule 56(f) of the Federal Rules of Civil Procedure

(that is, a motion by the nonmoving party for discovery necessary to

enable it to respond to the motion for summary judgment), if filed,

shall be filed within 30 days from the date of service of the motion

for summary judgment; that the time for filing a Rule 56(f) motion will

not be extended; that if no Rule 56(f) motion is filed, a brief in

response to the motion for summary judgment shall be filed within 60

days from the date of service of the motion, unless the time is

extended by stipulation of the parties approved by the Board, or upon

motion showing extraordinary circumstances granted by the Board; that,

if such a motion for an extension is denied, the time for responding to

the motion for summary judgment will remain as specified in the

section; that a reply brief, if filed, shall be filed within 30

[[Page 30807]]

days from the date of service of the brief in response to the motion;

that the time for filing a reply brief will not be extended; and that

no further papers in support of or in opposition to a motion for

summary judgment will be considered by the Board. With two exceptions,

these proposed provisions parallel certain of the provisions of

Sec. 2.127(a), as proposed to be amended. The first exception is the

provision relating to a Rule 56(f) motion. No parallel provision is

proposed to be included in Sec. 2.127(a) because a Rule 56(f) motion

may be filed only in response to a motion for summary judgment, and

Sec. 2.127(a) contains provisions relating to the filing of motions in

general. The second exception is the length of time proposed to be

allowed for filing a brief in response to a motion for summary

judgment, and for filing a reply brief. These proposed times are 60

days and 30 days, respectively. In the case of other types of motions,

the times proposed in Sec. 2.127(a) are 30 days and 15 days. The

additional time is proposed to be allowed in the case of summary

judgment motions because the gathering of evidence to respond to such a

motion, or to support a reply brief, is time-consuming, and because the

summary judgment motion is potentially dispositive in nature. It is

believed that 60 days is a sufficient time to respond to a motion for

summary judgment, and that this enlargement of the response time,

coupled with the requirement that extension requests be made with

consent or show extraordinary circumstances, and the accompanying

provision leaving the time for responding to the summary judgment

motion unchanged if a motion to extend is denied, will reduce the

number of extension requests filed, and expedite the disposition of

proceedings.

Corrections of Cross-References

Sections 2.101(d)(1), 2.111(c)(1), 2.122(d)(1) and 3.41, as now

written, all contain cross-references to subsections of Sec. 2.6.

Subsections of Sec. 2.6 were renumbered by a notice of final rulemaking

published in the Federal Register on December 24, 1991, at 56 FR 66670

(amended at 57 FR 38196, August 21, 1992) and in the Official Gazette

on December 24, 1991, at 1133 TMOG 61 (amended at 1141 TMOG 40, August

18, 1992). Accordingly, these sections are proposed to be amended to

correct the cross-references to subsections of Sec. 2.6.

Section 2.111(b) is proposed to be amended to correct cross-

references to subsections of Section 14 of the Trademark Act, 15 U.S.C.

1064. The subsections were renumbered by the Trademark Law Revision Act

of 1988 (Title 1 of Pub. L. 100-667, 102 Stat. 3935 (15 U.S.C. 1051)).

Section 2.119(d), which governs the appointment of domestic

representatives by foreign parties involved in inter partes proceedings

before the Board, provides, in pertinent part, that the mere

designation of a domestic representative does not authorize the person

designated to prosecute the proceeding ``unless qualified under

Sec. 10.14(a), or qualified under paragraph (b) or (c) of Sec. 10.14

and authorized under Sec. 2.17(b).'' The section is proposed to be

amended to delete the reference to domestic representatives who are

qualified under Sec. 10.14(c). As indicated in Sec. 2.119(d), a

domestic representative must be a person ``resident in the United

States.'' Persons who are qualified under Sec. 10.14(c) are not

residents of the United States and therefore cannot be domestic

representatives.

Section 2.134(a) is proposed to be amended to correct the cross-

reference to Section 7(d) of the Act of 1946. That section of the Act

was renumbered as ``7(e)'' by the Trademark Law Revision Act of 1988.

Other Proposed Amendments

Section 2.76(a) now provides, in pertinent part, that an

application under Sec. 1(b) of the Act (i.e., an intent-to-use

application) may be amended to allege use of the mark in commerce under

Sec. 1(c) of the Act at any time between the filing of the application

and the date the examiner approves the mark for publication or the date

of expiration of the six-month period after issuance of a final action;

and that thereafter, an allegation of use may be submitted only as a

statement of use after issuance of a notice of allowance. The section

is proposed to be amended to eliminate the time limit for filing an

amendment to allege use after issuance of a final action.

The purpose of the time limit for filing an amendment to allege use

after issuance of a final action was to avoid the submission of

extraneous papers which would disrupt the appeal process. However, the

time limit had a detrimental effect not foreseen by the PTO. In many

instances, where an intent-to-use application was on appeal from a

final refusal on the ground of mere descriptiveness, for example, and

no acceptable amendment to allege use had yet been filed, the owner of

the application would seek, after the expiration of the six-month

period following issuance of the final refusal, to overcome the refusal

to register by amending its application to the Supplemental Register.

However, an intent-to-use application cannot be amended to the

Supplemental Register until an acceptable amendment to allege use or a

statement of use has been filed. See 37 CFR Sec. 2.75(b). Thus,

although an amendment to the Supplemental Register might have obviated

the refusal of registration, such an amendment could not be approved

because the intent-to-use applicant was prohibited by the time limit of

Sec. 2.76(a) from contemporaneously filing an amendment to allege use.

In order to remedy the situation, the Assistant Commissioner for

Trademarks, by notice published in the Official Gazette, waived the

portion of Sec. 2.76(a) which prohibited the filing of an amendment to

allege use more than six months after issuance of a final refusal. See

``Waiver of Trademark Rule 2.76(a),'' 1156 TMOG 12 (November 2, 1993).

The proposed rule change merely incorporates in the rule the more

liberal practice set forth in the Official Gazette notice.

Similarly, Sec. 2.76(g), which concerns the correction of an

amendment to allege use which does not meet the minimum requirements

for such an amendment, and Sec. 2.76(h), which concerns withdrawal of

an amendment to allege use, are proposed to be amended to delete the

``expiration of the six-month response period after issuance of a final

action'' time limit.

Section 2.85(e) specifies the consequences for the payment of an

insufficient fee, with respect to an application or registration having

multiple classes, for certain types of filings, including a petition

for cancellation. The section is proposed to be amended to delete the

reference to an insufficient fee for a petition for cancellation,

because this situation is covered, in greater detail, by

Sec. 2.111(c)(1). Further, in view of this proposed amendment,

Sec. 2.111(c)(1) is proposed to be amended to delete the cross-

reference to Sec. 2.85(e).

Section 2.87(c), which now provides, in pertinent part, that a

request to divide an application may be filed during an opposition,

upon motion granted by the Board, is proposed to be amended to also

specify that a request to divide may be filed during a concurrent use

or an interference proceeding, upon motion granted by the Board. The

proposed change corrects an oversight in the rule and codifies current

Office practice.

Section 2.102(d) now provides that a party filing a request for an

extension of time to oppose must submit an original plus two copies.

The section is proposed to be amended to eliminate the requirement for

the filing of the

[[Page 30808]]

``original'' and two copies, and substitute a requirement that the

request be submitted in triplicate. The Board has no need for an

original, and the proposed change codifies current Office practice.

Section 2.117(a), as now written, provides that, when parties to a

case pending before the Board are engaged in a civil action which may

be dispositive of the case, proceedings before the Board may be

suspended until termination of the civil action. The section is

proposed to be amended to codify the Board's current policy of

suspending proceedings whenever either or both of the parties are

involved in a civil action or Board proceeding which may have a bearing

on the proceeding.

Section 2.117(b) now provides that when there is pending, at the

time when the question of suspension of proceedings is raised, a motion

which is potentially dispositive of the case, the motion may be decided

before the question of suspension is considered. The section is

proposed to be amended to clarify that the Board may decide the

potentially dispositive motion before the question of suspension is

considered, regardless of the order in which they were raised. The

proposed change codifies current Office practice.

Section 2.120(g)(1), which governs the imposition of sanctions when

a party fails to comply with an order of the Board relating to

discovery, now includes the phrase ``the Board does not have authority

to hold any person in contempt or to award any expenses to any party.''

The phrase is proposed to be amended to read ``the Board will not hold

any person in contempt or award any expenses to any party.'' The Board

has long taken the position that it does not have authority to award

expenses or attorney fees. See MacMillan Bloedel Ltd. v. Arrow-M Corp.,

203 USPQ 952, 954 (TTAB 1979); Fisons Ltd. v. Capability Brown Ltd.,

209 USPQ 167, 171 (TTAB 1980); Anheuser-Busch, Inc. v. Major Mud &

Chemical Co., 221 USPQ 1191, 1195 n. 9 (TTAB 1984); Luehrmann v. Kwik

Kopy Corp., 2 USPQ2d 1303, 1305 n.4 (TTAB 1987); Fort Howard Paper Co.

v. G.V. Gambina Inc., 4 USPQ2d 1552, 1554 (TTAB 1987); Nabisco Brands

Inc. v. Keebler Co., 28 USPQ2d 1237, 1238 (TTAB 1993). Cf. Driscoll v.

Cebalo, 5 USPQ2d 1477, 1481 (Bd. Pat. Int. 1982), aff'd in part, rev'd

in part, 731 F.2d 878, 221 USPQ 745 (Fed. Cir. 1984); Clevenger v.

Martin, 1 USPQ2d 1793, 1797 (Bd. Pat. App. & Int. 1986). However, in

1995 the PTO, by final rule notice published in the Federal Register of

March 17, 1995, at 60 FR 14488, and in the Official Gazette of April

11, 1995, at 1173 TMOG 36, amended Patent Rule 1.616, 37 CFR

Sec. 1.616, which concerns the imposition of sanctions in proceedings

before the Board of Patent Appeals and Interferences (Patent Board), to

provide for the imposition of a sanction in the form of compensatory

expenses and/or compensatory attorney fees. 37 CFR 1.616(a)(5) and

1.616(b). The notice of final rulemaking acknowledged the foregoing

decisions but concluded, based on a detailed analysis of the

Commissioner's authority to issue regulations imposing sanctions, that

the Commissioner has the authority to promulgate a rule authorizing

imposition of compensatory monetary sanctions. It is believed that the

adoption of a rule authorizing the Board to impose a sanction in the

form of compensatory expenses and/or compensatory attorney fees would

result in an increase in the number of papers and motions filed in

proceedings before the Board. In view thereof, and in order to

harmonize Sec. 2.120(g)(1) with Sec. 1.616, Sec. 2.120(g)(1) is

proposed to be amended to substitute a statement that the Board ``will

not'' hold any person in contempt or award any expenses to any party,

for the statement that the Board ``does not have authority'' to hold

any person in contempt or award any expenses to any party. Section

2.127(f), which now states in pertinent part that the Board ``does not

have authority to hold any person in contempt, or to award attorneys'

fees or other expenses to any party,'' is proposed to be amended in the

same manner.

Section 2.121(d), which now requires that a stipulation or

consented motion for the rescheduling of testimony periods or of the

closing date for discovery be submitted in one original and as many

photocopies as there are parties, is proposed to be amended to

eliminate the requirement that parties file the ``original'' as well as

copies of stipulations and consented motions. Instead, the proposed

rule requires that the stipulation or consented motion be submitted in

a number of copies equal to the number of parties to the proceeding

plus one copy for the Board. The Board has no need for an original, and

the proposed change codifies current Office practice.

Section 2.122(b)(1), which now provides, in pertinent part, that

the file of each application or registration specified in ``a

declaration of interference'' forms part of the record of the

proceeding without any action by the parties, is proposed to be amended

to clarify the rule by substituting the word ``notice'' for the word

``declaration.'' A declaration of an interference is issued by the

Commissioner upon the granting of a petition filed pursuant to

Sec. 2.91. An interference proceeding declared by the Commissioner does

not commence until the Examining Attorney has determined that all of

the subject marks are registrable; all of the marks have been published

in the Official Gazette for opposition; and the Board mails a ``notice

of interference'' notifying the parties that the interference

proceeding is thereby instituted. In the interim between the

Commissioner's declaration of an interference and the institution of

the proceeding by the Board, some of the applications mentioned in the

declaration of interference may become abandoned for one reason or

another. When the Board institutes the proceeding, it is only the

surviving applications which are specified in the notice of

interference, and it is only those application files which form part of

the record of the proceeding without any action by the parties.

Section 2.123(b) now provides, in pertinent part, that by agreement

of the parties, the testimony of any witness may be submitted in the

form of an affidavit by that witness, and that the parties may

stipulate what a particular witness would testify to if called, or may

stipulate the facts in the case. The section is proposed to be amended

to clarify that such agreement or stipulation must be in writing.

Section 2.123(f) now provides, in pertinent part, that the officer

certifying a testimony deposition shall, without delay, forward the

evidence, notices, and paper exhibits to the Commissioner of Patents

and Trademarks. This section is proposed to be amended to state that

either the officer or the party taking the testimony deposition, or its

attorney or other authorized representative, should forward this

material to the Commissioner. The proposed amendment makes it clear

that once the officer has certified the deposition, sealed the evidence

in an envelope or package, and inscribed thereon a certificate giving

the number and title of the case, the name of each witness, and the

date of sealing, either the officer or the party taking the deposition,

or its attorney or other authorized representative, may file the

deposition. That is, if the officer sends the envelope or package to

the party taking the deposition, or to its attorney or other authorized

representative, the party, or its attorney or other authorized

representative, need not return the envelope or package to the officer

for filing with the PTO, but rather may send it directly to the PTO.

Concomitant with this proposed amendment, the title of

[[Page 30809]]

Sec. 2.123(f), which now reads ``Certification and filing by officer,''

is proposed to be amended to read ``Certification and filing of

deposition.''

Section 2.123(f) is proposed to be further amended to eliminate the

present requirement that the material be forwarded to the Commissioner

of Patents and Trademarks ``without delay.'' The proposed amendment

conforms the section to current Board practice. While the Board prefers

that testimony depositions be submitted promptly, and such depositions

are normally filed with the Board at the same time that they are served

on the adverse party or parties to the proceeding, it is Board practice

to accept transcripts of testimony depositions at any time prior to the

rendering of a final decision on the case. The proposed amendment does

not affect the requirement of Sec. 2.125(a) that one copy of the

testimony transcript, together with copies of documentary exhibits and

duplicates or photographs of physical exhibits, be served on each

adverse party within thirty days after completion of the taking of that

testimony.

Similarly, Sec. 2.125(c), which now provides that certified

transcripts of testimony depositions, and exhibits thereto, are to be

filed promptly with the Board, is proposed to be amended to delete the

requirement for prompt filing with the Board. The proposed amendment

conforms the section to current Board practice.

Section 2.127(f) now provides, in part, that the Board ``does not

have authority'' to hold any person in contempt, or to award attorneys'

fees or other expenses to any party. The rule is proposed to be amended

to provide instead that the Board ``will not'' hold any person in

contempt, or award attorneys' fees or other expenses to any party. This

proposed provision corresponds to a similar provision in

Sec. 2.120(g)(1), as proposed to be amended, and is explained in more

detail in our discussion of Sec. 2.120(g)(1) above, under this same

heading.

Section 2.146(e)(1), as now written, provides for the filing of a

petition to the Commissioner from the denial of a request for an

extension of time to file a notice of opposition. This section is

proposed to be amended to provide also that an applicant may petition

the Commissioner from a decision granting such a request. The proposed

amendment codifies current practice and clarifies the rule.

Discussion of Specific Rules

Section 2.76(a) now provides, in relevant part, that an amendment

to allege use may be filed in an application under Section 1(b) of the

Act ``at any time between the filing of the application and the date

the examiner approves the mark for publication or the date of

expiration of the six-month response period after issuance of a final

action.'' The section is proposed to be amended to delete the phrase

``or the date of expiration of the six-month response period after

issuance of a final action.'' The proposed amendment reflects current

practice, as stated in ``Waiver of Trademark Rule 2.76(a),'' 1156 TMOG

12 (November 2, 1993).

Section 2.76(g) provides, in relevant part, that if an amendment to

allege use does not meet the minimum requirements specified in

Sec. 2.76(e), the deficiency may be corrected provided the mark has not

been approved for publication or the six-month response period after

issuance of a final action has not expired; and that if an acceptable

amendment to correct the deficiency is not filed prior to approval of

the mark for publication or prior to expiration of the six-month

response period after issuance of a final action, the amendment will

not be examined. The section is proposed to be amended to delete the

phrases ``or the six-month response period after issuance of a final

action has not expired'' and ``or prior to the expiration of the six-

month response period after issuance of a final action.'' The proposed

amendment reflects current practice.

Section 2.76(h), which provides that an amendment to allege use may

be withdrawn for any reason prior to approval of a mark for publication

or expiration of the six-month response period after issuance of a

final action, is proposed to be amended to delete the phrase ``or

expiration of the six-month response period after issuance of a final

action.'' The proposed amendment reflects current practice.

Section 2.85(e) pertains to the filing of certain specified papers,

including a petition for cancellation, with a fee which is insufficient

because multiple classes in an application or registration are

involved. The section is proposed to be amended to delete the

references to a petition for cancellation, because the matter of an

insufficient fee for a petition to cancel a registration having

multiple classes is covered, in greater detail, in Sec. 2.111(c)(1).

Section 2.87(c), which specifies that a request to divide an

application may be filed, inter alia, ``during an opposition, upon

motion granted by the Trademark Trial and Appeal Board,'' is proposed

to be amended to insert, after the words ``during an opposition,'' the

additional words ``or concurrent use or interference proceeding.'' The

proposed amendment codifies current practice and corrects an oversight

in the rule.

Section 2.101(d)(1), which now includes a cross-reference to

``Sec. 2.6(1),'' is proposed to be amended to correct the cross-

reference to ``Sec. 2.6(a)(17).''

Section 2.102(d), which now provides that every request to extend

the time for filing a notice of opposition should be submitted ``in

triplicate (original plus two copies),'' is proposed to be amended to

delete the words ``(original plus two copies).'' The proposed amendment

eliminates the requirement to file ``original'' extension of time

requests. The Board has no need for the original.

Section 2.111(b), which now includes a cross-reference to ``section

14(c) or (e)'' of the Act, is proposed to be amended to correct the

cross-reference to ``section 14(3) or (5)''. The subsections of Section

14 of the Act were renumbered by the Trademark Law Revision Act of

1988.

Section 2.111(c)(1), which now includes a cross-reference to

``Sec. Sec. 2.6(1) and 2.85(e),'' is proposed to be amended to correct

the first cross-reference to Sec. 2.6(a)(16) and to delete the cross-

reference to Sec. 2.85(e).

Section 2.117(a) now provides that whenever it shall come to the

attention of the Board ``that parties to a pending case are engaged in

a civil action which may be dispositive of the case, proceedings before

the Board may be suspended until termination of the civil action.'' The

section is proposed to be amended to insert the words ``a party or''

before the word ``parties,'' insert the words ``or a Board proceeding''

after the first appearance of the words ``civil action,'' and

substitute the words ``have a bearing on'' for the words ``be

dispositive of.'' The proposed amendments clarify the rule and codify

current practice.

Section 2.117(b) now provides that ``Whenever there is pending, at

the time when the question of the suspension of proceedings is raised,

a motion which is potentially dispositive of the case, the motion may

be decided before the question of suspension is considered.'' The

section is proposed to be amended to read ``Whenever there is pending

before the Board both a motion to suspend and a motion which is

potentially dispositive of the case, the potentially dispositive motion

may be decided before the question of suspension is considered,

regardless of the order in which the motions were filed.'' The proposed

amendment clarifies the rule and codifies current practice.

[[Page 30810]]

Section 2.119(d) provides, in pertinent part, that the mere

designation of a domestic representative does not authorize the person

designated to prosecute the proceeding unless qualified under

Sec. 10.14(a), or qualified under paragraphs (b) or (c) of

Sec. 10.14(c) and authorized under Sec. 2.17(b). The section is

proposed to be amended to delete the reference to Sec. 10.14(c). That

section refers to nonresidents, who cannot be domestic representatives.

The proposed amendment corrects an inadvertent error in the rule.

Section 2.120(a) now provides that the provisions of the Federal

Rules of Civil Procedure relating to discovery shall apply in

opposition, cancellation, interference, and concurrent use registration

proceedings except as otherwise provided in Sec. 2.120; that the Board

will specify the closing date for the taking of discovery; and that the

opening of discovery is governed by the Federal Rules of Civil

Procedure. The section is proposed to be amended to (1) preface the

first sentence with the qualifying words ``Wherever appropriate, the'';

(2) include a new sentence stating that the provisions of the Federal

Rules of Civil Procedure relating to automatic disclosure scheduling

conferences, conferences to discuss settlement and to develop a

discovery plan, and transmission to the court of a written report

outlining the discovery plan, are not applicable to Board proceedings;

(3) state that the Board will specify the opening (as well as the

closing) date for the taking of discovery; (4) delete the provision

that the opening of discovery is governed by the Federal Rules of Civil

Procedure; (5) specify that the discovery period will be set for a

period of 180 days; (6) provide that interrogatories, requests for

production of documents and things, and requests for admission must be

served in sufficient time that responses will fall due prior to the

close of the discovery period, and that discovery depositions must be

noticed and taken prior to the close of the discovery period; (7)

specify that extensions of the discovery period will be granted only

upon stipulation of the parties approved by the Board, and that the

parties may stipulate to a shortening of the discovery period; (8)

provide that responses to interrogatories, requests for production of

documents and things, and requests for admission must be served within

40 days from the date of service of such discovery requests; (9)

specify that the time to respond may be extended upon stipulation of

the parties, or upon motion showing extraordinary circumstances

approved by the Board; and (10) provide that the resetting of a party's

time to respond to an outstanding request for discovery will not result

in the automatic rescheduling of the discovery and/or testimony

periods, and that the discovery period will be rescheduled only upon

stipulation of the parties approved by the Board, and testimony periods

will be rescheduled only upon stipulation of the parties approved by

the Board, or upon motion showing extraordinary circumstances granted

by the Board.

Section 2.120(d)(1) now provides, in pertinent part, that the total

number of written interrogatories which a party may serve upon another

party pursuant to Rule 33 of the Federal Rules of Civil Procedure, in a

proceeding, shall not exceed 75, counting subparts, except that the

Board, in its discretion, may allow additional interrogatories upon

motion showing good cause, or upon stipulation of the parties; and that

a motion for leave to file additional interrogatories must be filed and

granted prior to the service of the proposed additional

interrogatories, and must be accompanied by a copy of the

interrogatories, if any, which have already been served by the moving

party, and by a copy of the interrogatories proposed to be served. The

section is proposed to be amended to lower the interrogatory number

limit from 75, counting subparts, to 25, counting subparts, and to

delete the references to a motion for leave to serve additional

interrogatories. However, the provision allowing additional

interrogatories upon stipulation of the parties is proposed to be

retained.

Section 2.120(d)(2), which now includes only a provision concerning

the place for production of documents and things, is proposed to be

amended to limit the number of requests for production of documents and

things which a party may serve upon another party, in a proceeding, to

15, counting subparts. Specifically, the section is proposed to be

amended to include new sentences providing that the total number of

requests for production of documents and things which a party may serve

upon another party pursuant to Rule 34 of the Federal Rules of Civil

Procedure, in a proceeding, shall not exceed 15, counting subparts,

except upon stipulation of the parties; that if a party upon which

requests for production of documents and things have been served

believes that the number of requests served exceeds the limitation

specified in the paragraph, and is not willing to waive this basis for

objection, the party shall, within the time for (and instead of)

serving answers and specific objections to the requests, serve a

general objection on the ground of their excessive number; and that if

the inquiring party, in turn, files a motion to compel discovery, the

motion must be accompanied by a copy of the set(s) of requests which

together are said to exceed the limitation, and must otherwise comply

with the requirements of Sec. 2.120(e). These proposed provisions

parallel the provisions of Sec. 2.120(d)(1), which limit the number of

interrogatories which a party may serve upon another party in a

proceeding.

Section 2.120(e), which governs motions to compel discovery, is

proposed to be amended by redesignating the present paragraph as

(e)(1), and amending that paragraph to insert, after the first

sentence, a new sentence specifying that a motion to compel must be

filed within 30 days after the close of the discovery period, as

originally set or as reset. In addition, Sec. 2.120(e) is proposed to

be amended to include a new paragraph, designated (e)(2), specifying

that when a party files a motion for an order to compel discovery, the

case will be suspended by the Board with respect to all matters not

germane to the motion, and no party should file any paper which is not

germane to the motion, except as otherwise specified in the Board's

suspension letter. The proposed new paragraph also provides that the

filing of a motion to compel shall not toll the time for a party to

respond to any outstanding discovery requests or to appear for any

noticed discovery deposition.

Section 2.120(g)(1), which now states, in pertinent part, that

``the Board does not have authority to hold any person in contempt or

to award any expenses to any party,'' is proposed to be amended to

state that ``the Board will not hold any person in contempt or award

any expenses to any party.''

Section 2.120(h), which concerns requests for admission, is

proposed to be amended to redesignate the present paragraph as (h)(2);

delete the first sentence, which reads ``Requests for admissions shall

be governed by Rule 36 of the Federal Rules of Civil Procedure except

that the Trademark Trial and Appeal Board does not have authority to

award any expenses to any party.''; add to the beginning a new sentence

reading ``Any motion by a party to determine the sufficiency of an

answer or objection to a request made by that party for an admission

must be filed within 30 days after the close of the discovery period,

as originally set or as reset.''; and revise the beginning of the

second sentence, which now reads, ``A motion by a party to determine

the sufficiency of an answer or objection to a request made

[[Page 30811]]

by that party for an admission shall * * *,'' to read ``The motion

shall * * *.'' The section is proposed to be further amended to add a

new paragraph, designated (h)(1), limiting the number of requests for

admission which a party may serve upon another party, in a proceeding,

to 25, counting subparts. Specifically, the proposed new paragraph

provides that the total number of requests for admission which a party

may serve upon another party pursuant to Rule 36 of the Federal Rules

of Civil Procedure, in a proceeding, shall not exceed 25, counting

subparts, except upon stipulation of the parties; that if a party upon

which requests for admission have been served believes that the number

of requests served exceeds the limitation specified in the paragraph,

and is not willing to waive this basis for objection, the party shall,

within the time for (and instead of) serving answers and specific

objections to the requests, serve a general objection on the ground of

their excessive number; and that if the inquiring party, in turn, files

a motion to determine the sufficiency of the objection, the motion must

be accompanied by a copy of the set(s) of requests for admission which

together are said to exceed the limitation, and must otherwise comply

with the requirements of paragraph (h)(2) of the section. The proposed

provisions parallel the provisions of Sec. 2.120(d)(1), which limit the

number of interrogatories which a party may serve upon another party in

a proceeding. Finally, Sec. 2.120(h) is proposed to be amended to add

another new paragraph, designated (h)(3), which provides for the

suspension of proceedings when a motion to determine the sufficiency of

an answer or objection to a request for admission is filed.

Specifically, the proposed new paragraph provides that when a party

files a motion to determine the sufficiency of an answer or objection

to a request made by that party for an admission, the case will be

suspended by the Board with respect to all matters not germane to the

motion, and no party should file any paper which is not germane to the

motion, except as otherwise specified in the Board's suspension order.

The proposed new paragraph also provides that the filing of a motion to

determine the sufficiency of an answer or objection to a request for

admission shall not toll the time for a party to respond to any

outstanding discovery requests or to appear for any noticed discovery

deposition. The provisions of proposed new Sec. 2.120(h)(3) parallel

the provisions of proposed new Sec. 2.120(e) and Sec. 2.127(d), as

proposed to be amended.

Section 2.121(a)(1) is proposed to be amended by revising the third

sentence, which now provides that testimony periods may be rescheduled

``by stipulation of the parties approved by the Board, or upon motion

granted by the Board, or by order of the Board,'' to provide that

testimony periods may be rescheduled ``by stipulation of the parties

approved by the Board, or upon motion showing extraordinary

circumstances granted by the Board.'' The sentence is proposed to be

further amended to specify that ``if such a motion is denied, the

testimony periods will remain as set.'' In addition, the last sentence

of the section, which now reads ``The resetting of a party's time to

respond to an outstanding request for discovery will not result in the

automatic rescheduling of the discovery and/or testimony periods; such

dates will be rescheduled only upon stipulation of the parties approved

by the Board, or upon motion granted by the Board, or by order of the

Board,'' is proposed to be deleted. The sentence is proposed to be

added to Sec. 2.120(a), with the latter part of the sentence being

modified to read ``the discovery period will be rescheduled only upon

stipulation of the parties approved by the Board, and testimony periods

will be rescheduled only upon stipulation of the parties approved by

the Board, or upon motion showing extraordinary circumstances granted

by the Board.'' The proposed modification is consistent with the third

sentence of Sec. 2.121(a)(1), as proposed to be amended.

Section 2.121(c), which governs the length of the testimony

periods, is proposed to be amended to enlarge the rebuttal testimony

period from 15 to 30 days, and to enlarge all other testimony periods

from 30 to 60 days. In addition, the last sentence of the section,

which now provides that the periods may be extended ``by stipulation of

the parties approved by the Trademark Trial and Appeal Board, or upon

motion granted by the Board, or by order of the Board,'' is proposed to

be amended to provide that the periods may be extended ``by stipulation

of the parties approved by the Trademark Trial and Appeal Board, or

upon motion showing extraordinary circumstances granted by the Board.''

The sentence is proposed to be further amended to specify that ``if

such a motion is denied, the testimony periods will remain as set.''

The proposed amendments to this sentence parallel the proposed

amendment to the third sentence of Sec. 2.121(a)(1).

Section 2.121(d) now provides, in pertinent part, that when parties

stipulate to the rescheduling of testimony periods or to the

rescheduling of the closing date for discovery and the rescheduling of

testimony periods, a stipulation ``submitted in one original plus as

many photocopies as there are parties'' will, if approved, be so

stamped, signed, and dated, and the copies will be promptly returned to

the parties. The section is proposed to be amended by revising the

quoted section to read ``submitted in a number of copies equal to the

number of parties to the proceeding plus one copy for the Board.''

Section 2.122(b)(1), which now provides, in pertinent part, that

each application or registration file specified in a declaration of

interference forms part of the record of the proceeding without any

action by the parties, is proposed to be amended by substituting the

word ``notice'' for the word ``declaration.''

Section 2.122(d)(1), which now includes a cross-reference to

``Sec. 2.6(n),'' is proposed to be amended to correct the cross-

reference to ``Sec. 2.6(b)(4).''

Section 2.123(b) now provides, in its second sentence, that by

agreement of the parties, the testimony of any witness or witnesses of

any party may be submitted in the form of an affidavit by such witness

or witnesses. The sentence is proposed to be amended by inserting the

word ``written'' between the words ``by'' and ``agreement.'' The third

sentence of the section now provides that the parties may stipulate

what a particular witness would testify to if called, or the facts in

the case of any party may be stipulated. The sentence is proposed to be

amended by inserting the words ``in writing'' after the word

``stipulate'' and after the word ``stipulated.''

Section 2.123(f) pertains to the certification and filing of a

deposition by the officer before whom the deposition was taken. The

third sentence of the second paragraph of the section now reads,

``Unless waived on the record by an agreement, he shall then, without

delay, securely seal in an envelope all the evidence, notices, and

paper exhibits, inscribe upon the envelope a certificate giving the

number and title of the case, the name of each witness, and the date of

sealing, address the package, and forward the same to the Commissioner

of Patents and Trademarks.'' The sentence is proposed to be amended to

delete the words ``without delay,'' to put a period after the word

``sealing,'' and to convert the remainder of the present sentence into

a new sentence which reads, ``The officer or the party taking the

deposition, or its attorney or other authorized representative, shall

then

[[Page 30812]]

address the package and forward the same to the Commissioner of Patents

and Trademarks.'' The fourth sentence of the paragraph now reads, ``If

the weight or bulk of an exhibit shall exclude it from the envelope, it

shall, unless waived on the record by agreement of all parties, be

authenticated by the officer and transmitted in a separate package

marked and addressed as provided in this section.'' The sentence is

proposed to be amended to insert, after the word ``transmitted,'' the

phrase ``by the officer or the party taking the deposition, or its

attorney or other authorized representative.'' Finally, in view of the

proposed amendments to the third and fourth sentences, the title of the

section, which now reads ``Certification and filing by officer,'' is

proposed to be amended to read ``Certification and filing of

deposition.''

Section 2.125(c), which now provides that one certified transcript

(of a testimony deposition) and exhibits shall be filed ``promptly,''

with the Board, is proposed to be amended to delete the word

``promptly.''

Section 2.127(a), which governs the filing of briefs on motions, is

proposed to be amended to (1) enlarge the time for filing a brief in

response to a motion from 15 days to 30 days, and preface the time

provision with the phrase ``Except as provided in paragraph (e)(1) of

this section, a''; (2) delete, from the second sentence, a provision

for extension of this time by ``order of the Board on motion for good

cause'' and substitute a provision for an extension by ``stipulation of

the parties approved by the Board, or upon motion showing extraordinary

circumstances granted by the Board,'' with the added provision that,

``if such a motion for an extension is denied, the time for responding

to the motion remains as specified under this section''; (3) add a new

provision to specify that a reply brief, if filed, shall be filed

within 15 days from the date of service of the brief in response to the

motion, and preface this new provision with the phrase ``Except as

provided in paragraph (e)(1) of this section, a''; (4) specify that the

time for filing a reply brief will not be extended, and that no further

papers in support of or in opposition to a motion will be considered by

the Board; (5) add form requirements for briefs, i.e., that they shall

be submitted in typewritten or printed form, double spaced, in at least

pica or eleven-point type, on letter-size paper; (6) add a page

limitation for briefs, namely, 25 pages for a brief in support of or in

response to a motion and 10 pages for a reply brief; and (7) specify

that exhibits submitted in support of or in opposition to a motion

shall not be deemed to be part of the brief for purposes of determining

the length of the brief.

Section 2.127(b), which now provides, in pertinent part, that any

request for reconsideration or modification of an order or decision

issued on a motion must be filed within thirty days from the date

thereof, is proposed to be amended to change the specification of the

time period for requesting reconsideration or modification from

``thirty days'' to ``one month.''

Section 2.127(d) provides, in its first sentence, that when any

party files a motion which is potentially dispositive of a proceeding,

the case will be suspended by the Board with respect to all matters not

germane to the motion, and no party should file any paper which is not

germane to the motion. The sentence is proposed to be amended to add to

the end of the sentence the phrase ``except as otherwise specified in

the Board's suspension order.'' The section is proposed to be further

amended to add, immediately after the first sentence, a new sentence

providing that filing a summary judgment motion shall not toll the time

for the moving party to respond to any outstanding discovery requests

or to appear at a noticed discovery deposition, but it shall toll the

time for the nonmoving party to serve such responses or to appear for

such deposition.

Section 2.127(e)(1), which governs the time for filing a motion for

summary judgment, is proposed to be amended to add, at the beginning of

the section, a provision that a motion for summary judgment may not be

filed until notification of the proceeding has been sent to the parties

by the Board. In addition, the section is proposed to be amended to add

to the end thereof provisions specifying that (1) a motion under Rule

56(f) of the Federal Rules of Civil Procedure, if filed in response to

a motion for summary judgment, shall be filed within 30 days from the

date of service of the summary judgment motion; (2) the time for filing

a motion under Rule 56(f) will not be extended; (3) if no motion under

Rule 56(f) is filed, a brief in response to the motion for summary

judgment shall be filed within 60 days from the date of service of the

motion unless the time is extended by stipulation of the parties

approved by the Board, or upon motion showing extraordinary

circumstances granted by the Board and that, if such a motion for an

extension is denied, the time for responding to the motion for summary

judgment remains as specified under this section; (4) a reply brief, if

filed, shall be filed within 30 days from the date of service of the

brief in response to the motion; (5) the time for filing a reply brief

will not be extended; and (6) no further papers in support of or in

opposition to a motion for summary judgment will be considered by the

Board.

Section 2.127(f), which now states that ``The Board does not have

authority to hold any person in contempt, or to award attorneys' fees

or other expenses to any party,'' is proposed to be amended to state

instead that ``The Board will not hold any person in contempt, or award

attorneys'' fees or other expenses to any party.''

Section 2.134(a), which now includes a cross-reference to ``section

7(d)'' of the Act of 1946, is proposed to be amended to correct the

cross-reference to ``section 7(e).''

Section 2.146(e)(1), which now provides for filing a petition to

the Commissioner from the denial of a request for an extension of time

to file a notice of opposition, is proposed to be amended to provide

also for filing a petition from the grant of such a request.

Specifically, the first sentence of the section now provides that a

petition from the denial of a request for an extension of time to file

a notice of opposition shall be filed within fifteen days from the date

of mailing of the denial of the request and shall be served on the

attorney or other authorized representative of the applicant, if any,

or on the applicant. The sentence is proposed to be revised to read,

``A petition from the grant or denial of a request for an extension of

time to file a notice of opposition shall be filed within fifteen days

from the date of mailing of the grant or denial of the request. A

petition from the grant of a request shall be served on the attorney or

other authorized representative of the potential opposer, if any, or on

the potential opposer. A petition from the denial of a request shall be

served on the attorney or other authorized representative of the

applicant, if any, or on the applicant.'' In addition, the present

third sentence of the section, which provides, in pertinent part, that

the applicant may file a response within fifteen days from the date of

service of the petition and shall serve a copy of the response on the

petitioner, is proposed to be amended by revising the beginning of the

sentence to read, ``The potential opposer or the applicant, as the case

may be, may file a response within fifteen days * * *.''

Section 3.41, which now includes a cross-reference to

``Sec. 2.6(q),'' is proposed to be amended to correct the cross-

reference to ``Sec. 2.6(b)(6).''

[[Page 30813]]

Environmental, Energy, and Other Considerations

The proposed rule changes are in conformity with the requirements

of the Regulatory Flexibility Act (5 U.S.C. 601 et seq.), Executive

Order 12612, and the Paperwork Reduction Act of 1995 (PRA) (44 U.S.C.

3501 et seq.). The proposed changes have been determined to be not

significant for purposes of Executive Order 12866.

The Assistant General Counsel for Legislation and Regulation of the

Department of Commerce has certified to the Chief Counsel for Advocacy,

Small Business Administration, that the proposed rule changes will not

have a significant impact on a substantial number of small entities

(Regulatory Flexibility Act, 5 U.S.C. 605(b)). The principal effect of

this rule change is to improve practice and expedite proceedings in

inter partes cases before the Board.

The PTO has determined that the proposed rule changes have no

Federalism implications affecting the relationship between the National

Government and the States as outlined in Executive Order 12612.

This rule involves the Petition to Cancel requirement which has not

been previously approved by the OMB under the PRA. A request to collect

this information has been submitted to OMB for review and approval. The

reporting burden for this collection of information is estimated to be

20 minutes per response, including the time for reviewing instructions,

searching existing data sources, gathering and maintaining the data

needed, and completing and reviewing the collection of information.

Comments are invited on: (a) whether the collection of information is

necessary for proper performance of the functions of the agency; (b)

the accuracy of the agency's estimate of the burden; (c) ways to

enhance the quality, utility, and clarity of the information to be

collected; and (d) ways to minimize the burden of the collection of

information to respondents. This rule also involves information

requirements associated with filing an Opposition to the Registration

of a Mark, Amendment to Allege Use, and dividing an application. These

requirements have been previously approved by the OMB under control

number 0651-0009. Send comments regarding the burden estimate or any

other aspects of the information requirements, including suggestions

for reducing the burden, to the Assistant Commissioner for Trademarks,

Box TTAB--No Fee, 2900 Crystal Drive, Arlington, VA 22202-3513, marked

to the attention of Ellen J. Seeherman, and to the Office of

Information and Regulatory Affairs, Office of Management and Budget,

Washington, DC 20503 (Attention: PTO Desk Officer).

Notwithstanding any other provision of law, no person is required

to respond to, nor shall a person be subject to a penalty for failure

to comply with, a collection of information, subject to the

requirements of the PRA, unless that collection of information displays

a currently valid Office of Management and Budget (OMB) control number.

List of Subjects

37 CFR Part 2

Administrative practice and procedure, Courts, Lawyers, Trademarks.

37 CFR Part 3

Administrative practice and procedure, Patents, Trademarks.

For the reasons given in the preamble and pursuant to the authority

contained in Sec. 41 of the Trademark Act of July 5, 1946, as amended,

the Patent and Trademark Office proposes to amend Part 2 and Part 3 of

Title 37 of the Code of Federal Regulations by amending or revising

Secs. 2.76, 2.85, 2.87, 2.101, 2.102, 2.111, 2.117, 2.119, 2.120,

2.121, 2.122, 2.123, 2.125, 2.127, 2.134, 2.146 and 3.41, as set forth

below. Additions are indicated by arrows and deletions by brackets.

PART 2--RULES OF PRACTICE IN TRADEMARK CASES

1. The authority citation for part 2 continues to read as follows:

Authority: 15 U.S.C. 1123; 35 U.S.C. 6, unless otherwise noted.

1a. Section 2.76 is proposed to be amended by revising paragraphs

(a), (g), and (h) to read as follows:

Sec. 2.76 Amendment to allege use.

(a) An application under section 1(b) of the Act may be amended to

allege use of the mark in commerce under section 1(c) of the Act at any

time between the filing of the application and the date the examiner

approves the mark for publication [or the date of expiration of the

six-month response period after issuance of a final action].

Thereafter, an allegation of use may be submitted only as a statement

of use under Sec. 2.88 after the issuance of a notice of allowance

under section 13(b)(2) of the Act. If an amendment to allege use is

filed outside the time period specified in this paragraph, it will be

returned to the applicant.

* * * * *

(g) If the amendment to allege use is filed within the permitted

time period but does not meet the minimum requirements specified in

paragraph (e) of this section, applicant will be notified of the

deficiency. The deficiency may be corrected provided the mark has not

been approved for publication [or the six-month response period after

issuance of a final action has not expired]. If an acceptable amendment

to correct the deficiency is not filed prior to approval of the mark

for publication [or prior to the expiration of the six-month response

period after issuance of a final action], the amendment will not be

examined.

(h) An amendment to allege use may be withdrawn for any reason

prior to approval of a mark for publication [or expiration of the six-

month response period after issuance of a final action].

2. Section 2.85 is proposed to be amended by revising paragraph (e)

to read as follows:

Sec. 2.85 Classification schedules.

* * * * *

(e) Where the amount of the fee received on filing an appeal in

connection with an application or on an application for renewal [or in

connection with a petition for cancellation] is sufficient for at least

one class of goods or services but is less than the required amount

because multiple classes in an application or registration are

involved, the appeal or renewal application [or petition for

cancellation] will not be refused on the ground that the amount of the

fee was insufficient if the required additional amount of the fee is

received in the Patent and Trademark Office within the time limit set

forth in the notification of this defect by the Office, or if action is

sought only for the number of classes equal to the number of fees

submitted.

* * * * *

3. Section 2.87 is proposed to be amended by revising paragraph (c)

to read as follows:

Sec. 2.87 Dividing an application.

* * * * *

(c) A request to divide an application may be filed at any time

between the filing of the application and the date the Trademark

Examining Attorney approves the mark for publication or the date of

expiration of the six-month response period after issuance of a final

action; or during an opposition >or concurrent use or interference

proceeding2.6(a)(17)(3)(5)2.6(a)(16)a party oror a Board proceedinghave a

bearing onbefore the Board both a motion to

suspend andpotentially dispositiveregardless of the order in

which the motions were filed(b)Wherever appropriate, theThe

provisions of the Federal Rules of Civil Procedure relating to

automatic disclosure, scheduling conferences, conferences to discuss

settlement and to develop a discovery plan, and transmission to the

court of a written report outlining the discovery plan, are not

applicable to Board proceedings.opening ands forThe discovery period will be set for a period of 180 days.

Interrogatories, requests for production of documents and things, and

requests for admission must be served in sufficient time that responses

will fall due prior to the close of the discovery period. Discovery

depositions must be noticed and taken prior to the close of the

discovery period. Extensions of the discovery period will be granted

only upon stipulation of the parties approved by the Board. The parties

may stipulate to a shortening of the discovery period. Responses to

interrogatories, requests for production of documents and things, and

requests for admission must be served within 40 days from the date of

service of such discovery requests. The

[[Page 30815]]

time to respond may be extended upon stipulation of the parties, or

upon motion showing extraordinary circumstances granted by the Board.

The resetting of a party's time to respond to an outstanding request

for discovery will not result in the automatic rescheduling of the

discovery and/or testimony periods; the discovery period will be

rescheduled only upon stipulation of the parties approved by the Board,

and testimony periods will be rescheduled only upon stipulation of the

parties approved by the Board, or upon motion showing extraordinary

circumstances granted by the Board.25sThe total number of requests for production of documents and

things which a party may serve upon another party pursuant to Rule 34

of the Federal Rules of Civil Procedure, in a proceeding, shall not

exceed 15, counting subparts, except upon stipulation of the parties.

If a party upon which requests for production of documents and things

have been served believes that the number of requests served exceeds

the limitation specified in this paragraph, and is not willing to waive

this basis for objection, the party shall, within the time for (and

instead of) serving answers and specific objections to the requests,

serve a general objection on the ground of their excessive number. If

the inquiring party, in turn, files a motion to compel discovery, the

motion must be accompanied by a copy of the set(s) of requests which

together are said to exceed the limitation, and must otherwise comply

with the requirements of paragraph (e) of this section.(1)The motion must be filed within 30 days after the close of

the discovery period, as originally set or as reset.(2) When a party files a motion for an order to compel discovery,

the case will be suspended by the Trademark Trial and Appeal Board with

respect to all matters not germane to the motion, and no party should

file any paper which is not germane to the motion, except as otherwise

specified in the Board's suspension order. The filing of a motion to

compel shall not toll the time for a party to respond to any

outstanding discovery requests or to appear for any noticed discovery

deposition.will nots(1)The total number of

requests for admission which a party may serve upon another party,

pursuant to Rule 36 of the Federal Rules of Civil Procedure, in a

proceeding, shall not exceed 25, counting subparts, except upon

stipulation of the parties. If a party upon which requests for

admission have been served believes that the number of requests served

exceeds the limitation specified in this paragraph, and is not willing

to waive this basis for objection, the party shall, within the time for

(and instead of) serving answers and specific objections to the

requests, serve a general objection on the ground of their excessive

number. If the inquiring party, in turn, files a motion to determine

the sufficiency of the objection, the motion must be accompanied by a

copy of the

[[Page 30816]]

set(s) of requests for admission which together are said to exceed the

limitation, and must otherwise comply with the requirements of

paragraph (h)(2) of this section.

(2) Any must be filed within 30 days after the close of the discovery period,

as originally set or as reset. The motion(3) When a party files a motion to determine the sufficiency of an

answer or objection to a request made by that party for an admission,

the case will be suspended by the Trademark Trial and Appeal Board with

respect to all matters not germane to the motion, and no party should

file any paper which is not germane to the motion, except as otherwise

specified in the Board's suspension order. The filing of a motion to

determine the sufficiency of an answer or objection to a request for

admission shall not toll the time for a party to respond to any

outstanding discovery requests or to appear for any noticed discovery

deposition.showing

extraordinary circumstancesif such a motion is

denied, the testimony periods will remain as set3060showing extraordinary circumstancesif

such a motion is denied, the testimony periods will remain as setin a number of copies equal to the

number of parties to the proceeding plus one copy for the Boarda copyeach ofnoticeSec. 2.6(b)(4)writtenin writingin writingof deposition. The officer

or the party taking the deposition, or its attorney or other authorized

representative, shall thenby the officer or the party taking the

deposition, or its attorney or other authorized representativeExcept as provided in paragraph (e)(1) of this section a30stipulation of the parties approved by the Board, or upon motion

showing extraordinary circumstances granted by the Board; if such a

motion for an extension is denied, the time for responding to the

motion remains as specified under this sectionExcept as provided in paragraph (e)(1) of this

section, a reply brief, if filed, shall be filed within 15 days from

the date of service of the brief in response to the motion. The time

for filing a reply brief will not be extended. No further papers in

support of or in opposition to a motion will be considered by the

Board. Briefs shall be submitted in typewritten or printed form, double

spaced, in at least pica or eleven-point type, on letter-size paper.

The brief in support of the motion and the brief in response to the

motion shall not exceed 25 pages in length; and a reply brief shall not

exceed 10 pages in length. Exhibits submitted in support of or in

opposition to the motion shall not be deemed to be part of the brief

for purposes of determining the length of the brief. When a party fails

to file a brief in response to a motion, the Board may treat the motion

as conceded. An oral hearing will not be held on a motion except on

order by the Board.

(b) Any request for reconsideration or modification of an order or

decision issued on a motion must be filed within >one month15except as otherwise specified

in the Board's suspension order. The filing of a summary judgment

motion shall not toll the time for the moving party to respond to any

outstanding discovery requests or to appear for any noticed discovery

deposition, but it shall toll the time for the nonmoving party to serve

such responses or to appear for such depositionA motion for summary judgment may not be filed until

notification of the proceeding has been sent to the parties by the

Trademark Trial and Appeal Board., if

filed,A motion under Rule 56(f) of the Federal Rules of Civil

Procedure, if filed in response to a motion for summary judgment, shall

be filed within 30 days from the date of service of the summary

judgment motion. The time for filing a motion under Rule 56(f) will not

be extended. If no motion under Rule 56(f) is filed, a brief in

response to the motion for summary judgment shall be filed within 60

days from the date of service of the motion unless the time is extended

by stipulation of the parties approved by the Board, or upon motion

showing extraordinary circumstances granted by the Board; if such a

motion for an extension is denied, the time for responding to the

motion for summary judgment remains as specified under this section. A

reply brief, if filed, shall be filed within 30 days from the date of

service of the brief in response to the motion. The time for filing a

reply brief will not be extended. No further papers in support of or in

opposition to a motion for summary judgment will be considered by the

Board.will not7(e)grant orgrant or. A petition from the grant of a requestattorney or other authorized representative of the potential

opposer, if any, or on the potential opposer. A petition from the

denial of a request shall be served on thepotential opposer or, as the

case may be,Sec. 2.6(b)(6)< [Sec. 2.6(q)] of this

chapter for trademarks.

Dated: May 30, 1997.

Bruce A. Lehman,

Assistant Secretary of Commerce and Commissioner of Patents and

Trademarks.

[FR Doc. 97-14711 Filed 6-4-97; 8:45 am]

BILLING CODE 3510-16-P