On August 1, 2007, the United States Patent and Trademark Office (USPTO) posted its final rule on amendments to the Trademark Rules of Practice, which govern Trademark Trial and Appeal Board (Board) proceedings. The amended rules implement a direct-service approach for the commencement of Board proceedings and a disclosure model that requires mandatory party disclosures and standard protective orders. Other miscellaneous changes to the rules eliminate CD-ROM submissions, allow parties to electronically exchange documents with consent and otherwise clarify and conform the rules to current practice.
By making these changes, the USPTO seeks to maximize the efficiency of Board proceedings. The amendments are effective November 1, 2007, except for minor changes that will be effective August 31, 2007.
Direct-Service Approach for Commencement of Proceedings
Under the amended rules, the Board plaintiffs will assume the initial responsibility of service on the defendants. Board plaintiffs include opposers filing notices of opposition against published trademark applications, petitioners for cancellation of trademark registrations and concurrent-use applicants filing claims of right to concurrent-use registrations. Opposers and petitioners will thus initiate proceedings by concurrently filing a complaint with the Board and directly effecting service on the defendant(s) or designated representative at the correspondence address, as identified by the USPTO’s Trademark Applications and Registration Retrieval (TARR) system. If a plaintiff is unable to effect service at the address provided, plaintiffs have 10 business days to notify the Board, which will then assume responsibility for service.
Except for concurrent-use applicants, plaintiffs bear no further obligation to search or otherwise investigate the defendant’s correspondence data, but must notify the Board of any new contact information for the defendant or other interested parties that comes to a plaintiff’s attention. If the Board’s notice is returned or undelivered, notice by publication will be effected through the Official Gazette.
Modified Disclosure Model
The mandatory disclosure model requires parties to engage in a disclosure/discovery/settlement conference and exchange initial, expert and pretrial disclosures within regulatory time frames. This change is intended to facilitate earlier settlement of Board cases, increase the efficiency of discovery and prompt parties to exchange potentially dispositive information early on without the formality of discovery requests.
The disclosure schedule may be modified by stipulation of the parties (subject to Board approval), motion granted by the Board or order of the Board. In the absence of jurisdictional claims (e.g., lack of Board jurisdiction, claim or issue preclusion), parties may not seek traditional discovery or move for summary judgment until they have made initial disclosures. The new disclosure regime also subjects all Board proceedings to a standard protective order that may be modified by stipulation. Parties may also move for an alternate order under the Federal Rules of Civil Procedure.
The full text of the USPTO’s Final Rule is available at http://www.uspto.gov/web/offices/com/sol/notices/72fr42242.pdf.
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