US-TTAB Proposes New Service and Discovery Rules

On January 17, 2006, the United States Patent and Trademark Office published a Notice of Proposed Rulemaking for amending its rules to require plaintiffs in Trademark Trial and Appeal Board inter partes proceedings to

1. serve on defendants their complaints or claims;
2. to utilize a modified form of the disclosure practices included in the Federal Rules of Civil Procedure; and
3. to delete the option of making submissions to the Board in CD–ROM form.

In addition, certain other amendments clarify rules, conform the rules to current practice, and correct typographical errors or deviations from standard terminology. Comments must be received by March 20, 2006 to ensure consideration.

Under the current rules, the plaintiff in a Board proceeding files notice of its complaint (or claim of right to a concurrent use registration) with as many copies as there will be defendants in the action. The copies are then forwarded to the defendants by the Board. Under the proposed rules changes, an opposer or petitioner would file its complaint with the Board and be required to concurrently serve a copy of its complaint (notice of opposition or petition for cancellation), including any exhibits, on the owner of record, or when applicable the attorney or domestic representative therefor, of the defending application or registration. The Board would then send notice to all parties to the proceeding, noting the filing of the complaint, or publication of the concurrent use application, and setting via such notice the due date for an answer, and the discovery and trial schedule.

The new disclosure rules are intended to serve as a substitute for a certain amount of traditional discovery and a more efficient means for exchange of information that otherwise would
require the parties to serve traditional discovery requests and responses thereto. The Board’s standard protective order would be applicable to all cases and absent approval of a stipulation to vary the terms of the standard protective order, approved by the Board, the parties would have to abide by it. The parties may agree to use e-mail to communicate with each other and for forwarding of service copies.

The Board’s institution order will set a schedule for the case and there will be no Federal Rule 16(b) scheduling conference/order. A party may not seek discovery through traditional devices until after it has made its disclosures. A party may also not move for summary judgment except
on claim or issue preclusion grounds until after it has made its disclosures. In inter partes proceedings before the Board, parties will generally be found to have met their initial disclosure obligations if they provide information about the following, as applicable in any particular case:

• Origin of any mark on which the partyrelies, including adoption or creation of the
  mark and original plans for use of the mark;
• Dates of use of any marks, registered or not, on which the party’s claims or defenses rely;
• The extent of past or current use, if any, or plans for future use of any marks on which
  claims or defenses rely, including use by the party or by licensees;
• Evidence of actual confusion possessed by a party in regard to the involved marks;
• The party’s awareness of third-party use or registration of marks that are the same or very similar for goods or services the same as or closely related to the involved marks and
  goods or services;
• The extent of use by the party, if any, in a non-trademark manner of words or designs
  asserted by that party to be non-distinctive;
• A party’s awareness of use of involved words or designs by third parties when the party is asserting that such words or designs are non-distinctive;
• Classes of customers for the party’s involved goods or services, including information on the technical expertise or knowledge employed by customers in making purchasing decisions;
• Channels of trade for the party’s involved goods or services;
• Methods of marketing and promoting the party’s involved goods or services;
• Surveys or market research conducted by the party in regard to any involved mark on
  which it will rely;
• Information regarding other Board proceedings, litigation, or controversies in which the party has been involved, which were related to the involved marks or, if applicable, assertedly non-distinctive matter;
• The names of individual officials or employees of a party, and contact information therefor, who are known to have the most extensive knowledge of subjects on which disclosure is made; and
• General descriptions of and the probable locations of non-privileged documents and
  things maintained by the party or its attorneys related to the subjects on which
  disclosure is made.

A party’s plan to use experts must be disclosed no later than 90 days prior to the close of discovery. However, if the expert is retained early and an adverse party has inquired about experts through discovery, the party may not delay revealing the expert until the deadline for disclosure of experts. Pretrial disclosure will also require disclosure of the identity of witnesses
that a party expects to present, or may present if the need arises. For each witness, general summaries or descriptions of the subjects on which the witness will testify and the documents or things to be introduced during the deposition must be disclosed. These disclosures must be
made 30 days prior to the opening of trial. Pretrial disclosure of plans to file notices of reliance is not required.

With regard to filing submissions in CD–ROM format, "CD–ROMs present technical problems for the ESTTA/TTABIS systems and have rarely been utilized by parties."

A table of contents, index of cases, description of record, statement of the issues, recitation of facts, argument and summary, whichever a party may choose to employ, all count against the limit of 25 pages for a brief in support of a motion or in response to a motion and the limit of 10 pages for a reply brief.