Articles

Client Alert - TTAB Significantly Amends Rules of Practice in Contested Proceedings

By Deborah Squiers

Sep. 24, 2007

At long last, the Trademark Trial and Appeal Board, or TTAB for short, has issued final rules significantly changing service and discovery procedures in cases before it adjudicating trademark registration disputes.

The TTAB first proposed amending its rules in 2006 so that discovery would be more in line with procedures followed in the federal courts under the Federal Rules of Civil Procedure, but after considering comments from lawyers and others, the TTAB scaled back the changes.

The Board has said that its new final rules are intended to increase efficiency by requiring plaintiffs to serve the initial notice (instead of the Board’s previous practice of serving and initiating the proceeding itself) and by demanding that parties exchange lists of witnesses and other information that they will rely on to prove or defend their positions.

Below are the highlights of the new rules, which are effective November 1 unless otherwise noted:

• Plaintiff must serve its complaint on the owner of record or domestic representative in the case of a cancellation petition against a registered mark or the attorney (if one is listed) in the case of an opposition to a pending application. Service by hand, mail or overnight courier is acceptable.
  
• The parties must engage in a discovery and settlement conference within 30 days from the date that the answer is due, which is 70 days from the institution of the proceedings.
  
• Each party must make its initial mandatory disclosures of documents and witnesses to support its case within 30 days of the opening of discovery. Although the Board adopted much of the initial disclosure requirements of the Federal Rules of Civil Procedure, it noted that such disclosures will differ from a federal court infringement action because the Board only considers the right to register, not use, in a contested proceeding.
  
• Parties must now disclose the identity of each expert witness, if any, and serve a copy of the expert’s report prior to the close of discovery.
  
• The parties must exchange pretrial disclosures outlining witnesses and evidence to be relied on, as governed by the federal rules.
  
• The Board automatically will impose its standard protective order on all proceedings, unless the parties agree to different terms or one party obtains approval from the Board to alter its terms. (Generally effective August 31).

The practical effects of the new TTAB rules are best summarized as follows:

• Collect Supporting Evidence Early On. Parties initiating proceedings before the TTAB on or after November 1 will need to be prepared at the time the proceeding is started, or very early on in the case, to collect their supporting evidence and be ready to disclose it to the other side.
  
• Keep Owner Contact Information Current. Although the PTO has always required that registration owners keep current contact information on file, this requirement is even more important because a plaintiff need only serve a copy of a petition to cancel on the address listed on the USPTO website. Thus, if the address is not current, the registrant might never receive notice of the petition, and its registration may be cancelled.
  
• Engage Early On In Settlement Discussions. With the new mandatory disclosure requirements of witnesses and key documents early on in the case, parties will want to explore settlement before significant costs are incurred. Once an answer is filed, the Board will not entertain requests to suspend proceedings until after the parties have their initial conference. The Board, knowing that most contested proceedings settle, wants the parties to engage in settlement talks first during the initial conference before they will consider suspending the proceedings.
  
• Risk Of Preclusion Of Evidence For Failure To Disclose. Although not spelled out in the rules, parties risk preclusion of evidence at trial if not disclosed at the time of the initial mandatory disclosures, or even later, in the pretrial exchanges.

For further information, please contact Deborah K. Squiers, Mary Kevlin, Albert Robin, Richard Mandel or Jonathan King.  

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