iscellaneous Changes to Trademark Trial and Appeal Board Rules

DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 2 and 3

[Docket No. 970428100-8199-03]

RIN 0651-AA87

iscellaneous Changes to Trademark Trial and Appeal Board Rules

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The Patent and Trademark Office (PTO) is amending the rules

governing practice before the Trademark Trial and Appeal Board (Board).

The amendments provide for the opening and the length of the discovery

period; specify that the automatic disclosure provisions of the Federal

Rules of Civil Procedure do not apply to Board proceedings; state that

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

any party; specify requirements for briefs on motions; enlarge the time

for filing a response to a motion for summary judgment; specify the

time for filing motions under Rule 56(f) of the Federal Rules of Civil

Procedure (motions for discovery to enable parties to respond to

motions for summary judgment); and specify the time for filing motions

to compel and motions to test the sufficiency of an answer or objection

to a request for admission. In addition, the amendments clarify the

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

correct cross-references.

DATES: Effective Date: These rule amendments will be effective October

9, 1998.

Applicability Dates: Two of the provisions of amended Sec. 2.120(a)

(the provisions that the Board will specify the opening date for

discovery and that the discovery period will be set for a period of 180

days), will not apply in cases in which a trial order has been issued

by the Board prior to October 9, 1998. The provision of amended

Sec. 2.120(e)(1) that a motion to compel must be filed prior to the

commencement of the first testimony period, as originally set or as

reset, will apply only in those cases in which trial dates, beginning

with the closing date for the discovery period, are set or reset on or

after October 9, 1998. Similarly, the provision of amended

Sec. 2.120(h)(1) that a motion to determine the sufficiency of an

answer or objection to a request for admission must be filed prior to

the commencement of the first testimony period, as originally set or as

reset, will apply only in those cases in which trial dates, beginning

with the closing date for the discovery period, are set or reset on or

after October 9, 1998.

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: A Notice of Proposed Rulemaking was

published in the Federal Register (62 FR 30802) on June 5, 1997, and in

the Official Gazette of the Patent and Trademark Office (1199 TMOG 88)

on June 24, 1997. The purpose of the proposed rule amendments was to

improve practice and expedite proceedings in inter partes cases before

the Board, codify and clarify certain practices of the Board, and

correct certain cross-references to citations of the Trademark Act of

1946 and the Code of Federal Regulations.

In response to a request for written comments, thirty-four written

comments were received. Many of the comments suggested that a public

hearing be scheduled. As a result, the PTO gave notice in the November

4, 1997 Federal Register (62 FR 59640), and in the November 25, 1997

Official Gazette (1204 TMOG 88), of a public hearing on the proposed

rules, and reopened the comment period. At the same time, the PTO

announced that it was withdrawing two of the rule amendments proposed

in the June 5, 1997 Notice of Proposed Rulemaking. Those withdrawn

amendments were to Secs. 2.120(d)(2) and 2.120(h) to limit the number

of requests for production of documents and requests for admission,

respectively, which may be served in an inter partes proceeding before

the Board.

At the public hearing, held on December 17, 1997, seven witnesses

testified. The written and oral comments represent the views of 29

individuals and law firms and five trademark law associations, namely,

the Intellectual Property Law Section of the American Bar Association,

the American Intellectual Property Law Association, the Intellectual

Property Law Section of The District of Columbia Bar, the New York

Intellectual Property LawAssociation, and the International Trademark

Association. A number of rule amendments suggested in the written and

oral comments, though meritorious, cannot be adopted at this time

because they are outside the scope of the present rulemaking. Some of

these suggestions are discussed below; others, particularly suggestions

not directed specifically to one of the proposed rule amendments, are

not.

Background to Rule Amendments

In recent years there has been a rapid growth in the number of new

proceedings filed with the Board, coupled with a marked increase in the

number of motions and other papers filed in each inter partes case. As

a result, the Board's workload has increased dramatically. Many of the

inter partes rule amendments proposed in the Notice of Proposed

Rulemaking were specifically designed to help reduce the Board's

backlog of pending motions and cases ready for final decision, stem

perceived abuses of the rules, and promote expeditious prosecution and

defense of cases. These proposed amendments involved substantial

changes in Board inter partes practice. For example, amendments were

proposed to (1) lengthen the discovery and trial periods, as well as

the time for responding to motions and requests for discovery; (2)

concomitantly limit the situations in which extensions of these times

would be granted; (3) limit the number of requests for production of

documents and things and requests for admission which one party could

serve upon another in a proceeding; (4) further limit the number of

interrogatories which one party could serve upon another; (5) 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 (6) specify

that the filing of a summary judgment motion would not toll the time

for the moving party to respond to outstanding discovery requests but

would toll the time for the nonmoving party to do so.

A significant number of the individuals and organizations which

offered written or oral comments on the proposed rules strongly

objected to these substantial changes. Accordingly, the PTO is not

going forward with them at this time. Instead, the PTO is going forward

only with those proposed rule amendments which involve modest changes

in Board practice, or which serve to clarify the rules, codify current

practice, or correct cross-references in the rules. The Board is

considering other measures to deal with its increased workload,

including a pilot program to make greater use of telephone conferences

in determining pending interlocutory matters and motions. However, the

PTO will continue to monitor carefully the problems which gave rise to

the Notice of Proposed Rulemaking, and may propose and adopt additional

changes in the rules governing Board inter partes practice if

necessary.

Discussion of Specific Rules and Response to Comments

The comments, if any, on a specific rule and the response to the

comments are provided with the discussion of the specific rule.

Comments in support of

[[Page 48083]]

proposed rule changes generally have not been reported.

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 amended to delete the phrase ``or the date of

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

action.'' Under the amended rule, an amendment to allege use may be

filed more than six months after the issuance of a final action, as a

result of which the amendment may be filed during the pendency of an

appeal. This brings the rule into conformity with current practice, as

stated in ``Waiver of Trademark Rule 2.76(a),'' 1156 TMOG 12 (November

2, 1993).

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

amendment to allege use does not meet the minimum requirements

specified in ( 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.'' It also

provides 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 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.'' This

amendment codifies current practice, which allows a deficiency in an

amendment to allege use to be corrected subsequent to the six-month

response period after issuance of a final action.

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 amended to delete the phrase ``or expiration of the

six-month response period after issuance of a final action.'' As a

result of the rule amendment, an amendment to allege use may be

withdrawn during the pendency of an appeal. This amendment, too,

codifies 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 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) now provides 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.'' The section

is amended to provide also that a request to divide an application may

be filed during a concurrent use or interference proceeding. The

amendment codifies current practice and corrects an oversight in the

rule.

Section 2.87(c) also now provides that 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.'' Similarly, this

section now provides that a request to divide an application under

section 1(b) of the Act may be filed with a statement of use or ``at

any time between the filing of a statement of use and the date the

Trademark Examining Attorney approves the mark for registration or the

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

final action.'' The section is amended to delete the phrase ``or the

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

final action'' from the two places where it occurs in this section.

Under the amended rule, a request to divide may be filed more than six

months after the issuance of a final action, as a result of which the

request to divide may be filed during the pendency of an appeal. While

this amendment was not included in the notice of proposed rulemaking,

it corresponds to the amendment to Secs. 2.76(a), (g) and (h),

discussed above, and is advantageous to applicants. With this

amendment, an applicant may divide out from its application those

classes or that portion of the goods or services in a class to which no

final refusal or requirement pertains. The divided out application will

immediately go forward to publication or registration, as appropriate,

and will avoid the delays related to briefing and deciding the issues

involved in the appeal.

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

``Sec. 2.6(1),'' is 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 amended to delete the words

``(original plus two copies)''. While a request must be submitted in

triplicate, 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 amended to correct the cross-reference to

``section 14(3) or (5)''.

Section 2.111(c)(1) now includes a cross-reference to ``Sec. 2.6(1)

and 2.85(e)''. The section is amended to correct the cross-reference

``Sec. 2.6(1)'' to ``Sec. 2.6(a)(16)''. The section is further amended

to delete the cross-reference to Sec. 2.85(e) in view of the amendment

to that section.

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

quoted portion of the section is amended to read ``that a party or

parties to a pending case are engaged in a civil action or another

Board proceeding which may have a bearing on the case, proceedings

before the Board may be suspended until termination of the civil action

or the other Board proceeding.'' The amendment clarifies the rules and

codifies the Board's current practice on suspension of proceedings,

which is that a Board proceeding may be suspended if any of the parties

is engaged in a civil action or another Board proceeding which may have

a bearing on the proceeding.

Comment: One comment suggested that Sec. 2.117(a) conclude with the

phrase ``or the Board proceeding'' to correspond to the previous change

in that section. That comment also suggested that the rule be modified

to allow a third party who has a pending application, or who is a party

in a proceeding which has been suspended pending the outcome of the

pending case, to apprise the Board of the impact of the suspension on

the third party.

Response: The first suggestion has been adopted. The suggested

modification to allow third parties to advise the Board about the

impact on them of a suspension order goes beyond the scope of the

amendment as originally proposed. Moreover, no purpose would be served

by allowing third parties to file such impact statements. The Board

suspends proceedings when a decision in a civil action or another Board

proceeding may

[[Page 48084]]

have a bearing on the issues in the pending case. That effect would not

be altered by any adverse impact which suspension of the proceeding

might have upon a third party.

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 amended to clarify that, when a motion to suspend and a

motion which is potentially dispositive of the case are both pending,

the Board may decide the potentially dispositive motion before the

question of suspension is considered, regardless of the order in which

the motions were filed.

Comment: One comment suggested modifying the rule to provide that

the filing of a potentially dispositive motion automatically suspends

proceedings. The comment notes that the suggested modification would

save the Board the paperwork involved in issuing a suspension order,

and would avoid uncertainty for the parties as to what they should do

until the suspension order is received.

Response: The suggested provision is not properly a part of this

section, which relates to suspension in view of a civil action or

another Board proceeding. Accordingly, the suggestion is discussed in

connection with the amendments to Sec. 2.127, which concerns motion

practice.

Section 2.119(d) now 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

and authorized under Sec. 2.17(b). The section is amended to correct an

inadvertent error in the rule by deleting the reference to

Sec. 10.14(c). That section refers to nonresidents, who cannot be

domestic representatives.

Section 2.120(a) now provides, in pertinent 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

this section.'' The section is amended to preface this provision with

the words ``Wherever appropriate,'' and to specify that the provisions

of the Federal Rules of Civil Procedure relating to 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, do not apply to Board

proceedings. The amendment clarifies the rule, and codifies current

Board practice, as expressed in a notice published in the Official

Gazette in 1994, namely, ``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).

Comments: Two comments suggested that all reliance on the Federal

Rules of Civil Procedure be severed because, according to the comments,

so few of the Federal Rules are still applicable to Board practice.

Response: The PTO believes that this suggestion goes beyond the

scope of the proposed rulemaking. In addition, the PTO is not inclined

to adopt it because the Board follows a substantial number of the

Federal Rules and is guided by court decisions interpreting these

rules. Examples of the Federal Rules followed by the Board include

those governing pleadings, motions to dismiss, amendments of pleadings,

acceptable discovery, summary judgment, and relief from judgment.

Section 2.120(a) also now provides 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 amended to, inter alia, state that the Board will specify

the opening (as well as the closing) date for the taking of discovery;

and delete the provision that the opening of discovery is governed by

the Federal Rules of Civil Procedure.

Under current Board practice, discovery 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, 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

have been unpopular with practitioners. The specified amendments to the

section will simplify the opening of discovery.

Comments: One organization suggested a provision allowing discovery

requests to be served after the filing of a proceeding, with responses

to be due 40 days after the mailing by the Board of the notice of

institution. One attorney disagreed with the proposal that the Board

set the date for the opening of discovery. This attorney asserted that

discovery might be necessary to prepare an answer, and that the later

opening of the discovery period would inhibit parties who wanted to be

diligent in initiating discovery. Another organization agreed with the

proposal that the Board set the opening date for discovery, but

suggested that the trial order be issued with the notice of institution

because discovery might be necessary to properly prepare an answer. One

attorney suggested including a provision in the rules to make it clear,

in those cases where a proceeding was initiated prior to the effective

date of this final rule and was suspended, that the former rules apply

unless the parties to the proceeding are expressly notified otherwise.

Response: The suggestion for a provision allowing discovery

requests to be served after the filing of a proceeding, with responses

to be due 40 days after the mailing of the notice of institution, has

not been adopted. If the suggested provision were adopted, a defendant

could be served with discovery requests before it had even been

notified of the filing of the proceeding, with the result that the

defendant would be surprised and confused. Further, because early

served requests might not bear a proceeding number, they would create

an administrative burden for the Board, which would have to respond to

inquiries regarding the existence, number, and status of the

proceeding.

The suggestion that the trial order, which would set the opening of

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discovery, be sent with the notice of institution of the proceeding has

been adopted. It is believed that a defendant will not be prejudiced if

it does not have the plaintiff's discovery responses prior to the time

it must file its answer, because a defendant may move to amend its

answer based upon information obtained through discovery. With respect

to the suggestion for including in the rules a specific provision

concerning applicability of the amended rules in cases initiated prior

to the final rule and then suspended, it is believed that the

information concerning the effective date of the rule amendments, as

set forth at the beginning of this notice, is sufficient.

Section 2.120(a) is further amended to provide that the discovery

period will be set for a period of 180 days, and that the parties may

stipulate to a shortening of that period.

Comments: Two comments believed that the 180-day discovery period

would unduly lengthen proceedings. Another comment said that the

proposal would shorten the current discovery period and suggested that

the discovery period be 270 days. One comment suggested providing that

the period could be shortened on a showing of good cause, for example,

if the applicant had not yet used its mark, while the parties would

have to justify any enlargement, even one that was stipulated, of the

discovery period. That comment also suggested a provision that

extensions of the discovery period would be denied if a non-party files

a notice that the proceeding is delaying its application.

Response: As indicated above, the PTO has adopted a suggestion that

the trial order setting the opening and closing dates for the discovery

period be mailed with the notice of institution of the proceeding. With

the adoption of this suggestion, the proposed 180-day discovery period

will result in a discovery period that is generally the same as that

under present practice. Under current practice, discovery in essence

opens for the defendant upon the commencement of the proceeding and

opens for the plaintiff upon the Board's service of the complaint and

the notice of institution. Often, the defendant does not know that a

complaint has been filed until it receives this mailing from the Board.

The discovery period currently closes 90 days after the mailing of the

trial order, which is not done until the defendant's answer has been

filed and processed by the Board. The amount of time that currently

elapses between the mailing by the Board of the notice of institution

(with a copy of the complaint for the defendant) and the issuance of a

trial order averages approximately 90 days, with the discovery period

set to close 90 days after the issuance of the trial order. Thus,

setting the discovery period for 180 days in a trial order which forms

part of the institution letter will not, in general, either lengthen or

shorten the current discovery period. The suggestion that the discovery

period be enlarged to 270 days has not been adopted because all other

comments received indicated that a 180-day discovery period was either

acceptable or too long.

The suggestion that the section be amended to provide that one

party may move to shorten the discovery period has not been adopted.

With respect to the example given in the comment, although an opposer

may not need substantial discovery from an applicant who has not yet

made use of its mark, that applicant may need discovery with respect to

the opposer's use. The suggestions for provisions that the parties

would have to justify any extension of the discovery period, and that

an extension of the discovery period would be denied if a non-party

files a notice that the proceeding is delaying his application, are not

adopted. The PTO received numerous comments to the effect that

extensions of the discovery period were useful in facilitating

settlement, and it is the Board's experience that the vast majority of

proceedings are settled prior to trial. Although the Board retains its

inherent right to deny motions for extensions of time, even if the

parties stipulate to the extension, it is believed that it would cause

an undue burden on the parties to require them to justify each

consented extension of time. The suggestion that a non-party have the

right to prevent an extension of the discovery period is beyond the

scope of the proposed rules and cannot be considered.

Section 2.120(a) was proposed to be further amended to 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.

Comments: Five comments disagreed with this proposal. There was

concern that the proposed amendment would increase expenses early in

the proceedings and by so doing have a negative effect on settlement.

It was also suggested that discovery would become more dependent on

depositions, again increasing expenses for the parties. In addition,

there was concern that the proposed amendment would create difficulties

with respect to follow-up discovery, particularly in connection with

requests for admission, which are most useful late in the discovery

process. One organization also said that the proposal might create an

incentive for a mischievous party to wait until the last 30 days of the

discovery period to offer up its most damaging documents so that there

would be no opportunity for follow-up discovery.

One attorney suggested a modification regarding the service of

discovery requests so that, when discovery requests are served by

overnight courier, five additional days would not be added to the time

for responding to such discovery requests, which is the case under

present Sec. 2.119(c). Another attorney suggested that Sec. 2.120(a) be

amended to specify that documents to be served by the parties may be

served by fax, and that facsimile signatures are acceptable for all

purposes.

Response: The proposal to require that interrogatories, requests

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

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

close of the discovery period is withdrawn. The section is instead

amended to specify that ``discovery depositions must be taken, and

interrogatories, requests for production of documents and things, and

requests for admission must be served, on or before the closing date of

the discovery period as originally set or as reset.'' The amendment

codifies current practice.

The suggestion to amend Sec. 2.119(c) to eliminate the five

additional days to respond to discovery requests when service of the

requests is made by overnight courier goes beyond the scope of the

proposed rules, and therefore cannot be considered. But see the final

rule notice entitled ``Amendment of Trademark Rules Governing Inter

Partes Proceedings, and Miscellaneous Amendments of Other Trademark

Rules,'' published in the Federal Register on August 22, 1989, at 54 FR

34886, 34891-34892, and in the Official Gazette on September 12, 1989,

at 1106 TMOG 26, 31 (rejecting a suggestion to amend Sec. 2.119(c) to

provide for the addition of only one day, rather than five, to the

prescribed time for taking action when service is made by ``Express

Mail'' or overnight courier). The suggestion to allow service of

documents by facsimile is also beyond the scope of the proposed rules.

Section 2.120(a) was proposed to be amended to specify that

extensions of the discovery period will be granted

[[Page 48086]]

only upon stipulation of the parties approved by the Board.

Comments: Thirteen comments, including those of each of the

organizations, disagreed with the proposed amendment. Some of the

comments pointed out that there may be genuine business reasons, such

as holidays in foreign countries, change of management, and the time

required to translate materials and locate documents which may have

been archived decades ago, as to why discovery cannot be completed

within the time set. Several comments said the proposal would lend

itself to abuse, for example, if one side can complete taking discovery

in 180 days but the other cannot; it was also suggested that the

proposed amendment would promote the practice of ambushing opponents

through dilatory conduct and obstreperous tactics. It was also felt

that the elimination of extensions of the discovery period absent

consent would eliminate flexibility, which was considered a principal

advantage of Board proceedings. Most of the comments suggested that the

standard for granting an extension remain good cause. Some of those

commenting were willing to accept a modification of the current good

cause basis for an extension, as long as the basis for extensions was

not limited only to stipulation. For example, two comments suggested

that extensions be allowed upon a showing of extraordinary

circumstances; one attorney suggested that extensions of up to two

months be granted for good cause; and an organization suggested keeping

the good cause standard but specifying that both parties' discovery

obligations would continue while the motion is pending, and that

sanctions would be levied against a party abusing the extension

process.

One attorney also commented that the Board should specify in the

rules, rather than merely indicating in the preamble to the notice of

proposed rulemaking, that the Board may reset the discovery period if

necessary. Another attorney suggested that provision be made for a

party to move for sanctions without first filing a motion to compel to

avoid a situation where a party is deprived of follow-up discovery

because its adversary is recalcitrant. The example given involved a

party which serves discovery promptly, the adversary responds on the

last day permitted with evasive answers and objections, weeks of

correspondence to resolve the issues ensue, followed by a motion to

compel. The attorney suggested that even though the motion to compel is

granted, the moving party would be deprived of an opportunity to take

follow-up discovery.

Response: It is clear that most of those commenting want the

standard for obtaining extensions to remain good cause and that most of

those who suggested a more restricted standard than good cause did so

as an alternative to limiting extensions only to situations involving

consent. In view of the comments, the proposal to amend the section to

provide that extensions of the discovery period will be granted only on

stipulation of the parties is withdrawn. The section is instead amended

to provide that the discovery period may be extended upon stipulation

of the parties approved by the Board, or upon motion granted by the

Board, or by order of the Board.

The amended rule codifies the current practice of allowing

extensions of the discovery period upon motion showing good cause.

However, the Board is mindful of the comments that abuses of the

extension process must be curbed. Therefore, the Board will scrutinize

carefully any such motions and will consider, in determining whether

good cause has been shown, the diligence of the moving party during the

discovery period.

Moreover, the rule is amended to specifically state that, if a

motion for an extension is denied, the discovery period may remain as

set or reset. While the Board has always had the discretion to do this,

the explicit statement of this fact in the rules will alert parties to

the potential consequences if a motion to extend does not show good

cause, and will put them on notice that the Board will not tolerate

abuses of the rules. It is hoped that this will avoid some of the

games-playing mentioned in the comments, in which a party files a

motion for an extension as a strategic move to obtain a delay until the

Board decides the motion, even if the requested extension is denied.

With respect to the suggestion that the rule be amended to

explicitly state that the Board may reset the discovery period if

necessary, it is believed that this is unnecessary, and would, because

such a provision is not present in the other rules regarding the

setting of time periods, lead to confusion. For example, there is no

specific provision that, if a motion to dismiss is filed and the motion

is subsequently denied, the Board will reset the time for the defendant

to file an answer, although it is Board practice to do so.

The suggestion that a party be permitted to move for sanctions

without first filing a motion to compel has not been adopted. The

reason cited as the basis for the suggestion is the need to avoid a

situation where a party is deprived of follow-up discovery because its

adversary is recalcitrant. However, it is the practice of the Board,

when granting a motion to compel in such situations, to reset the

discovery period, at the request of the moving party, so as to restore

(at least for that party) that amount of time which would have remained

in the discovery period had the discovery responses been made in a

timely and proper fashion. See Trademark Trial and Appeal Board Manual

of Procedure ( 403.04 (``TBMP''). Thus, there is no need for the

suggested amendment.

Section 2.120(a) was proposed to be amended to 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, and to specify that the

time to respond may be extended only upon stipulation of the parties or

upon motion showing extraordinary circumstances approved by the Board.

Comments: Two organizations and one attorney believed that 30 days

was a sufficient time to respond to discovery requests, and both the

attorney and one of the organizations thought that the Board's practice

should follow the 30-day time period provided by the Federal Rules of

Civil Procedure. One organization expressed the concern that this

proposal, combined with the proposal to eliminate extensions of the

discovery period absent stipulation of the parties, would put too much

pressure on the parties to serve discovery requests early in the

discovery period, which could have an adverse effect on settlement.

Nine comments disagreed with the proposal to amend the section to

provide that the time to provide responses 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. Several comments expressed the view that

this proposal would eliminate flexibility, which was felt to be a

principal advantage of Board proceedings. There were concerns that the

proposal would favor ITU applicants or those who are discovery-proof;

prejudice the party relying on an old, widely used and promoted mark;

and encourage harassing discovery. The comments also pointed out that

there could be legitimate, but ordinary, business reasons why

extensions might be necessary, such as situations where requests have

to be translated for foreign entities, businesses which close for

[[Page 48087]]

vacation, and small businesses which do not have the resources to

compile answers within 40 days. There was also concern that the

proposal would result in parties giving incomplete responses to meet

the deadline.

Response: The proposal to amend the section to specify that 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 is withdrawn. The section is instead amended to specify

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

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

In view thereof, there is no longer a need to enlarge the period for

providing responses to these requests. Accordingly, the proposal to

enlarge the time to serve responses to 40 days from the date of service

of the discovery requests is also withdrawn, and the section is amended

to specify that discovery responses must be served within 30 days from

the date of service of the discovery requests. The period for

responding will thus remain consistent with that provided under the

Federal Rules of Civil Procedure.

Section 2.120(a) was proposed to be further amended to include

provisions currently found in Sec. 2.121(a)(1), in somewhat different

form. Specifically, the section was proposed to be amended to 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; that the discovery period will

be rescheduled only upon stipulation of the parties approved by the

Board; and that 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 latter

parts of this proposed amendment are withdrawn, for the reasons

discussed above in connection with the withdrawal of the proposal to

allow extensions of the discovery period only upon stipulation of the

parties, and below in connection with the withdrawal of the proposal to

amend Secs. 2.121(a)(1) and 2.121(c) to allow the rescheduling or

extension of testimony periods only upon stipulation of the parties or

a showing of extraordinary circumstances. Only the first portion of the

proposed amendment is included in the amended section.

Thus, the section is amended to specify 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. The new provisions are

the same as those currently found at the end of Sec. 2.121(a)(1). 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 these provisions.

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 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. The

section was 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.

Comments: Twenty comments asserted that limiting the number of

interrogatories that could be served upon a party to 25, counting

subparts, was too restrictive, while thirteen comments stated that

parties should be permitted to file a motion for leave to serve

additional interrogatories. Those commenting believed that 25

interrogatories was not a sufficient amount to obtain necessary

discovery. As a result, it was feared that parties would serve overly

broad interrogatories, which would lead to more motions to compel. The

comments also asserted that the proposed limit would force parties into

taking more depositions, and thus increase the cost of litigating an

inter partes proceeding before the Board. Further, the comments noted

that depositions are generally not a viable alternative when the

adversary is a foreign entity.

Response: The proposed amendments to lower the number of

interrogatories which a party may serve upon another party and to

eliminate the provision for a motion for leave to serve additional

interrogatories are withdrawn.

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

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

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

things which a party may serve upon another party to 15, counting

subparts, except upon stipulation of the parties.

Comments: For reasons similar to those given in connection with the

objections to lowering the number of interrogatories a party could

serve upon another party in a proceeding, twenty-three comments

disagreed with the proposal to limit to 15 the number of document

production requests that a party could serve.

Response: The proposed amendment has been withdrawn, as set forth

in the notice of hearing and reopening of comment period on the

proposed rules, namely, ``Miscellaneous Changes to Trademark Trial and

Appeal Board Rules,'' 62 FR 59640 (Nov. 4, 1997), 1204 TMOG 88 (Nov.

25, 1997).

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

proposed to be amended to, inter alia, redesignate the present

paragraph as (1), and to amend 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.

Comments: Two comments expressed the concern that under the wording

of the proposed amendment, motions to compel could not be filed until

after the close of the discovery period. It was suggested that instead

of stating that the motion must be filed ``within'' 30 days after the

close of the discovery period, the language be changed to ``no later

than'' 30 days after the close of the discovery period. Another

comment, while agreeing that it is appropriate to require that motions

be filed within a specified time, suggested that there should be

flexibility to extend this date.

Response: The PTO agrees that parties should be allowed to file

motions to compel during the discovery period. However, the suggested

language has not been adopted because of changes made to proposed

Sec. 2.120(a). Specifically, Sec. 2.120(a) was proposed to be amended

to require, inter alia, that interrogatories, requests for production

of documents and things, and requests for admission be served in

sufficient time for answers to fall due prior to the close of

discovery. However, as a result of comments received on the proposed

amendment, it has been withdrawn, and Sec. 2.120(a) instead has been

amended to codify the Board's current practice that discovery

depositions must be taken, and interrogatories, requests for production

of documents and things, and requests for admissions must be served, on

or before the closing date of the discovery period. In the case of

written discovery requests served on the last day of the discovery

period, responses would not fall due until 30 days after the close of

the discovery

[[Page 48088]]

period (or 35 days if service of the requests was made by mail--See

Sec. 2.119(c)). In view thereof, a requirement that motions to compel

be filed no later than 30 days after the close of discovery is no

longer appropriate.

Nevertheless, the PTO still believes that a motion to compel (as

well as a motion to test the sufficiency of an answer or objection to a

request for admission) deals with pre-trial matters and should be filed

and determined prior to trial. Therefore, Sec. 2.120(e) is amended to

state, in relevant part of redesignated paragraph (e)(1), ``The motion

must be filed prior to the commencement of the first testimony period

as originally set or as reset.'' Under the amended rule, motions to

compel can be filed at any time during the discovery period, and up to

the commencement of the first testimony period, as originally set or as

reset. The Board, when setting trial dates in cases arising under these

rules as amended, intends to schedule an interval of 60 days between

the closing date of the discovery period and the opening date of the

first testimony period. Accordingly, there will be adequate time to

file a motion to compel prior to the opening of the first testimony

period even with respect to those discovery requests served on the last

day of the discovery period.

Section 2.120(e) is also amended to add a new paragraph, designated

(e)(2), specifying, inter alia, 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.

Comments: One organization suggested that the filing of a motion to

compel (or a motion to test the sufficiency of an answer or an

objection to a request for admission) should automatically suspend

proceedings, so that the parties would not have to wait to receive the

Board's suspension order. Two comments suggested that the rule should

be more specific as to the manner of suspension, and explicitly state

that, when the motion is resolved, discovery will be resumed and the

moving party will be given more time for discovery if the motion is

granted. A law firm commented that the proposed change ``would be

unnecessary if we keep the discovery at 270 days'' and suggested that

suspension should occur only if the motion is not decided within 45

days of filing the motion so that there would be pressure on the Board

to decide discovery matters promptly.

Response: The suggestion that the rule should be modified to

provide that the filing of a motion to compel will automatically

suspend proceedings has not been adopted. The Board must review the

motion to ascertain, for example, whether it is timely and meets the

minimal requirements for a motion to compel. Proceedings should not be

suspended when a motion to compel is not timely or does not meet the

minimal requirements for such a motion. Further, if the mere filing of

a motion to compel resulted in an automatic suspension of proceedings,

parties might be encouraged thereby to file such a motion merely as a

strategic move to gain time and/or delay proceedings. The PTO believes

that the better practice is for the Board to retain control over the

running of the suspension period.

As for the suggestion that the rule specify that the Board will

provide additional time for discovery if a motion to compel is granted,

the determination of whether discovery dates will be reset varies from

situation to situation. For example, if the moving party serves its

discovery requests so late in the discovery period that responses will

not be due until after the close of the discovery period, that party

will not be entitled to time for serving additional discovery requests

even if its motion to compel is granted. On the other hand, the moving

party may serve its discovery requests early enough in the discovery

period that there will be time for follow-up discovery if the adverse

party serves timely responses, but the adverse party may not respond,

or may serve responses which are insufficient, and the propounding

party may be forced to file a motion to compel. In this situation, the

Board, at the request of the propounding party, will reset the

discovery period to put that party back in the position it would have

been in if it had received timely and proper responses. See TBMP

Sec. 403.04. Because the relief to be granted in connection with a

motion to compel (or a motion to test the sufficiency of an answer or

an objection to a request for admission) in any given case is highly

dependent on the particular facts of that case, the Board must have

discretion to determine what relief is appropriate.

The comment that the proposed change ``would be unnecessary if we

keep the discovery at 270 days'' is not understood, because under

present practice the discovery period, absent extensions, would rarely

amount to 270 days. As for the suggestion that suspension should occur

only if a motion to compel is not decided by the Board within 45 days

of its filing, thus keeping pressure on the Board, this suggested

modification would seem to work a hardship not on the Board, but on the

parties. In view of the time allowed under the applicable rules for

filing a brief in opposition to a motion, as well as the time involved

in the processing of mail within the PTO, a motion to compel is not

likely to be determined within 45 days of filing. If a motion to compel

is filed shortly before the commencement of the plaintiff's testimony

period, and the case is not suspended until 45 days or more after the

filing of the motion to compel, the testimony periods would go forward,

and the parties would be left in a state of uncertainty as to what

action, if any, should be taken. A motion to compel (like a motion to

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

admission) deals with pre-trial matters and should, therefore, be filed

and determined prior to trial. The new provisions governing the time

for filing a motion to compel and the Board's suspension of proceedings

pending the determination of the motion, 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 testimony period, will

provide for a more orderly administration of the proceeding and allow

parties more certainty in scheduling testimony. Accordingly, the

suggested modification has not been adopted.

Section 2.120(e) is further amended to provide, in the new

paragraph (e)(2), 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.

Comments: One attorney suggested that the entire proceeding

(including the time for responding to outstanding discovery requests or

for appearing at noticed discovery depositions) should be suspended, or

it might create an unfair advantage for the non-moving party. That

person was concerned that the non-moving party could serve the same

discovery requests as the moving party, and that, even if the Board

denied the motion to compel or placed limitations on the required

responses, the moving party would have had to respond fully while the

non-moving party would not. Another commented that with this amendment

a prompt decision on the motion to compel is critical, and suggested

telephone conferences to decide the motion.

Response: The suggested modification has not been adopted. The

Board does not believe that the amended rule prejudices the party

filing a motion to compel. Because the signature of a party

[[Page 48089]]

or its attorney to a request for discovery constitutes a certification

by the party or its attorney that the request is warranted, consistent

with the Federal Rules of Civil Procedure, and not unreasonable or

unduly burdensome, a party ordinarily will not be heard to contend that

a request for discovery is proper when propounded by the party itself

but improper when propounded by its adversary. See TBMP Sec. 402.02 and

cases cited therein. Thus, if the non-moving party serves the same

discovery requests as the moving party, the non-moving party will

ordinarily be required to respond to the requests. Moreover, to the

extent that the moving party believes that any of the discovery

requests served on it are inappropriate, it may object to those

requests when it serves its responses. As for the suggestion that

telephone conferences be used to decide motions to compel, as indicated

previously, the Board is undertaking a pilot program to make greater

use of telephone conferences in determining pending interlocutory

matters and motions.

Section 2.120(g)(1) now provides, in pertinent part, that ``the

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

award any expenses to any party.'' The section is amended to state that

``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 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 final rule 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. For this

reason, and in order to harmonize Sec. 2.120(g)(1) with Sec. 1.616,

Sec. 2.120(g)(1) is 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 persons in contempt, or to award attorneys'

fees or other expenses to any party,'' is amended in the same manner.

Comments: Five comments suggested that the rule be amended not only

to indicate that the Board has authority to award expenses as a

sanction, but also to provide that the Board will exercise this

sanctioning power. They stated that awarding expenses would be an

effective tool for combating improper motions and other abuses by

parties and their attorneys. One organization, while approving of the

proposed amendment not to award monetary sanctions, urged the Board to

make more effective use of the sanctioning powers it will exercise by

using its power more often and publishing decisions in which sanctions

are imposed.

Response: As indicated above, 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

the filing of many motions for such sanctions (as well as a large

number of associated papers concerning the appropriate amount for such

expenses and/or fees), thus increasing the workload of the Board.

Accordingly, this suggestion has not been adopted. However, the Board

plans to follow the suggestion that it use its other sanctioning powers

more often, and that it publish more decisions in which it enters

sanctions. It is hoped that these steps will make practitioners aware

of the Board's lack of tolerance for abuses and lead to a curtailment

of abuses.

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

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 by that

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

.''

The section was 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

provided 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 paralleled 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) was proposed to be amended to add another

new paragraph, designated (h)(3), which provided for the suspension of

proceedings when a motion to determine the sufficiency of an answer or

objection to a request for

[[Page 48090]]

admission is filed. Specifically, the proposed new paragraph provided

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 provided 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) paralleled the provisions of proposed new

Sec. 2.120(e) and Sec. 2.127(d).

Comments: Nineteen comments were received which objected to the

proposed limit on requests for admission. The comments noted that

requests for admission are useful in limiting issues for trial and for

streamlining the introduction of documentary evidence. In addition, the

comments raised objections similar to those made in response to the

proposal to amend Sec. 2.120(d)(1) to lower the number of

interrogatories which one party may serve upon another in a proceeding.

Response: As a result of the comments received, the proposed

amendment to limit requests for admission has been withdrawn. See the

notice of hearing and reopening of comment period on the proposed

rules, namely, ``Miscellaneous Changes to Trademark Trial and Appeal

Board Rules,'' 62 FR 59640 (Nov. 4, 1997), 1204 TMOG 88 (Nov. 25, 1997)

(stating the PTO's intention to withdraw this proposal). Accordingly,

the rule is not being amended to include the proposed new first

paragraph; the present paragraph will remain but is redesignated

(h)(1), and the proposed paragraph (h)(3) is added but redesignated

(h)(2). These amendments are described in more detail below.

Section 2.120(h), redesignated as (h)(1), is amended to 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.'' 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.

Moreover, Sec. 2.120(a), as amended herein, specifies that whenever

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, Sec. Sec. 2.120(g)(1) and

2.127(f), as amended herein, provide that the Board will not hold any

person in contempt or award expenses to any party. Accordingly, the

first sentence of Sec. 2.120(h), redesignated herein as (h)(1), is

being deleted because it is confusing and redundant.

It was proposed to amend the second sentence of the present

paragraph (now redesignated as Sec. 2.120(h)(1)) to add to the

beginning of the paragraph 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.'' For the reasons stated above in connection with

Sec. 2.120(e)(1), governing motions to compel, the paragraph is instead

amended to include a new first 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 prior to the

commencement of the first testimony period, as originally set or as

reset.'' The amendment parallels a similar amendment to Sec. 2.120(e).

Present Sec. 2.120(h), redesignated as Sec. 2.120(h)(1), is further

amended to 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 by that party for an admission shall * *

*,'' to read ``The motion shall * * *.''

Section 2.120(h) is amended to add a new paragraph, proposed to be

designated as (h)(3) but, with the withdrawal of the proposal to limit

requests for admission, now designated (h)(2). This new paragraph

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 paragraph provides that when a party files a

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

request 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 paragraph further

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 amendment parallels a

similar amendment to Sec. 2.120(e). The comments submitted (and

discussed above) in connection with the amendment to Sec. 2.120(e) were

considered also in connection with this amendment, with the same

outcome.

Section 2.121(a)(1) now provides, inter alia, 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.'' The sentence was proposed to be amended 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.'' Similarly, Sec. 2.121(c) now

provides, inter alia, that testimony 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.''

The sentence was proposed to be amended to provide that testimony

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 proposed amendments would

have eliminated extensions or rescheduling upon motion showing good

cause.

Comments: Thirteen comments, including those from four

organizations, disagreed with the proposal to eliminate the good cause

standard for extending or rescheduling the testimony periods. The

reasons given included that there could be many genuine business

reasons, or unforeseen developments, why extensions would be necessary,

but which would not rise to the level of extraordinary circumstances.

Some of the comments suggested allowing one 30-day extension for good

cause, or extensions for up to 2 months on a showing of good cause, or

extensions on good cause with sanctions for abuse. Three attorneys from

the same law firm suggested that the rule should provide for the grant

of one extension as of right, and further extensions on a showing of

good cause. One attorney suggested changing the pertinent sentence in

Sec. 2.121(a)(1) to read ``Testimony periods may be rescheduled or

extended as provided for in 37 CFR 2.121(c)'' to avoid duplication.

That same attorney also suggested providing for a non-party to object

to a stipulated rescheduling or enlargement of testimony when the

[[Page 48091]]

proceeding is delaying an application by a non-party or delaying

another proceeding in which the non-party has an interest.

Response: The proposal to amend Secs. 2.121(a)(1) and 2.121(c) to

eliminate the good cause standard for motions to reschedule or extend

the testimony periods is withdrawn. As for the suggestion that one

rescheduling or extension of the testimony periods be granted without

any showing of cause, the Board does not believe this is warranted

since the proposed amendments have been withdrawn. Moreover, once an

inter partes proceeding commences, no other extensions of time are

granted as of right. With respect to the suggestion to reword the

pertinent sentence in Sec. 2.121(a)(1) to refer to Sec. 2.121(c), it is

believed that the clarity offered in setting forth the bases for the

rescheduling of testimony periods in Sec. 2.121(a)(1) is helpful to the

parties. The suggestion that a non-party be permitted to object to a

rescheduling of the testimony periods is beyond the scope of the

proposed rule amendment, and therefore cannot be considered at this

time.

Section 2.121(a)(1) is amended to add a new sentence specifying

that if a motion to reschedule testimony periods is denied, ``the

testimony periods may remain as set.'' The Board has always had the

discretion to leave the testimony periods as set when a motion to

reschedule is denied. However, it is hoped that explicit statement of

this fact in the rules will alert parties to the potential consequences

if a motion to reschedule does not show good cause, and will put them

on notice that the Board will not tolerate abuses of the rules.

Section 2.121(a)(1) now includes a last sentence reading, ``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.'' The section is

amended by deleting this sentence, which has been added to

Sec. 2.120(a). It is believed that Sec. 2.120(a), which governs, inter

alia, extensions of time to respond to discovery requests, is the most

logical place for the sentence.

Comment: One attorney suggested that the rule provide that if the

discovery period is rescheduled, the start of the testimony period

should be automatically reset without a party having to make a request

or motion.

Response: Such a provision appears as the fourth sentence of

present Sec. 2.121(a)(1), and will remain in the amended rule as the

last sentence of the paragraph.

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

periods, was 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.

Comments: Four comments disagreed with this proposal, stating that

the existing trial periods are adequate, that 60 days is rarely needed

to complete testimony, and that most trials in trademark litigation are

conducted in one to two weeks or less. It was also felt that enlarging

the testimony periods would unduly lengthen inter partes proceedings.

Response: The proposal to lengthen the testimony periods was tied

to the proposal to eliminate good cause extensions of these periods.

Because the proposal to eliminate good cause extensions is withdrawn,

the proposal to lengthen the testimony periods is also withdrawn.

Section 2.121(c), which now provides, inter alia, that the

testimony 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,'' was also 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 proposed amendment paralleled a similar proposed amendment to

Sec. 2.121(a)(1), which governs, inter alia, the rescheduling of

testimony periods. For the reasons stated in connection with the

proposed parallel amendment to Sec. 2.121(a)(1), the proposal is

withdrawn.

Section 2.121(c) is amended to specify that if a motion to extend

the testimony period is denied, ``the testimony periods may remain as

set.''

Comments: One organization suggested that if the motion were

denied, the testimony period should be reset to allow the amount of

time which remained when the motion to extend was filed. Three

attorneys, all from the same law firm, commented that if prior

deadlines are to remain in effect when a motion to extend is denied,

the Board needs new procedures to expedite the delivery of motion

papers to the Board, and for deciding the motion.

Response: With respect to the first comment, the PTO believes it is

important for the Board to retain discretion as to the rescheduling of

testimony periods. There is a concern that, if testimony periods had to

be reset to provide the amount of time which was remaining at the time

a motion to extend was filed, a party might file a motion for extension

as a strategic measure to obtain a delay until the Board decides the

motion, even if the motion is ultimately denied. The Board has always

had the discretion, if it denied a motion for an extension, to leave

the testimony periods as set. It is hoped that specifically stating

this fact in this section, as well as in Sec. 2.121(a)(1), will alert

parties to the potential consequences if a motion to extend does not

show good cause, and will put them on notice that the Board will not

tolerate abuses of the rules.

As for the need for new procedures to expedite the processing and

determination of motions to extend, the telephone pilot program,

discussed above, should prove helpful in expediting the rendering of

such decisions.

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 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.'' The Board does not

need the original copy.

Section 2.122(b)(1) 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. The section is 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

[[Page 48092]]

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 2.122(d)(1) provides that a registration of the opposer or

petitioner pleaded in an opposition or petition to cancel will be made

part of the record if the opposition or petition is accompanied ``by

two copies of the registration prepared and issued by the Patent and

Trademark Office showing both the current status of and current title

to the registration.'' The section, which now includes a cross-

reference to ``Sec. 2.6(n),'' is amended to correct the cross-reference

to ``Sec. 2.6(b)(4).''

Comment: A suggestion was made to further amend this section to

require that only one status and title copy of a registration be

submitted with a notice of opposition. It was pointed out that only one

copy of a registration is necessary when it is submitted with a notice

of reliance, and it was believed that requiring that two be submitted

with a notice of opposition was wasteful.

Response: A notice of opposition or petition to cancel, together

with any exhibits thereto, must be submitted in duplicate. See

Secs. 2.104(a) and 2.112(a). This is because the Board places one of

the copies in the Board's file of the proceeding, and the other copy is

sent to the applicant or registrant with the notification of the

institution of the proceeding. Thus, when a plaintiff wishes to make a

pleaded registration of record by submitting a status and title copy of

the registration with its complaint pursuant to Sec. 2.122(d)(1), one

copy of the registration must be submitted with each copy of the

complaint. That is, both the complaint, and the status and title copy

of the registration, must be submitted in duplicate. A party need only

file one copy of a registration with a notice of reliance, on the other

hand, because the party itself must separately serve a copy of the

notice of reliance and the registration on each adverse party. It may

be that the comment was occasioned by a belief that two copies of a

pleaded registration must be submitted with each copy of the complaint,

for a total of four copies of the registration. That is not the case.

To the extent the comment is concerned about the expense of obtaining

two status and title copies of a registration from the PTO, the Board

does not require that two ``originals'' be submitted. The section is

amended to make this clear by adding as a parenthetical the words

``originals or photocopies'' after the word ``copies'', so that the

sentence will read, in pertinent part, `` * * * if the opposition or

petition is accompanied by two copies (originals or photocopies) of the

registration prepared and issued by the Patent and Trademark Office * *

* ''

Section 2.122(d)(2), provides, inter alia, that a registration

owned by any party to a proceeding may be made of record by filing a

notice of reliance which is accompanied by a copy of the registration

prepared and issued by the Patent and Trademark Office showing the

current status of and current title to the registration. This section

is amended to add, as a parenthetical after the word ``copy,'' the

words ``original or photocopy'', so that the sentence will read, in

pertinent part, `` * * * a notice of reliance, which shall be

accompanied by a copy (original or photocopy) of the registration

prepared and issued by the Patent and Trademark Office * * * '' This

change is consistent with the amendment to Sec. 2.122(d)(1).

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 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 amended by inserting the words

``in writing'' after the word ``stipulate'' and after the word

``stipulated.'' The amendments clarify the rule.

Section 2.123(f) pertains to the certification and filing of a

deposition by the officer before whom the deposition was taken. The

section 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. The section is amended to eliminate the requirement that

this material be forwarded to the Commissioner ``without delay.'' The

section is also 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.

Specifically, 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 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 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 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

amendments to the third and fourth sentences, the title of the section,

which now reads ``Certification and filing by officer,'' is amended to

read ``Certification and filing of deposition.'' To eliminate

undesignated text, paragraph (f) has been redesignated.

The amendment eliminating the present requirement that the material

be forwarded to the Commissioner of Patents and Trademarks ``without

delay,'' 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

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. The amendment concerning who is to file the material

makes it clear that if the officer sends the envelope or package

containing the deposition and

[[Page 48093]]

associated materials 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.

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 amended to delete the word ``promptly.'' The

amendment corresponds to the amendment deleting the words ``without

delay'' from Sec. 2.123(f), and conforms Sec. 2.125(c) to current Board

practice.

Section 2.127(a), which governs the filing of briefs on motions,

was proposed to be amended to enlarge the time for filing a brief in

response to a motion (other than a motion for summary judgment which

was covered separately in proposed Sec. 2.127(e)(1)) from 15 days to 30

days.

Comments: Two comments stated that 30 days was too long a period

and suggested that 15 or 20 days would be sufficient; a third comment,

while not objecting to the enlargement of time, believed that the

current time period was not too short.

Response: The proposal to enlarge the time to respond to a motion

which is not a motion for summary judgment was tied to a proposal to

amend Sec. 2.127(a) to eliminate good cause extensions of this time.

Because the proposal to eliminate good cause extensions is withdrawn,

as indicated immediately hereafter, the proposal to lengthen the time

to respond is also withdrawn.

Section 2.127(a) was proposed to be amended to delete, from the

second sentence, a provision for extension of the time to respond to a

motion 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.''

Comments: Three comments suggested that the good cause standard be

retained, one organization stating that sanctions should be imposed in

cases involving abuse. Three attorneys from the same law firm suggested

that a first extension of time be granted as of right, and that further

extensions be granted upon a showing of good cause.

Response: Just as the proposals to eliminate good cause as a

standard for motions to extend the discovery and discovery response

periods (Sec. 2.120(a)), and motions to reschedule (Sec. 2.121(a)(1))

or extend (Sec. 2.121(c)) testimony periods, are withdrawn herein, so

too the proposal to eliminate good cause as a standard for obtaining

extensions of time to respond to a motion is withdrawn.

Section 2.127(a) is amended to provide that if a motion for an

extension of time to file a brief in response to a motion is denied,

the time for responding to the motion for summary judgment may remain

as specified under this section.

Comment: Three attorneys from the same law firm commented that in

view of this amendment, the Board will need some provision for quick

processing of the motion papers and for expedited decisions.

Response: The telephone pilot program, discussed above, should

prove helpful in expediting decisions on motions for extensions of

time.

Section 2.127(a), which now makes no mention of reply briefs or

further papers in support of or in opposition to motions, was proposed

to be amended to (1) state 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; (2) preface this new provision with the phrase ``Except as

provided in paragraph (e)(1), a'' to make clear that this provision

does not apply to reply briefs in support of summary judgment motions;

and (3) 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.

Comments: One organization disagreed with the proposal to amend the

section to specify that the time to file a reply brief will not be

extended. This organization stated that there was no reason why the

circumstances that necessitate an extension of time to file a brief in

opposition are less likely to be present when filing a reply brief. As

for the prohibition against papers beyond a reply brief, four comments

expressed the concern that the moving party will save new issues for

its reply, and the party opposing a motion will be at a disadvantage

because it will not be able to respond. A suggestion was made to adopt

the rule that the reply be limited to rebuttal of points newly raised

in the answering brief, and that issues not raised in the moving brief

are waived. Another comment suggested that there should either be a

provision in the section that no new issues raised in a reply brief

will be considered, or the Board should allow for a surreply brief

limited to any new issues raised in the reply.

Response: It is believed that extensions of time to file a reply

brief need not be available in the same way that extensions to file a

brief in opposition are available, because the circumstances

surrounding the filing of a reply brief and a brief in opposition are

different. Specifically, while the service of a motion may come as a

surprise to a party, the moving party labors under no such obstacle. It

must also be acknowledged that reply briefs are generally found to have

little persuasive value; often they are a mere reargument of the points

made in the main brief. It is the practice of the Board to consider a

reply brief only when, in the Board's opinion, such a brief is

warranted under the circumstances of a particular case, such as when

the Board finds that a reply brief is necessary to permit the moving

party to respond to new issues raised in the brief in opposition to the

motion, or that the issue to be determined is complex or needs to be

further clarified, or that certain arguments against the motion should

be answered so as to assist the Board in arriving at a just decision on

the motion. See TBMP Sec. 502.03. Accordingly, the section is amended

as proposed. However, to emphasize that the Board does not intend to

encourage the filing of reply briefs, the sentence, ``The Board may, in

its discretion, consider a reply brief,'' has been added to the

section.

With respect to the concern that the moving party may ``save'' new

issues for its reply brief, the Board is able to recognize what is

proper material for a reply brief. However, it is believed that it is

not necessary to include a specific provision that ``no new issues

raised in a reply brief will be considered''; there are no such

specific provisions in Sec. 2.121(b)(1), which involves the rebuttal

testimony period, and Sec. 2.128(a)(1), which concerns a reply brief at

final hearing.

Section 2.127(a) is further amended to (1) 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; (2) 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 (3) 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.

Comments: One organization thought the page limits were too

restrictive, and suggested 35 pages for main briefs and 15 for reply

briefs; three comments suggested higher page limits for potentially

dispositive motions; one attorney recommended 30- and 15-page limits

for summary judgment motions; and an organization suggested a 40-page

[[Page 48094]]

limit for dispositive motions, pointing out that other courts have 45-

and 50-page limits. Two organizations agreed with the proposed page

limit, as long as the Board would grant leave to file longer briefs

with a good cause showing, such as if there were multiple parties,

consolidated proceedings, or multiple marks.

Response: It is believed that 25 and 10 pages are sufficient for

the main brief and reply brief, respectively, of any motion that arises

in a Board inter partes proceeding. Because of the limited nature of

Board proceedings, briefing for motions in such proceedings need not be

as extensive as that in proceedings in court. Although the Board is of

the firm opinion that all issues in a motion can be briefed in 25 pages

for a main brief, and 10 pages for a reply brief, the rule does not

specifically prohibit a motion for leave to file a longer brief upon a

showing of good cause. The Board may include such a prohibition as part

of a future rulemaking if it appears that parties are abusing such

requests.

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 of

the order or decision, is amended to change the specification of the

time period for requesting reconsideration or modification from

``thirty days'' to ``one month.'' The amended rule parallels

Sec. 2.129(c), which governs the time for filing a request for

rehearing or reconsideration or modification of a decision issued after

final hearing.

Section 2.127(d) now 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 amended to add to the end of the

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

suspension order.''

Comment: One organization suggested the section should be amended

to provide that the filing of a potentially dispositive motion

automatically suspends proceedings, without any action by the Board.

Response: The suggested modification has not been adopted. A

variety of motions are potentially dispositive, including a motion for

sanctions in the form of entry of judgment. Because of the number of

situations in which a party may make a potentially dispositive motion,

it is believed better for the Board to determine whether proceedings

should be suspended based on the situation presented by the particular

case.

Section 2.127(d) was also proposed to be amended to add a new

sentence providing 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

it shall toll the time for the nonmoving party to serve such responses

or to appear for such deposition.

Comments: Three comments disagreed with this proposal. They stated

that the moving party should not be forced to spend unnecessary time

and money to provide discovery responses when the proceeding may be

decided on the basis of the pending summary judgment motion. They

believed that any discovery that is essential for the non-moving party

can be obtained through an FRCP 56(f) motion. Another comment suggested

that the non-moving party's obligation to respond to discovery not be

tolled by the filing of a summary judgment motion, in that the moving

party might require discovery if it were moving for partial summary

judgment.

Response: Upon consideration of the comments regarding the tolling

of time for responding to discovery, the proposal to amend

Sec. 2.127(d) to add the sentence, ``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 deposition.'', is withdrawn.

Section 2.127(e)(1) presently provides that a motion for summary

judgment should be filed prior to the commencement of the first

testimony period, as originally set or as reset, and that the Trademark

Trial and Appeal Board, in its discretion, may deny as untimely any

motion filed thereafter. The section is 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. The amendment codifies current Board

practice, as set forth in Nabisco Brands Inc. v. Keebler Co., 28 USPQ2d

1237 (TTAB 1993).

Comments: One comment suggested that parties should be allowed to

file summary judgment motions with the pleadings. Another comment

suggested that parties be permitted to file summary judgment motions up

to the end of a party's testimony period.

Response: The suggestion that parties be allowed to file summary

judgment motions with the pleadings has not been adopted. The Board

considers a motion for summary judgment filed prior to the issuance of

the notice of institution to be premature. Although the proceeding

commences with the filing of the complaint, formal service of the

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

plaintiff. 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 the 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, until it receives from the

Board the notice of institution along with a copy of the complaint.

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.

As for the suggestion that parties be permitted to file summary

judgment motions up to the end of a party's testimony period, this is

beyond the scope of the proposed amendment. Moreover, the suggested

modification would defeat the concept of summary judgment, which is a

procedure to dispose of a case before trial. Once a party's testimony

period has opened, trial has begun. Accordingly, the suggested

modification has not been adopted.

Section 2.127(e)(1) is further amended to add 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, and (2) the time for

[[Page 48095]]

filing a motion under Rule 56(f) will not be extended.

Comments: Three attorneys from one law firm asserted that this

amendment would put extraordinary pressure on counsel, and suggested

that there be a provision for extensions given the dispositive nature

of a summary judgment motion. An organization raised a concern that

when a motion to dismiss which is accompanied by affidavits and

exhibits is treated as a summary judgment motion it would be difficult

for the plaintiff to properly frame a Rule 56(f) motion without having

the defendant's answer, and suggested that in such a case the defendant

should be required to file its answer before the plaintiff must file a

56(f) motion.

Response: The PTO believes that 30 days is an adequate time for a

party to review a summary judgment motion, determine whether it needs

particular discovery in order to respond to the motion, and prepare a

motion for such discovery, supported by an affidavit attesting to the

reasons for the need for the discovery. With respect to the suggestion,

in the motion to dismiss turned motion for summary judgment situation,

that the defendant be required to file its answer before the plaintiff

must file a 56(f) motion, the Board believes that the plaintiff will be

adequately informed of the factual issues regarding the defendant's

position by the summary judgment motion and accompanying materials,

such that the plaintiff can frame a Rule 56(f) motion.

Section 2.127(e)(1) was also proposed to be amended to provide that

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.

Comments: Two comments disagreed with the proposal to enlarge the

period to respond to a summary judgment motion to 60 days, stating that

30 days was adequate. Three comments disagreed with the proposal to

allow extensions of the time to file a brief only on consent or a

showing of extraordinary circumstances: two suggested a good cause

basis, while three comments, by attorneys from the same law firm,

suggested that a first extension be allowed as of right, and additional

extensions upon a showing of good cause.

Response: The proposal to amend this section to allow extensions of

time to file a brief opposing a motion for summary judgment only on

consent or a showing of extraordinary circumstances is withdrawn. The

withdrawal of this proposal is consistent with the withdrawals herein

of proposals to eliminate good cause as a standard for motions to

extend the discovery and discovery response periods (Sec. 2.120(a)),

motions to reschedule (Sec. 2.121(a)(1)) or extend (Sec. 2.121(c))

testimony periods, and motions to extend the time to respond to motions

other than summary judgment motions (Sec. 2.127(a)). The Board practice

of granting extensions based on a showing of good cause will continue,

and the rule has been amended to specifically state that extensions may

be had on this basis. However, the suggestion that a first extension

should be granted as of right is not adopted. Once a proceeding has

commenced there is no other situation where an extension of time may be

obtained without providing any reason whatsoever. It is believed that a

good cause standard will not place an undue burden on the parties. As

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

to a motion for summary judgment, Sec. 2.127(e)(1) is amended to

provide instead that a brief in response to a motion for summary

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

motion. The modification is made because of the decision to allow

extensions upon a showing of good cause, and because of the comments

regarding the time to respond to a summary judgment motion.

Section 2.127(e)(1) is further amended to provide that if a motion

for an extension of time to file a brief in response to a motion for

summary judgment is denied, the time for responding to the motion for

summary judgment may remain as specified under this section.

Comment: Three attorneys, all of whom are from the same law firm,

commented that in view of this amendment, new procedures are needed to

expedite the delivery of the motion papers to the Board and for

deciding the motion.

Response: The telephone pilot program, discussed above, should

prove helpful in expediting decisions on motions for extensions of

time.

Section 2.127(e)(1) now makes no mention of reply briefs or further

papers in support of or in opposition to summary judgment motions. It

was proposed to amend this section to provide that a reply brief, if

filed, shall be filed within 30 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.

Comments: One comment suggested that 15 days was a sufficient time

to file a reply brief. One organization disagreed with the proposed

provision that the time to file a reply brief will not be extended.

This organization stated that there was no reason why the circumstances

that necessitate an extension of time to file a brief in opposition are

less likely to be present when filing a reply brief. With regard to the

prohibition against filing papers beyond a reply brief, one

organization raised the concern that the party opposing a motion will

be at a disadvantage if the moving party saves new issues for its

reply. It suggested that either the rule be amended to provide that new

issues raised in a reply brief will not be considered, or that

provision be made for a surreply brief which is limited to any new

issues raised in the reply.

Response: The suggestion that a reply brief, if filed, should be

filed within 15 days from the date of service of the brief in response

to the motion for summary judgment is adopted. The section is otherwise

amended as proposed. The amended rule parallels that portion of amended

Sec. 2.127(a) which pertains to the time for filing reply briefs to

other types of motions. With respect to the comment that extensions of

time to file a reply brief should be available in the same way that

extensions to file a brief in opposition are available, it is believed

that the circumstances surrounding the filing of a reply brief and a

brief in opposition to a summary judgment motion are different, such

that extensions should be permitted in the latter situation and not in

the former. Specifically, the service of a motion for summary judgment

may come as a surprise to a party, and it may take some time to obtain

documents and affidavits in order to show that genuine issues of

material fact exist; on the other hand, the party who has moved for

summary judgment would have gathered the necessary evidence, and have

researched the law prior to filing its motion. It must also be

acknowledged that reply briefs are generally found to have little

persuasive value; often they are a mere reargument of the points made

in the main brief, and as such serve no useful purpose. It is not the

practice of the Board to consider a reply brief of that nature. Rather,

the Board considers a reply brief only when, in the Board's opinion,

such a brief is warranted under the circumstances of a

[[Page 48096]]

particular case. See, in this regard, the discussion herein of the

amendment of Sec. 2.127(a) to add matter relating to reply briefs for

motions other than summary judgment motions. However, to emphasize that

the Board does not intend to encourage the filing of reply briefs, the

sentence, ``The Board may, in its discretion, consider a reply brief,''

has been added to the section.

With respect to the concern that the moving party may ``save'' new

issues for its reply brief, the Board is able to recognize what is

proper material for a reply brief. However, it is believed that it is

not necessary to include a specific provision that ``no new issues

raised in a reply brief will be considered''; there are no such

specific provisions in Sec. 2.121(b)(1), which involves the rebuttal

testimony period, and Sec. 2.128(a)(1), which concerns a reply brief at

final hearing.

Section 2.127(f) now provides that ``the Board does not have

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

or other expenses to any party.'' This section is amended, in

conformity with amended Sec. 2.120(g)(1), and for the reasons indicated

in connection therewith, to state that ``the Board will not hold any

person in contempt, or award attorneys' fees or other expenses to any

party.''

Comments: The comments made with respect to the amendment to

Sec. 2.120(g)(1) are applicable to this amendment. Five comments

concerning Sec. 2.120(g)(1) suggested that the rule not only be amended

to indicate that the Board has authority to award expenses as a

sanction, but also that the rule be amended to provide that the Board

will exercise this sanctioning power. They stated that awarding

expenses would be an effective tool in combating improper motions and

other abuses by parties and their attorneys.

Response: As indicated in the response to the comments regarding

the amendment to Sec. 2.120(g)(1), 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

the filing of many motions for such sanctions (as well as a large

number of associated papers concerning the appropriate amount

therefor), thus increasing the workload of the Board. Accordingly, this

suggestion has not been adopted. However, the Board is adopting the

suggestion that it use its other sanctioning powers more often, and

that it publish more decisions in which it enters sanctions. It is

hoped that these steps will make practitioners aware of the Board's

lack of tolerance for abuses and lead to a curtailment of abuses.

Section 2.134(a), which now includes a cross-reference to ``section

7(d)'' of the Act of 1946, is 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 amended to provide also for filing a

petition from the grant of such a request. Specifically, the first

sentence of the section is 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 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 * * *.'' The amendments to Sec. 2.126(e)(1) codify current

practice and clarify the rule.

Section 3.41, which now includes a cross-reference to

Sec. 2.6(q),'' is amended to correct the cross-reference to

``Sec. 2.6(b)(6).''

Environmental, Energy, and Other Considerations

The 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 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 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 rule changes have no Federalism

implications affecting the relationship between the National Government

and the States as outlined in Executive Order 12612.

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 OMB Control Number.

This rule involves collections of information subject to the

requirements of the PRA. The rule involves the Petition to Cancel

requirement. This requirement has been approved by the Office of

Management and Budget (OMB) under OMB control number 0651-0040. The

public reporting burden for this collection of information is estimated

to be 45 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. 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 OMB 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,

725 17th Street, N.W. Washington, DC 20230 (Attention: PTO Desk

Officer).

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, Part 2 and Part 3 of Title

37 of the Code of Federal Regulations are amended as set forth below.

[[Page 48097]]

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.

2. Section 2.76 is 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. 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. If an acceptable amendment to correct

the deficiency is not filed prior to approval of the mark for

publication, 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.

3. Section 2.85 is 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 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 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.

* * * * *

4. Section 2.87 is 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 during an

opposition, concurrent use, or interference proceeding, upon motion

granted by the Trademark Trial and Appeal Board. Additionally, a

request to divide an application under section 1(b) of the Act may be

filed with a statement of use under Sec. 2.88 or at any time between

the filing of a statement of use and the date the Trademark Examining

Attorney approves the mark for registration.

* * * * *

5. Section 2.101 is amended by revising paragraph (d)(1) to read as

follows:

Sec. 2.101 Filing an opposition.

* * * * *

(d)(1) The opposition must be accompanied by the required fee for

each party joined as opposer for each class in the application for

which registration is opposed (see Sec. 2.6(a)(17). If no fee, or a fee

insufficient to pay for one person to oppose the registration of a mark

in at least one class, is submitted within thirty days after

publication of the mark to be opposed or within an extension of time

for filing an opposition, the opposition will not be refused if the

required fee(s) is submitted to the Patent and Trademark Office within

the time limit set in the notification of this defect by the Office.

* * * * *

6. Section 2.102 is amended by revising paragraph (d) to read as

follows:

Sec. 2.102 Extension of time for filing an opposition.

* * * * *

(d) Every request to extend the time for filing a notice of

opposition should be submitted in triplicate.

7. Section 2.111 is amended by revising paragraphs (b) and (c)(1)

to read as follows:

Sec. 2.111 Filing petition for cancellation.

* * * * *

(b) Any entity which believes that it is or will be damaged by a

registration may file a petition, which should be addressed to the

Trademark Trial and Appeal Board, to cancel the registration in whole

or in part. The petition need not be verified, and may be signed by the

petitioner or the petitioner's attorney or other authorized

representative. The petition may be filed at any time in the case of

registrations on the Supplemental Register or under the Act of 1920, or

registrations under the Act of 1881 or the Act of 1905 which have not

been published under section 12(c) of the Act, or on any ground

specified in section 14(3) or (5) of the Act. In all other cases the

petition and the required fee must be filed within five years from the

date of registration of the mark under the Act or from the date of

publication under section 12(c) of the Act.

(c)(1) The petition must be accompanied by the required fee for

each class in the registration for which cancellation is sought (see

2.6(a)(16)). If the fees submitted are insufficient for a cancellation

against all of the classes in the registration, and the particular

class or classes against which the cancellation is filed are not

specified, the Office will issue a written notice allowing petitioner

until a set time in which to submit the required fees(s) (provided that

the five-year period, if applicable, has not expired) or to specify the

class or classes sought to be cancelled. If the required fee(s) is not

submitted, or the specification made, within the time set in the

notice, the cancellation will be presumed to be against the class or

classes in ascending order, beginning with the lowest numbered class,

and including the number of classes in the registration for which the

fees submitted are sufficient to pay the fee due for each class.

* * * * *

8. Section 2.117 is amended by revising paragraphs (a) and (b) to

read as follows:

Sec. 2.117 Suspension of proceedings.

(a) Whenever it shall come to the attention of the Trademark Trial

and Appeal Board that a party or parties to a pending case are engaged

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

on the case, proceedings before the Board may be suspended until

termination of the civil action or the other Board proceeding.

(b) 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.

* * * * *

9. Section 2.119 is amended by revising paragraph (d) to read as

follows:

Sec. 2.119 Service and signing of papers.

* * * * *

(d) If a party to an inter partes proceeding is not domiciled in

the

[[Page 48098]]

United States and is not represented by an attorney or other authorized

representative located in the United States, the party must designate

by written document filed in the Patent and Trademark Office the name

and address of a person resident in the United States on whom may be

served notices or process in the proceeding. In such cases, official

communications of the Patent and Trademark Office will be addressed to

the domestic representative unless the proceeding is being prosecuted

by an attorney at law or other qualified person duly authorized under

Sec. 10.14(c) of this subchapter. 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

Sec. 10.14(b) and authorized under Sec. 2.17(b).

* * * * *

10. Section 2.120 is amended by redesignating current paragraphs

(e) and (h) as (e)(1) and (h)(1), respectively; adding new paragraphs

(e)(2) and (h)(2); and revising paragraphs (a), (g)(1) and redesignated

paragraphs (e)(1) and (h)(1) to read as follows:

Sec. 2.120 Discovery.

(a) In general. 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 this section. 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.

The Trademark Trial and Appeal Board will specify the opening and

closing dates for the taking of discovery. The trial order setting

these dates will be mailed with the notice of institution of the

proceeding. The discovery period will be set for a period of 180 days.

The parties may stipulate to a shortening of the discovery period. The

discovery period may be extended upon stipulation of the parties

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

of the Board. If a motion for an extension is denied, the discovery

period may remain as originally set or as reset. Discovery depositions

must be taken, and interrogatories, requests for production of

documents and things, and requests for admission must be served, on or

before the closing date of the discovery period as originally set or as

reset. Responses to interrogatories, requests for production of

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

30 days from the date of service of such discovery requests. The time

to respond may be extended upon stipulation of the parties, or upon

motion granted by the Board, or by order of 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; 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.

* * * * *

(e) Motion for an order to compel discovery. (1) If a party fails

to designate a person pursuant to Rule 30(b)(6) or Rule 31(a) of the

Federal Rules of Civil Procedure, or if a party, or such designated

person, or an officer, director or managing agent of a party fails to

attend a deposition or fails to answer any question propounded in a

discovery deposition, or any interrogatory, or fails to produce and

permit the inspection and copying of any document or thing, the party

seeking discovery may file a motion before the Trademark Trial and

Appeal Board for an order to compel a designation, or attendance at a

deposition, or an answer, or production and an opportunity to inspect

and copy. The motion must be filed prior to the commencement of the

first testimony period as originally set or as reset. The motion shall

include a copy of the request for designation or of the relevant

portion of the discovery deposition; or a copy of the interrogatory

with any answer or objection that was made; or a copy of the request

for production, any proffer of production or objection to production in

response to the request, and a list and brief description of the

documents or things that were not produced for inspection and copying.

The motion must be supported by a written statement from the moving

party that such party or the attorney therefor has made a good faith

effort, by conference or correspondence, to resolve with the other

party or the attorney therefor the issues presented in the motion and

has been unable to reach agreement. If issues raised in the motion are

subsequently resolved by agreement of the parties, the moving party

should inform the Board in writing of the issues in the motion which no

longer require adjudication.

(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.

* * * * *

(g) Sanctions. (1) If a party fails to comply with an order of the

Trademark Trial and Appeal Board relating to discovery, including a

protective order, the Board may make any appropriate order, including

any of the orders provided in Rule 37(b)(2) of the Federal Rules of

Civil Procedure, except that the Board will not hold any person in

contempt or award any expenses to any party. The Board may impose

against a party any of the sanctions provided by this subsection in the

event that said party or any attorney, agent, or designated witness of

that party fails to comply with a protective order made pursuant to

Rule 26(c) of the Federal Rules of Civil Procedure.

* * * * *

(h) (1) 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 prior to the commencement of the first testimony period,

as originally set or as reset. The motion shall include a copy of the

request for admission and any exhibits thereto and of the answer or

objection. The motion must be supported by a written statement from the

moving party that such party or the attorney therefor has made a good

faith effort, by conference or correspondence, to resolve with the

other party or the attorney therefor the issues presented in the motion

and has been unable to reach agreement. If issues raised in the motion

are subsequently resolved by agreement of the parties, the moving party

should inform the Board in writing of the issues in the motion which no

longer require adjudication.

(2) 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

[[Page 48099]]

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

any noticed discovery deposition.

* * * * *

11. Section 2.121 is amended by revising paragraphs (a)(1), (c) and

(d) to read as follows:

Sec. 2.121 Assignment of times for taking testimony.

(a)(1) The Trademark Trial and Appeal Board will issue a trial

order assigning to each party the time for taking testimony. No

testimony shall be taken except during the times assigned, unless by

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

order of the Board. 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. If a motion to reschedule testimony

periods is denied, the testimony periods may remain as set. The

resetting of the closing date for discovery will result in the

rescheduling of the testimony periods without action by any party.

* * * * *

(c) A testimony period which is solely for rebuttal will be set for

fifteen days. All other testimony periods will be set for thirty days.

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. If a motion for an extension is

denied, the testimony periods may remain as set.

(d) 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 presented in the form

used in a trial order, signed by the parties, or a motion in said form

signed by one party and including a statement that every other party

has agreed thereto, and submitted in a number of copies equal to the

number of parties to the proceeding plus one copy for the Board, will,

if approved, be so stamped, signed, and dated, and a copy will be

promptly returned to each of the parties.

12. Section 2.122 is amended by revising paragraphs (b)(1), (d)(1)

and (d)(2) to read as follows:

Sec. 2.122 Matters in evidence.

* * * * *

(b) Application files. (1) The file of each application or

registration specified in a notice of interference, of each application

or registration specified in the notice of a concurrent use

registration proceeding, of the application against which a notice of

opposition is filed, or of each registration against which a petition

or counterclaim for cancellation is filed forms part of the record of

the proceeding without any action by the parties and reference may be

made to the file for any relevant and competent purpose.

* * * * *

(d) Registrations. (1) A registration of the opposer or petitioner

pleaded in an opposition or petition to cancel will be received in

evidence and made part of the record if the opposition or petition is

accompanied by two copies (originals or photocopies) of the

registration prepared and issued by the Patent and Trademark Office

showing both the current status of and current title to the

registration. For the cost of a copy of a registration showing status

and title, see Sec. 2.6(b)(4).

(2) A registration owned by any party to a proceeding may be made

of record in the proceeding by that party by appropriate identification

and introduction during the taking of testimony or by filing a notice

of reliance, which shall be accompanied by a copy (original or

photocopy) of the registration prepared and issued by the Patent and

Trademark Office showing both the current status of and current title

to the registration. The notice of reliance shall be filed during the

testimony period of the party that files the notice.

* * * * *

13. Section 2.123 is amended by revising paragraphs (b) and (f) as

follows:

Sec. 2.123 Trial testimony in inter partes cases.

* * * * *

(b) Stipulations. If the parties so stipulate in writing,

depositions may be taken before any person authorized to administer

oaths, at any place, upon any notice, and in any manner, and when so

taken may be used like other depositions. By written 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

parties may stipulate in writing what a particular witness would

testify to if called, or the facts in the case of any party may be

stipulated in writing.

* * * * *

(f) Certification and filing of deposition. (1) The officer shall

annex to the deposition his certificate showing:

(i) Due administration of the oath by the officer to the witness

before the commencement of his deposition;

(ii) The name of the person by whom the deposition was taken down,

and whether, if not taken down by the officer, it was taken down in his

presence;

(iii) The presence or absence of the adverse party;

(iv) The place, day, and hour of commencing and taking the

deposition;

(v) The fact that the officer was not disqualified as specified in

Rule 28 of the Federal Rules of Civil Procedure.

(2) If any of the foregoing requirements in paragraph (f)(1) of

this section are waived, the certificate shall so state. The officer

shall sign the certificate and affix thereto his seal of office, if he

has such a seal. Unless waived on the record by an agreement, he shall

then 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. The officer or the party taking the deposition, or its

attorney or other authorized representative, shall then address the

package, and forward the same to the Commissioner of Patents and

Trademarks. 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 by the officer

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

representative, in a separate package marked and addressed as provided

in this section.

* * * * *

14. Section 2.125 is amended by revising paragraph (C) to read as

follows:

Sec. 2.125 Filing and service of testimony.

* * * * *

(c) One certified transcript and exhibits shall be filed with the

Trademark Trial and Appeal Board. Notice of such filing shall be served

on each adverse party and a copy of each notice shall be filed with the

Board.

* * * * *

15. Section 2.127 is amended by revising paragraphs (a), (b), (d),

(e)(1) and (f) to read as follows:

Sec. 2.127 Motions.

(a) Every motion shall be made in writing, shall contain a full

statement of the grounds, and shall embody or be accompanied by a

brief. Except as provided in paragraph (e)(1) of this section, a brief

in response to a motion shall be filed within fifteen days from the

date of service of the motion unless another time is specified by the

Trademark Trial and Appeal Board or the time is extended by stipulation

of the parties approved by the Board, or

[[Page 48100]]

upon motion granted by the Board, or upon order of the Board. If a

motion for an extension is denied, the time for responding to the

motion may remain as specified under this section. The Board, may in

its discretion, consider a reply brief. Except 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 month from the

date thereof. A brief in response must be filed within 15 days from the

date of service of the request.

* * * * *

(d) When any party files a motion to dismiss, or a motion for

judgment on the pleadings, or a motion for summary judgment, or any

other motion which is potentially dispositive of a proceeding, 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. If the case is not disposed of as a

result of the motion, proceedings will be resumed pursuant to an order

of the Board when the motion is decided.

(e)(1) A 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. A motion for summary judgment, if

filed, should be filed prior to the commencement of the first testimony

period, as originally set or as reset, and the Board, in its

discretion, may deny as untimely any motion for summary judgment filed

thereafter. 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 30

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

granted by the Board, or upon order of the Board. If a motion for an

extension is denied, the time for responding to the motion for summary

judgment may remain as specified under this section. The Board may, in

its discretion, consider a reply brief. 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

for summary judgment will be considered by the Board.

* * * * *

(f) The Board will not hold any person in contempt, or award

attorneys' fees or other expenses to any party.

16. Section 2.134 is amended by revising paragraph (a) to read as

follows:

Sec. 2.134 Surrender or voluntary cancellation of registration.

(a) After the commencement of a cancellation proceeding, if the

respondent applies for cancellation of the involved registration under

section 7(e) of the Act of 1946 without the written consent of every

adverse party to the proceeding, judgment shall be entered against the

respondent. The written consent of an adverse party may be signed by

the adverse party or by the adverse party's attorney or other

authorized representative.

* * * * *

17. Section 2.146 is amended by revising paragraph (e)(1) to read

as follows:

Sec. 2.146 Petitions to the Commissioner.

* * * * *

(e)(1) 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. Proof of

service of the petition shall be made as provided by Sec. 2.119(a). The

potential opposer or the applicant, as the case may be, 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, with proof of

service as provided by Sec. 2.119(a). No further paper relating to the

petition shall be filed.

* * * * *

PART 3--RULES OF PRACTICE IN TRADEMARK CASES

18. The authority citation for part 3 continues to read as follows:

Authority: 15 U.S.C. 1123; 35 U.S.C. 6.

19. Section 3.41 is revised to read as follows:

Sec. 3.41 Recording fees.

All requests to record documents must be accompanied by the

appropriate fee. A fee is required for each application, patent and

registration against which the document is recorded as identified in

the cover sheet. The recording fee is set in Sec. 1.21(h) of this

chapter for patents and in Sec. 2.6(b)(6) of this chapter for

trademarks.

Dated: August 27, 1998.

Bruce A. Lehman,

Assistant Secretary of Commerce and Commissioner of Patents and

Trademarks.

[FR Doc. 98-23680 Filed 9-8-98; 8:45 am]

BILLING CODE 3510-16-P