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Archived updates for Thursday, August 16, 2007

New U.S. Inter Partes Administrative Trademark Rules Effective November 1

Effective November 1, 2007, the United States Patent and Trademark Office (Office) is amending the Trademark Rules of Practice to require plaintiffs in Trademark Trial and Appeal Board (Board) inter partes proceedings
  • to serve complaints or claims directly on defendants;
  • to utilize in Board inter partes proceedings a modified form of the disclosure practices included in the Federal Rules of Civil Procedure; and
  • to delete the option of making submissions to the Board in CD–ROM form.

In addition, certain amendments are being made to clarify rules, conform the rules to current practice, and correct typographical errors or deviations from standard terminology.

For example, the Board’s notice of the commencement of the proceeding (commonly referred to as the institution order) will set forth specific dates for the various phases in a case. Since each deadline or phase is measured from the date of the institution order:

  1. Due date for an answer—40 days from the date of the institution order.
  2. Deadline for a disclosure/discovery/settlement conference—30 days from
    the date the answer is due.
  3. Discovery opens—30 days after the date the answer is due.
  4. Deadline for making initial disclosures—30 days from the opening of the discovery period.
  5. Deadline for disclosure of expert testimony—30 days prior to close of discovery.
  6. Discovery closes—180 days from the opening date of the discovery period.
  7. Deadline for plaintiff’s pretrial disclosures—15 days prior to the opening of plaintiff’s testimony period.
  8. Plaintiff’s 30-day testimony period— closes 90 days after the close of discovery.
  9. Deadline for defendant’s pretrial disclosures—15 days prior to the opening of defendant’s testimony period.
  10. Defendant’s 30-day testimony period—closes 60 days after the close of plaintiff’s testimony period.
  11. Deadline for plaintiff’s rebuttal pretrial disclosures—15 days prior to the opening of plaintiff’s rebuttal testimony period.
  12. Plaintiff’s 15-day rebuttal testimony period—closes 45 days from close of defendant’s testimony period. (Institution date plus 445 days.)
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