[Federal Register Volume 62, Number 108 (Thursday, June 5, 1997)]
[Proposed Rules]
[Pages 30802-30818]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 97-14711]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 2 and 3
[Docket No. 970428100-7100-01]
RIN 0651-AA87
Miscellaneous Changes to Trademark Trial and Appeal Board Rules
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rulemaking.
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SUMMARY: The Patent and Trademark Office (PTO) proposes to amend its
rules governing practice before the Trademark Trial and Appeal Board
(Board) to expedite inter partes proceedings. These proposed changes
enlarge the time periods for discovery, testimony, and response to
motions, and concomitantly limit the circumstances in which extensions
may be obtained. In addition, they impose strict limitations on the
number of written discovery requests which one party may serve upon
another party in a proceeding. Other proposed inter partes rule
amendments clarify the rules, conform the rules to current practice,
simplify practice, and correct cross-references. Finally the PTO
proposes to amend 37 CFR 2.76(a), 2.76(g), and 2.76(h), which affect
practice in ex parte appeals to the Board, to conform these rules to
current practice.
DATES: Written comments must be received on or before August 4, 1997 to
ensure consideration. An oral hearing will not be conducted.
ADDRESSES: Written comments may be sent by mail addressed to Assistant
Commissioner for Trademarks, Box TTAB--No Fee, 2900 Crystal Drive,
Arlington, Virginia 22202-3513, marked to the attention of Ellen J.
Seeherman. Written comments may also be sent by facsimile transmission
to (703) 308-9333, marked to the attention of Ellen J. Seeherman.
Written comments will be available for public inspection in Suite 900,
on the 9th Floor of the South Tower Building, 2900 Crystal Drive,
Arlington, Virginia 22202-3513.
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: This notice of proposed rulemaking is
designed to improve practice and expedite proceedings in inter partes
cases before the Trademark Trial and Appeal Board (Board). In addition,
the proposed amendments codify and clarify certain practices of the
Board and correct certain references to citations of the Trademark Act
and the Code of Federal Regulations.
The proposed amendments, and the reasons for the amendments, are
discussed below.
The Board's workload has increased dramatically in the last several
years because of a rapid growth in the number of inter partes and ex
parte proceedings filed with the Board. Along with this increase in the
number of proceedings, there has been a marked increase in the number
of motions and other papers filed in each inter partes case. It appears
to the Board that this proliferation of papers has been due, in large
part, to the fact that in recent years, many attorneys practicing
before the Board in inter partes cases have taken an increasingly
aggressive approach by filing every possible motion that may be filed
and by responding to every paper filed to the point of sur-reply and
sur-sur-reply briefs. It also appears that some of the papers filed are
part of a strategy to bury the adverse party with paper, so that it
becomes too expensive for that party to proceed with the case, and the
party is forced to settle or capitulate. Whatever the reason, in many
cases the number of papers filed goes far beyond what is reasonably
needed for a Board proceeding. The filing of these papers causes
needless work and expense for the parties and the Board. Moreover, the
rapid growth in the number of papers filed has caused substantial
delays in all phases of the Board's work, including the resolution of
motions and the final determination of proceedings.
A number of the rule amendments proposed in this notice, namely,
the proposed amendments to Secs. 2.120(a), 2.120(d)(1), 2.120(d)(2),
2.120(e), 2.120(h), 2.121(a)(1), 2.121(c), 2.127(a), 2.127(b),
2.127(d), and 2.127(e)(1), are designed to address these problems by
changing certain Board practices relating to discovery, testimony
periods, and motions. In addition, Sec. 2.120(a) is proposed to be
amended to clarify Board discovery practice in the wake of the December
1, 1993 amendments to the Federal Rules of Civil Procedure.
Other amendments proposed in this notice serve to clarify the
rules, conform the rules to current Board practice, simplify practice,
and correct certain cross-references in the rules. The rules affected
by these proposed amendments are Secs. 2.76(a), 2.76(g), 2.76(h),
2.85(e), 2.87(c), 2.101(d)(1), 2.102(d), 2.111(b), 2.111(c)(1),
2.117(a), 2.117(b), 2.119(d), 2.120(g)(1), 2.121(d), 2.122(b)(1),
2.122(d)(1), 2.123(b), 2.123(f), 2.125(c), 2.127(f), 2.134(a), and
2.146(e)(1).
Proposed Amendments Relating to Discovery
It is the experience of the Board that a large number of motions
and requests are filed in connection with discovery. Many of these
filings relate to repeated requests for extensions of time,
[[Page 30803]]
specifically, extensions of the discovery period and the time to
respond to discovery requests.
Moreover, at present, the Board sets the closing date for the
taking of discovery, with the date set being 90 days after the date of
the initial trial order. However, discovery in Board proceedings 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 (i.e., after the notice of opposition or petition
for cancellation is filed in an opposition proceeding, and after the
mailing by the Board of the notice of institution in an interference or
concurrent use proceeding), 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
unpopular with practitioners.
In order to simplify the opening of discovery, and reduce the
number of motions to extend the discovery period and the time to
respond to discovery requests, it is proposed to amend Sec. 2.120(a) to
provide that the Board will specify the opening and closing dates for
the taking of discovery, and that the discovery period will be set for
a period of 180 days. The section is also proposed to be amended to
include a provision 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.
Because of the proposed enlargements of the discovery and response
periods, it is also proposed to limit the circumstances in which
extensions will be granted. Specifically, Sec. 2.120(a) is proposed to
be amended to provide that extensions of the discovery period will be
granted only upon stipulation of the parties approved by the Board,
while 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 granted by the Board. (The Board, of
course, retains its inherent power to sua sponte reset, and thereby
extend, the discovery period and response times.) In addition, the
section is proposed to be amended to include a provision (now found, in
somewhat different form, in Sec. 2.121(a)(1)), 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 ``the discovery period will be rescheduled
only upon stipulation of the parties approved by the Board, and
testimony periods will be rescheduled only upon stipulation of the
parties approved by the Board, or upon motion showing extraordinary
circumstances approved by the Board.'' The quoted portion is somewhat
different from its counterpart in present Sec. 2.121(a), but is
consistent with the provisions of Sec. 2.121(a)(1) as proposed to be
amended. Because of the proposed amendment of Sec. 2.120(a) to include
provisions governing discovery response periods and extensions thereof,
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 the provision now proposed to be moved.
The enlargement of the discovery period and of the time to respond
to discovery requests, and the concomitant limitations on the
situations in which extensions of these times will be granted, will
reduce the number of extension requests filed, reduce delays in the
service of discovery responses, and expedite proceedings before the
Board.
Another proposed change to Sec. 2.120(a) clarifies Board discovery
practice in the wake of the December 1, 1993 amendments to the Federal
Rules of Civil Procedure. Section 2.116(a) provides that, except as
otherwise provided, and wherever applicable and appropriate, procedure
and practice in Board inter partes proceedings shall be governed by the
Federal Rules of Civil Procedure. Section 2.120(a) provides, in 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
Sec. 2.120; and that the opening of discovery is governed by the
Federal Rules of Civil Procedure. Thus, where the Board has its own
rule concerning a particular matter of practice or procedure, that rule
governs; if there is no Board rule concerning the matter, the Federal
Rules of Civil Procedure apply, where applicable and appropriate.
The December 1, 1993 amendments to the Federal Rules of Civil
Procedure substantially changed discovery procedures in civil actions.
The amended rules included provisions which, inter alia, mandated
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. Moreover, under
the amended Federal Rules, the commencement of discovery hinged upon
completion of the mandated discovery plan conference. The PTO concluded
that the application of these provisions in inter partes proceedings
before the Board would increase the complexity and cost of the
proceedings and be unduly burdensome to the parties and the Board.
Therefore, in a notice published in the Official Gazette, the
Commissioner stated that these provisions were not appropriate for, and
would not be applicable in, Board proceedings. 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). The Commissioner also stated that the PTO would, in
due course, publish a notice of proposed rulemaking to amend, as might
be necessary, the trademark rules governing practice and procedure in
inter partes proceedings before the Board. Accordingly, Sec. 2.120(a)
is proposed to be amended to specify that the provisions of the Federal
Rules 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, do not apply to Board proceedings, and that the Board will
specify the opening and closing dates
[[Page 30804]]
for the taking of discovery. In addition, the first sentence of the
section, which specifies that the provisions of the Federal Rules of
Civil Procedure shall apply in opposition, cancellation, interference,
and concurrent use registration proceedings, except as otherwise
provided in Sec. 2.120, is proposed to be amended to include the
prefatory words ``Wherever appropriate.'' The proposed amendment is
consistent with an analogous provision in Sec. 2.116(a), and makes it
clear that even when there is no provision in Sec. 2.120 relating to a
particular discovery matter, the provisions of the Federal Rules of
Civil Procedure relating to that matter apply only if they are
appropriate for Board proceedings.
Another of the proposed amendments to Sec. 2.120(a) would 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. It is believed that the proposed 180-day discovery
period will allow more than sufficient time for the service of
discovery requests to be made early enough in the discovery period so
that responses to such requests will fall due prior to the close of
discovery. Moreover, as indicated hereafter, Sec. 2.120(e) is proposed
to be amended to provide that a motion to compel discovery must be
filed within 30 days after the close of the discovery period, as
originally set or as reset. The proposed requirement that discovery
requests be served in sufficient time for responses to fall due prior
to the close of discovery will enable the propounding party to file a
motion to compel, if such a motion is deemed necessary, within 30 days
after the close of the discovery period. Litigants should note that if
they agree to an extension of time to respond to discovery requests,
such that the responses would be due shortly before or after the due
date for any motion to compel, then they should also stipulate to
reschedule the closing date of the discovery period, if the propounding
party wishes to preserve its time to file a motion to compel.
The Board has observed that parties misuse the discovery process
for purposes of harassing their adversaries, resulting in numerous
motions to compel and motions for protective orders. Section 2.120(d)
was amended effective November 16, 1989, to restrict to 75 (counting
subparts) the total number of interrogatories a party may serve, in a
proceeding, upon another party. The final rule notice was published in
the Federal Register on August 22, 1989, at 54 FR 34886 and in the
Patent and Trademark Office Official Gazette of September 12, 1989, at
1106 TMOG 26. It is the Board's experience that, despite that
limitation, parties continue to serve interrogatories, as well as other
written discovery requests, which are irrelevant, unnecessary, and/or
harassing. In view thereof, and given the restricted scope of Board
proceedings, and the availability of the discovery deposition as an
alternate and/or additional discovery device, it is the Board's belief
that the total number of discovery requests which one party may serve
upon another party in a proceeding should be limited to 25
interrogatories (counting subparts), 15 requests for production of
documents and things (counting subparts), and 25 requests for admission
(counting subparts). Sections 2.120(d)(1), 2.120(d)(2), and 2.120(h)
are proposed to be amended to state such limitations. Moreover, because
it is believed that 25 interrogatories are an adequate number for a
proceeding before the Board, the motion procedure for obtaining leave
to serve interrogatories in excess of the limit set forth in
Sec. 2.120(d)(1) is proposed to be deleted. Similarly, no such
procedure is proposed to be provided for requests for production of
documents and things and requests for admission. The provisions
proposed to be added to Secs. 2.120(d)(2) and 2.120(f), including
provisions governing the action which may be taken by a party served
with discovery requests which it believes to be excessive in number,
parallel those of Sec. 2.120(d)(1), as proposed to be amended. It is
believed that the proposed limitations on the number of
interrogatories, document production requests, and requests for
admission that may be served will reduce the number of motions to
compel filed, since the parties presumably will use the more limited
number of discovery requests for only relevant and appropriate
inquiries, and not for purposes of harassment. A reduction in the
number of motions to compel filed will serve to expedite proceedings.
The first sentence of Sec. 2.120(h), which provides that requests
for admission shall be governed by Rule 36 of the Federal Rules of
Civil Procedure, except that the Board does not have authority to award
any expenses to any party, is proposed to be deleted. 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. For example, the provision of Rule
36(a), that without leave of court or written stipulation, requests for
admission may not be served before the time specified in Rule 26(d) of
the Federal Rules of Civil Procedure, is not applicable in Board
proceedings. See ``Effect of December 1, 1993 Amendments to the Federal
Rules of Civil Procedure in Trademark Trial and Appeal Board Inter
Partes Proceedings,'' supra. Moreover, Sec. 2.120(a), as proposed to be
amended, specifies that 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 Sec. 2.120. Further,
Secs. 2.120(g)(1) and 2.127(f), as proposed to be amended, provide that
the Board will not hold any person in contempt or award any expenses to
any party. Accordingly, the first sentence of Sec. 2.120(h) is proposed
to be deleted because it is redundant and confusing.
Section 2.120(h) is also proposed to be amended to provide that a
motion to test the sufficiency of an answer or objection to a request
for admission must be filed within 30 days after the close of the
discovery period, as originally set or as reset. In addition, the
section is proposed to be amended to specify that when a party files a
motion to test the sufficiency of an answer or objection to a request
for 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. These proposed provisions correspond
to similar provisions proposed to be added to Sec. 2.120(e), which
governs motions to compel discovery. It is the intention of the Board,
when setting trial dates in cases arising under these rules as proposed
to be amended, to schedule an interval of 60 days between the closing
date of the discovery period and the opening date of the first
testimony period. The motion to compel and the motion to test the
sufficiency of an answer or objection to a request for admission deal
with pre-trial matters and should, therefore, be filed and determined
prior to trial. The proposed provisions governing the time for filing
these motions and the suspension of proceedings pending the
determination thereof, 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
[[Page 30805]]
testimony period, will provide for a more orderly administration of the
proceeding and allow parties more certainty in scheduling testimony.
Moreover, the proposed amendment to Sec. 2.120(a) to set the discovery
period for 180 days, and to require that discovery requests be served
in sufficient time for responses to the requests to fall due prior to
the close of the discovery period, will enable the propounding party to
file a motion to compel or a motion to test the sufficiency of an
answer or objection to a request for admission, if such a motion is
deemed necessary, within 30 days after the close of the discovery
period.
Section 2.120(h) is proposed to be further amended to provide 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 deposition. The proposed provision corresponds to similar
provisions proposed to be added to Sec. 2.120(e), with respect to
motions to compel, and to Sec. 2.127(d), with respect to motions for
summary judgment, and is explained in greater detail in our discussion
of the proposed amendments to the latter rule.
Finally, because of the length and complexity of Sec. 2.120(h), as
proposed to be amended, the present paragraph is proposed to be
redesignated as (h)(2) and revised; the provisions governing the
proposed limitation on the number of requests for admission which may
be served by one party upon another are proposed to be included in a
new paragraph designated (h)(1); and the proposed provisions relating
to the suspension of proceedings when a motion to test the sufficiency
of an answer or objection to a request for admission is filed are
proposed to be included in a new paragraph designated (h)(3).
Section 2.120(e) is proposed to be amended to provide that a motion
to compel discovery must be filed within 30 days after the close of the
discovery period, as originally set or as reset; that when a party
files a motion 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 order; and 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. These proposed provisions correspond to
similar provisions proposed to be added to Sec. 2.120(h). The latter
proposed provision also corresponds to a similar provision proposed to
be added to Sec. 2.127(d) and is explained in greater detail in our
discussion of the proposed amendments to that rule.
Proposed Amendments Relating to Testimony Periods
It has come to the attention of the Board that trial is sometimes
delayed because an adverse party feels compelled to stipulate to
reschedule or extend testimony periods, knowing that to oppose such a
request and await the Board's decision on the contested motion will
create a greater delay than if the party were to consent to the
rescheduling or extension. In order to remedy this problem, the third
sentences in Secs. 2.121(a)(1) and 2.121(c) are proposed to be amended
to provide that testimony periods may be rescheduled
(Sec. 2.121(a)(1)), or extended (Sec. 2.121(c)), only by stipulation of
the parties approved by the Board, or upon motion showing extraordinary
circumstances granted by the Board, and that if such a motion is
denied, the testimony periods will remain as set. At the same time,
Sec. 2.121(c) is proposed to be amended to lengthen the testimony
period for the plaintiff and defendant to present their cases in chief
from 30 to 60 days, and to lengthen the period for the plaintiff to
present evidence in rebuttal from 15 to 30 days. The enlargement of
testimony periods should, in general, eliminate the number of extension
requests filed by parties and expedite the disposition of proceedings.
Moreover, the enlargement of the testimony periods should lessen any
inconvenience to the parties from the elimination of the ``good cause''
standard for obtaining extensions of time.
Those portions of Secs. 2.121(a)(1) and 2.121(c) which refer to the
rescheduling or extension of testimony periods ``by order of the
Board'' are proposed to be deleted to clarify that a party may not
simply make a motion that the Board order the resetting of testimony
periods. That is, parties may move to reschedule or extend testimony
periods only upon consent, or upon motion showing extraordinary
circumstances. The Board still retains its authority to sua sponte
reschedule or extend testimony periods.
As indicated above, under the heading ``Proposed Amendments
Relating to Discovery,'' the last sentence of Sec. 2.121(a)(1), which
now provides 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, is proposed to be moved to the end of Sec. 2.120(a), as proposed
to be amended. It is believed that Sec. 2.120(a), as proposed to be
amended, is the most logical place for this sentence. In addition, the
latter part of the sentence is proposed to be revised to read ``the
discovery period will be rescheduled only upon stipulation of the
parties approved by the Board, and 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 proposed revision of the latter part of the sentence is
consistent with the third sentence of Sec. 2.121(a)(1), as proposed to
be amended.
Proposed Amendments Relating to Motion Practice
Section 2.127(a) is proposed to be amended to clarify Board
practice with respect to the filing of reply briefs and additional
papers in support of or in opposition to motions. The rule as now
written makes no reference to such papers. As a result, parties often
file reply briefs on motions, sur-reply briefs, responses to sur-reply
briefs, and motions for leave to file, as well as motions to strike,
such papers. It has been the Board's experience that reply briefs may
be helpful in deciding a motion, but that additional papers generally
consist of reargument. Moreover, the filing of such additional papers
often escalates as each party wishes to have the last word. The result
is needless expense to the parties, additional work for the Board, and
delays in rendering decisions. Accordingly, the rule is proposed to be
amended to provide for the filing of a reply brief, if desired, within
15 days from the date of service of the brief in response to the
motion; and to specify that the time for filing a reply brief will not
be extended, and that additional papers in support of or in opposition
to a motion will be given no consideration. The proposed time limit for
the filing of a reply brief on a motion applies to all types of motions
except motions for summary judgment. Section 2.127(e)(1), which governs
the time for filing a motion for summary judgment, is proposed to be
amended, as indicated hereafter, to allow 30 days for this purpose in
the case of a reply brief on a motion for summary judgment.
Section 2.127(a) is also proposed to be amended to enlarge the time
for responding to a motion from 15 to 30
[[Page 30806]]
days. The proposed time limit applies to all types of motions except
motions for summary judgment. Section 2.127(e)(1) is proposed to be
amended to allow 60 days for the filing of a brief in response to a
motion for summary judgment.
Concomitantly, Sec. 2.127(a) is proposed to be amended to provide
that extensions of time for filing a brief in opposition to a motion
will be granted only upon stipulation of the parties approved by the
Board, or upon motion showing extraordinary circumstances granted by
the Board, and that, ``if such a motion for an extension is denied, the
time for responding to the motion remains as specified under this
section.'' A similar provision is proposed to be included in
Sec. 2.127(e)(1) regarding extensions of time for filing a brief in
opposition to a motion for summary judgment. It is believed that 30
days (or 60 days in the case of a summary judgment motion) is a
sufficient time to respond to a motion. Moreover, this enlargement of
the response time, coupled with the requirement that extension requests
be made with consent or show extraordinary circumstances, and the
accompanying provision leaving the time for responding to a motion
unchanged if a motion to extend is denied, will reduce the number of
extension requests filed, expedite the disposition of proceedings, and
prevent parties from using the delays inherent in the filing and
deciding of motions to enlarge their time to respond to motions.
Section 2.127(a) is proposed to be further amended to impose a page
limit for briefs and reply briefs on motions, namely, 25 pages for
briefs in support of and in opposition to motions, and 10 pages for
reply briefs, and to specify form requirements for such briefs. It is
believed that the proposed page limitations are more than sufficient
for parties to adequately argue motions in proceedings before the
Board.
Section 2.127(b) is proposed to be amended to change the
specification of the time period for filing a request for
reconsideration or modification of an order or decision on a motion
from ``thirty days'' to ``one month.'' The proposed amendment conforms
the time period with that specified in Sec. 2.129(c), which governs
requests for reconsideration or modification of a decision after final
hearing.
Certain modifications are proposed to be made to the rules
governing summary judgment motions. It appears that in some cases,
parties that have been served with discovery requests, and know that it
is Board policy to suspend proceedings once a summary judgment motion
has been filed, move for summary judgment in an effort to avoid having
to make timely response to the discovery requests. Accordingly, the PTO
proposes to amend Sec. 2.127(d), which concerns suspension of
proceedings when a potentially dispositive motion has been filed, to
specify 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 that it
shall toll the time for the nonmoving party to respond to outstanding
discovery requests or to appear at a noticed deposition. The nonmoving
party's time to respond is proposed to be tolled because a party which
files a motion for summary judgment is, by its motion, asserting that
it needs no further evidence to demonstrate that it is entitled to
judgment. The proposed amendment will eliminate the noted abuse of the
summary judgment procedure. Moreover, it may also reduce the number of
motions for discovery filed pursuant to Rule 56(f) of the Federal Rules
of Civil Procedure because parties opposing motions for summary
judgment will be able to receive responses to outstanding discovery
requests prior to the time for responding to the summary judgment
motion.
The first sentence of Sec. 2.127(d), which provides, in essence,
that when any party files a potentially dispositive motion, 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
thereto, is proposed to be amended by adding to the end thereof the
phrase ``except as otherwise specified in the Board's suspension
order.'' The proposed amendment clarifies the rule.
Section 2.127(e)(1), which governs the time for filing a motion for
summary judgment, is proposed to be amended to specify that a motion
for summary judgment may not be filed until notification of the
proceeding has been sent to the parties by the Board. This proposed
amendment codifies current Board practice, as set forth in Nabisco
Brands Inc. v. Keebler Co., 28 USPQ2d 1237 (TTAB 1993). In Board
opposition and cancellation proceedings, as under the Federal Rules,
the proceeding commences with the filing of the complaint, i.e., the
notice of opposition or the petition for cancellation. See
Secs. 2.101(a) and 2.111(a). However, in Board proceedings, formal
service of the complaint upon the defendant is made by the Board, not
by the plaintiff. Further, 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 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, unless and until it
receives from the Board the notice of institution along with a copy of
the complaint. Accordingly, the Board considers a motion for summary
judgment filed prior to the issuance of the notice of institution to be
premature. 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.
Section 2.127(e)(1) is proposed to be further amended to add new
provisions governing the time for filing papers in response to a motion
for summary judgment, as well as the time for filing a reply brief
thereon. Specifically, the section is proposed to be amended to provide
that a motion under Rule 56(f) of the Federal Rules of Civil Procedure
(that is, a motion by the nonmoving party for discovery necessary to
enable it to respond to the motion for summary judgment), if filed,
shall be filed within 30 days from the date of service of the motion
for summary judgment; that the time for filing a Rule 56(f) motion will
not be extended; that if no Rule 56(f) motion 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; that,
if such a motion for an extension is denied, the time for responding to
the motion for summary judgment will remain as specified in the
section; that a reply brief, if filed, shall be filed within 30
[[Page 30807]]
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. With two exceptions,
these proposed provisions parallel certain of the provisions of
Sec. 2.127(a), as proposed to be amended. The first exception is the
provision relating to a Rule 56(f) motion. No parallel provision is
proposed to be included in Sec. 2.127(a) because a Rule 56(f) motion
may be filed only in response to a motion for summary judgment, and
Sec. 2.127(a) contains provisions relating to the filing of motions in
general. The second exception is the length of time proposed to be
allowed for filing a brief in response to a motion for summary
judgment, and for filing a reply brief. These proposed times are 60
days and 30 days, respectively. In the case of other types of motions,
the times proposed in Sec. 2.127(a) are 30 days and 15 days. The
additional time is proposed to be allowed in the case of summary
judgment motions because the gathering of evidence to respond to such a
motion, or to support a reply brief, is time-consuming, and because the
summary judgment motion is potentially dispositive in nature. It is
believed that 60 days is a sufficient time to respond to a motion for
summary judgment, and that this enlargement of the response time,
coupled with the requirement that extension requests be made with
consent or show extraordinary circumstances, and the accompanying
provision leaving the time for responding to the summary judgment
motion unchanged if a motion to extend is denied, will reduce the
number of extension requests filed, and expedite the disposition of
proceedings.
Corrections of Cross-References
Sections 2.101(d)(1), 2.111(c)(1), 2.122(d)(1) and 3.41, as now
written, all contain cross-references to subsections of Sec. 2.6.
Subsections of Sec. 2.6 were renumbered by a notice of final rulemaking
published in the Federal Register on December 24, 1991, at 56 FR 66670
(amended at 57 FR 38196, August 21, 1992) and in the Official Gazette
on December 24, 1991, at 1133 TMOG 61 (amended at 1141 TMOG 40, August
18, 1992). Accordingly, these sections are proposed to be amended to
correct the cross-references to subsections of Sec. 2.6.
Section 2.111(b) is proposed to be amended to correct cross-
references to subsections of Section 14 of the Trademark Act, 15 U.S.C.
1064. The subsections were renumbered by the Trademark Law Revision Act
of 1988 (Title 1 of Pub. L. 100-667, 102 Stat. 3935 (15 U.S.C. 1051)).
Section 2.119(d), which governs the appointment of domestic
representatives by foreign parties involved in inter partes proceedings
before the Board, 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 paragraph (b) or (c) of Sec. 10.14
and authorized under Sec. 2.17(b).'' The section is proposed to be
amended to delete the reference to domestic representatives who are
qualified under Sec. 10.14(c). As indicated in Sec. 2.119(d), a
domestic representative must be a person ``resident in the United
States.'' Persons who are qualified under Sec. 10.14(c) are not
residents of the United States and therefore cannot be domestic
representatives.
Section 2.134(a) is proposed to be amended to correct the cross-
reference to Section 7(d) of the Act of 1946. That section of the Act
was renumbered as ``7(e)'' by the Trademark Law Revision Act of 1988.
Other Proposed Amendments
Section 2.76(a) now provides, in pertinent part, that an
application under Sec. 1(b) of the Act (i.e., an intent-to-use
application) may be amended to allege use of the mark in commerce under
Sec. 1(c) 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 period after issuance of a final action;
and that thereafter, an allegation of use may be submitted only as a
statement of use after issuance of a notice of allowance. The section
is proposed to be amended to eliminate the time limit for filing an
amendment to allege use after issuance of a final action.
The purpose of the time limit for filing an amendment to allege use
after issuance of a final action was to avoid the submission of
extraneous papers which would disrupt the appeal process. However, the
time limit had a detrimental effect not foreseen by the PTO. In many
instances, where an intent-to-use application was on appeal from a
final refusal on the ground of mere descriptiveness, for example, and
no acceptable amendment to allege use had yet been filed, the owner of
the application would seek, after the expiration of the six-month
period following issuance of the final refusal, to overcome the refusal
to register by amending its application to the Supplemental Register.
However, an intent-to-use application cannot be amended to the
Supplemental Register until an acceptable amendment to allege use or a
statement of use has been filed. See 37 CFR Sec. 2.75(b). Thus,
although an amendment to the Supplemental Register might have obviated
the refusal of registration, such an amendment could not be approved
because the intent-to-use applicant was prohibited by the time limit of
Sec. 2.76(a) from contemporaneously filing an amendment to allege use.
In order to remedy the situation, the Assistant Commissioner for
Trademarks, by notice published in the Official Gazette, waived the
portion of Sec. 2.76(a) which prohibited the filing of an amendment to
allege use more than six months after issuance of a final refusal. See
``Waiver of Trademark Rule 2.76(a),'' 1156 TMOG 12 (November 2, 1993).
The proposed rule change merely incorporates in the rule the more
liberal practice set forth in the Official Gazette notice.
Similarly, Sec. 2.76(g), which concerns the correction of an
amendment to allege use which does not meet the minimum requirements
for such an amendment, and Sec. 2.76(h), which concerns withdrawal of
an amendment to allege use, are proposed to be amended to delete the
``expiration of the six-month response period after issuance of a final
action'' time limit.
Section 2.85(e) specifies the consequences for the payment of an
insufficient fee, with respect to an application or registration having
multiple classes, for certain types of filings, including a petition
for cancellation. The section is proposed to be amended to delete the
reference to an insufficient fee for a petition for cancellation,
because this situation is covered, in greater detail, by
Sec. 2.111(c)(1). Further, in view of this proposed amendment,
Sec. 2.111(c)(1) is proposed to be amended to delete the cross-
reference to Sec. 2.85(e).
Section 2.87(c), which now provides, in pertinent part, that a
request to divide an application may be filed during an opposition,
upon motion granted by the Board, is proposed to be amended to also
specify that a request to divide may be filed during a concurrent use
or an interference proceeding, upon motion granted by the Board. The
proposed change corrects an oversight in the rule and codifies current
Office practice.
Section 2.102(d) now provides that a party filing a request for an
extension of time to oppose must submit an original plus two copies.
The section is proposed to be amended to eliminate the requirement for
the filing of the
[[Page 30808]]
``original'' and two copies, and substitute a requirement that the
request be submitted in triplicate. The Board has no need for an
original, and the proposed change codifies current Office practice.
Section 2.117(a), as now written, provides that, when parties to a
case pending before the Board 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 section is
proposed to be amended to codify the Board's current policy of
suspending proceedings whenever either or both of the parties are
involved in a civil action or Board proceeding which may have a bearing
on the proceeding.
Section 2.117(b) now provides that when there is pending, at the
time when the question of 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
proposed to be amended to clarify that the Board may decide the
potentially dispositive motion before the question of suspension is
considered, regardless of the order in which they were raised. The
proposed change codifies current Office practice.
Section 2.120(g)(1), which governs the imposition of sanctions when
a party fails to comply with an order of the Board relating to
discovery, now includes the phrase ``the Board does not have authority
to hold any person in contempt or to award any expenses to any party.''
The phrase is proposed to be amended to read ``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
Sec. 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 notice of final rulemaking 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. In view thereof, and in order to
harmonize Sec. 2.120(g)(1) with Sec. 1.616, Sec. 2.120(g)(1) is
proposed to be 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 person in contempt, or to award attorneys'
fees or other expenses to any party,'' is proposed to be amended in the
same manner.
Section 2.121(d), which now requires that a stipulation or
consented motion for the rescheduling of testimony periods or of the
closing date for discovery be submitted in one original and as many
photocopies as there are parties, is proposed to be amended to
eliminate the requirement that parties file the ``original'' as well as
copies of stipulations and consented motions. Instead, the proposed
rule requires that the stipulation or consented motion be submitted in
a number of copies equal to the number of parties to the proceeding
plus one copy for the Board. The Board has no need for an original, and
the proposed change codifies current Office practice.
Section 2.122(b)(1), which now provides, in pertinent part, that
the file of each application or registration specified in ``a
declaration of interference'' forms part of the record of the
proceeding without any action by the parties, is proposed to be 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 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 2.123(b) now provides, in pertinent part, that by agreement
of the parties, the testimony of any witness may be submitted in the
form of an affidavit by that witness, and that the parties may
stipulate what a particular witness would testify to if called, or may
stipulate the facts in the case. The section is proposed to be amended
to clarify that such agreement or stipulation must be in writing.
Section 2.123(f) 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. This section is proposed to be 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. The proposed amendment makes it clear
that once the officer has certified the deposition, sealed the evidence
in an envelope or package, and inscribed thereon a certificate giving
the number and title of the case, the name of each witness, and the
date of sealing, either the officer or the party taking the deposition,
or its attorney or other authorized representative, may file the
deposition. That is, if the officer sends the envelope or package 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.
Concomitant with this proposed amendment, the title of
[[Page 30809]]
Sec. 2.123(f), which now reads ``Certification and filing by officer,''
is proposed to be amended to read ``Certification and filing of
deposition.''
Section 2.123(f) is proposed to be further amended to eliminate the
present requirement that the material be forwarded to the Commissioner
of Patents and Trademarks ``without delay.'' The proposed amendment
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 proposed 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.
Similarly, Sec. 2.125(c), which now provides that certified
transcripts of testimony depositions, and exhibits thereto, are to be
filed promptly with the Board, is proposed to be amended to delete the
requirement for prompt filing with the Board. The proposed amendment
conforms the section to current Board practice.
Section 2.127(f) now provides, in part, that the Board ``does not
have authority'' to hold any person in contempt, or to award attorneys'
fees or other expenses to any party. The rule is proposed to be amended
to provide instead that the Board ``will not'' hold any person in
contempt, or award attorneys' fees or other expenses to any party. This
proposed provision corresponds to a similar provision in
Sec. 2.120(g)(1), as proposed to be amended, and is explained in more
detail in our discussion of Sec. 2.120(g)(1) above, under this same
heading.
Section 2.146(e)(1), as now written, provides for the filing of a
petition to the Commissioner from the denial of a request for an
extension of time to file a notice of opposition. This section is
proposed to be amended to provide also that an applicant may petition
the Commissioner from a decision granting such a request. The proposed
amendment codifies current practice and clarifies the rule.
Discussion of Specific Rules
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 proposed to be amended to delete the phrase
``or the date of expiration of the six-month response period after
issuance of a final action.'' The proposed amendment reflects current
practice, as stated in ``Waiver of Trademark Rule 2.76(a),'' 1156 TMOG
12 (November 2, 1993).
Section 2.76(g) provides, in relevant part, that if an amendment to
allege use does not meet the minimum requirements specified in
Sec. 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; and 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 proposed to be 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.'' The proposed
amendment reflects current practice.
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 proposed to be amended to delete the phrase ``or
expiration of the six-month response period after issuance of a final
action.'' The proposed amendment reflects 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 proposed to be 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), which specifies 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,'' is proposed
to be amended to insert, after the words ``during an opposition,'' the
additional words ``or concurrent use or interference proceeding.'' The
proposed amendment codifies current practice and corrects an oversight
in the rule.
Section 2.101(d)(1), which now includes a cross-reference to
``Sec. 2.6(1),'' is proposed to be 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 proposed to be amended to
delete the words ``(original plus two copies).'' The proposed amendment
eliminates the requirement to file ``original'' extension of time
requests. 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 proposed to be amended to correct the
cross-reference to ``section 14(3) or (5)''. The subsections of Section
14 of the Act were renumbered by the Trademark Law Revision Act of
1988.
Section 2.111(c)(1), which now includes a cross-reference to
``Sec. Sec. 2.6(1) and 2.85(e),'' is proposed to be amended to correct
the first cross-reference to Sec. 2.6(a)(16) and to delete the cross-
reference to Sec. 2.85(e).
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
section is proposed to be amended to insert the words ``a party or''
before the word ``parties,'' insert the words ``or a Board proceeding''
after the first appearance of the words ``civil action,'' and
substitute the words ``have a bearing on'' for the words ``be
dispositive of.'' The proposed amendments clarify the rule and codify
current practice.
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 proposed to be amended to read ``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.'' The proposed
amendment clarifies the rule and codifies current practice.
[[Page 30810]]
Section 2.119(d) 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(c) and authorized under Sec. 2.17(b). The section is
proposed to be amended to delete the reference to Sec. 10.14(c). That
section refers to nonresidents, who cannot be domestic representatives.
The proposed amendment corrects an inadvertent error in the rule.
Section 2.120(a) now provides 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 Sec. 2.120; 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 proposed to be amended to (1) preface the
first sentence with the qualifying words ``Wherever appropriate, the'';
(2) include a new sentence stating that 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;
(3) state that the Board will specify the opening (as well as the
closing) date for the taking of discovery; (4) delete the provision
that the opening of discovery is governed by the Federal Rules of Civil
Procedure; (5) specify that the discovery period will be set for a
period of 180 days; (6) provide that interrogatories, requests for
production of documents and things, and requests for admission must be
served in sufficient time that responses will fall due prior to the
close of the discovery period, and that discovery depositions must be
noticed and taken prior to the close of the discovery period; (7)
specify that extensions of the discovery period will be granted only
upon stipulation of the parties approved by the Board, and that the
parties may stipulate to a shortening of the discovery period; (8)
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; (9)
specify that the time to respond may be extended upon stipulation of
the parties, or upon motion showing extraordinary circumstances
approved by the Board; and (10) 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, and that the discovery period will be rescheduled only upon
stipulation of the parties approved by the Board, and 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.
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 pursuant to Rule 33 of the Federal Rules of Civil Procedure, 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; and that
a motion for leave to file additional interrogatories must be filed and
granted prior to the service of the proposed additional
interrogatories, and must be accompanied by a copy of the
interrogatories, if any, which have already been served by the moving
party, and by a copy of the interrogatories proposed to be served. The
section is 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. However, the provision allowing additional
interrogatories upon stipulation of the parties is proposed to be
retained.
Section 2.120(d)(2), which now includes only a provision concerning
the place for production of documents and things, is proposed to be
amended to limit the number of requests for production of documents and
things which a party may serve upon another party, in a proceeding, to
15, counting subparts. Specifically, the section is proposed to be
amended to include new sentences providing that the total number of
requests for production of documents and things which a party may serve
upon another party pursuant to Rule 34 of the Federal Rules of Civil
Procedure, in a proceeding, shall not exceed 15, counting subparts,
except upon stipulation of the parties; that if a party upon which
requests for production of documents and things 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 compel discovery, the
motion must be accompanied by a copy of the set(s) of requests which
together are said to exceed the limitation, and must otherwise comply
with the requirements of Sec. 2.120(e). These proposed provisions
parallel 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.
Section 2.120(e), which governs motions to compel discovery, is
proposed to be amended by redesignating the present paragraph as
(e)(1), and amending 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. In addition, Sec. 2.120(e) is proposed to
be amended to include a new paragraph, designated (e)(2), specifying
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. The proposed new paragraph also provides 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.
Section 2.120(g)(1), which now states, in pertinent part, that
``the Board does not have authority to hold any person in contempt or
to award any expenses to any party,'' is proposed to be amended to
state that ``the Board will not hold any person in contempt or award
any expenses to any party.''
Section 2.120(h), which concerns requests for admission, is
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
[[Page 30811]]
by that party for an admission shall * * *,'' to read ``The motion
shall * * *.'' The section is 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
provides 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 parallel 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) is proposed to be amended to add
another new paragraph, designated (h)(3), which 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 proposed new paragraph provides 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 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 provisions of proposed new Sec. 2.120(h)(3) parallel
the provisions of proposed new Sec. 2.120(e) and Sec. 2.127(d), as
proposed to be amended.
Section 2.121(a)(1) is proposed to be amended by revising the third
sentence, which now provides 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,'' 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.'' The sentence is proposed to be
further amended to specify that ``if such a motion is denied, the
testimony periods will remain as set.'' In addition, the last sentence
of the section, which now reads ``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,'' is proposed to be deleted. The sentence is proposed to be
added to Sec. 2.120(a), with the latter part of the sentence being
modified to read ``the discovery period will be rescheduled only upon
stipulation of the parties approved by the Board, and 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 proposed modification is consistent with the third
sentence of Sec. 2.121(a)(1), as proposed to be amended.
Section 2.121(c), which governs the length of the testimony
periods, is 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. In addition, the last sentence of the section,
which now provides that 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,'' is 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 sentence is proposed to be further amended to specify that ``if
such a motion is denied, the testimony periods will remain as set.''
The proposed amendments to this sentence parallel the proposed
amendment to the third sentence of Sec. 2.121(a)(1).
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 proposed to be 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.''
Section 2.122(b)(1), which 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, is proposed to be amended by substituting the
word ``notice'' for the word ``declaration.''
Section 2.122(d)(1), which now includes a cross-reference to
``Sec. 2.6(n),'' is proposed to be amended to correct the cross-
reference to ``Sec. 2.6(b)(4).''
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 proposed to be 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 proposed to be
amended by inserting the words ``in writing'' after the word
``stipulate'' and after the word ``stipulated.''
Section 2.123(f) pertains to the certification and filing of a
deposition by the officer before whom the deposition was taken. 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 proposed to be 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
[[Page 30812]]
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
proposed to be 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
proposed amendments to the third and fourth sentences, the title of the
section, which now reads ``Certification and filing by officer,'' is
proposed to be amended to read ``Certification and filing of
deposition.''
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 proposed to be amended to delete the word
``promptly.''
Section 2.127(a), which governs the filing of briefs on motions, is
proposed to be amended to (1) enlarge the time for filing a brief in
response to a motion from 15 days to 30 days, and preface the time
provision with the phrase ``Except as provided in paragraph (e)(1) of
this section, a''; (2) delete, from the second sentence, a provision
for extension of this time 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,'' with the added provision that,
``if such a motion for an extension is denied, the time for responding
to the motion remains as specified under this section''; (3) add a new
provision to specify 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, and preface this new provision with the phrase ``Except as
provided in paragraph (e)(1) of this section, a''; (4) 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; (5) 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; (6) 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 (7) 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.
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
thereof, is proposed to be amended to change the specification of the
time period for requesting reconsideration or modification from
``thirty days'' to ``one month.''
Section 2.127(d) 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 proposed to be amended to add to
the end of the sentence the phrase ``except as otherwise specified in
the Board's suspension order.'' The section is proposed to be further
amended to add, immediately after the first sentence, a new sentence
providing that filing 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.
Section 2.127(e)(1), which governs the time for filing a motion for
summary judgment, is proposed to be 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. In addition, the section is proposed to be amended to add
to the end thereof 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; (2) the time for filing
a motion under Rule 56(f) will not be extended; (3) 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 and that, if such a motion for an
extension is denied, the time for responding to the motion for summary
judgment remains as specified under this section; (4) a reply brief, if
filed, shall be filed within 30 days from the date of service of the
brief in response to the motion; (5) the time for filing a reply brief
will not be extended; and (6) no further papers in support of or in
opposition to a motion for summary judgment will be considered by the
Board.
Section 2.127(f), which now states that ``The Board does not have
authority to hold any person in contempt, or to award attorneys' fees
or other expenses to any party,'' is proposed to be amended to state
instead that ``The Board will not hold any person in contempt, or award
attorneys'' fees or other expenses to any party.''
Section 2.134(a), which now includes a cross-reference to ``section
7(d)'' of the Act of 1946, is proposed to be 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 proposed to be amended to provide
also for filing a petition from the grant of such a request.
Specifically, the first sentence of the section now provides that a
petition from the 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 denial of the request and shall be served on the
attorney or other authorized representative of the applicant, if any,
or on the applicant. The sentence is proposed to be 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 proposed to be 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 * * *.''
Section 3.41, which now includes a cross-reference to
``Sec. 2.6(q),'' is proposed to be amended to correct the cross-
reference to ``Sec. 2.6(b)(6).''
[[Page 30813]]
Environmental, Energy, and Other Considerations
The proposed 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 proposed 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 proposed 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 proposed rule changes have no
Federalism implications affecting the relationship between the National
Government and the States as outlined in Executive Order 12612.
This rule involves the Petition to Cancel requirement which has not
been previously approved by the OMB under the PRA. A request to collect
this information has been submitted to OMB for review and approval. The
reporting burden for this collection of information is estimated to be
20 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.
Comments are invited on: (a) whether the collection of information is
necessary for proper performance of the functions of the agency; (b)
the accuracy of the agency's estimate of the burden; (c) ways to
enhance the quality, utility, and clarity of the information to be
collected; and (d) ways to minimize the burden of the collection of
information to respondents. 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 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,
Washington, DC 20503 (Attention: PTO Desk Officer).
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 Office of Management and Budget (OMB) control number.
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 and pursuant to the authority
contained in Sec. 41 of the Trademark Act of July 5, 1946, as amended,
the Patent and Trademark Office proposes to amend Part 2 and Part 3 of
Title 37 of the Code of Federal Regulations by amending or revising
Secs. 2.76, 2.85, 2.87, 2.101, 2.102, 2.111, 2.117, 2.119, 2.120,
2.121, 2.122, 2.123, 2.125, 2.127, 2.134, 2.146 and 3.41, as set forth
below. Additions are indicated by arrows and deletions by brackets.
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.
1a. Section 2.76 is proposed to be 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 [or the date of expiration of the
six-month response period after issuance of a final action].
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 [or the six-month response period after
issuance of a final action has not expired]. If an acceptable amendment
to correct the deficiency is not filed prior to approval of the mark
for publication [or prior to the expiration of the six-month response
period after issuance of a final action], 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 [or expiration of the six-
month response period after issuance of a final action].
2. Section 2.85 is proposed to be 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 [or in
connection with a petition for cancellation] 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 [or petition for
cancellation] 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.
* * * * *
3. Section 2.87 is proposed to be 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 the date of
expiration of the six-month response period after issuance of a final
action; or during an opposition >or concurrent use or interference
proceeding<, upon motion granted by the Trademark Trial and Appeal
Board.
[[Page 30814]]
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 or the
date of expiration of the six-month response period after issuance of a
final action.
* * * * *
4. Section 2.101 is proposed to be 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)< [2.6(1)]. 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.
* * * * *
5. Section 2.102 is proposed to be 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 [(original plus two
copies)].
6. Section 2.111 is proposed to be 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)< [(c)] or >(5)< [(e)] 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
Sec. [Sec. ] >2.6(a)(16)< [2.6(1) and 2.85(e)]). 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 fee(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.
* * * * *
7. Section 2.117 is proposed to be 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 a Board proceeding< which may >have a
bearing on< [be dispositive of] the case, proceedings before the Board
may be suspended until termination of the civil action.
(b) Whenever there is pending >before the Board both a motion to
suspend and< [, at the time when the question of the suspension of
proceedings is raised,] 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<.
* * * * *
8. Section 2.119 is proposed to be amended by revising paragraph
(d) to read as follows:
2.119 Service and signing of papers.
* * * * *
(d) If a party to an inter partes proceeding is not domiciled in
the 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 [paragraph (b) or (c) of] Sec. 10.14>(b)< and
authorized under Sec. 2.17(b).
* * * * *
9. Section 2.120 is proposed to be amended by redesignating current
paragraphs (e) and (h) as (e)(1) and (h)(2), respectively; adding new
paragraphs (e)(2), (h)(1), and (h)(3); and revising paragraphs (a),
(d), and (g)(1) and redesignated paragraphs (e)(1) and (h)(2) to read
as follows:
Sec. 2.120 Discovery.
(a) In general. >Wherever appropriate, the< [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 date>s for< the taking of
discovery. >The discovery period will be set for a period of 180 days.
Interrogatories, requests for production of documents and things, and
requests for admission must be served in sufficient time that responses
will fall due prior to the close of the discovery period. Discovery
depositions must be noticed and taken prior to the close of the
discovery period. Extensions of the discovery period will be granted
only upon stipulation of the parties approved by the Board. The parties
may stipulate to a shortening of the discovery period. 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. The
[[Page 30815]]
time to respond may be extended upon stipulation of the parties, or
upon motion showing extraordinary circumstances granted by 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; the discovery period will be
rescheduled only upon stipulation of the parties approved by the Board,
and 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 opening of discovery is
governed by the Federal Rules of Civil Procedure.]
* * * * *
(d) Interrogatories; request for production. (1) The total number
of written interrogatories which a party may serve upon another party
pursuant to Rule 33 of the Federal Rules of Civil Procedure, in a
proceeding, shall not exceed >25< [seventy-five], counting subparts,
except [that the Trademark Trial and Appeal Board, in its discretion,
may allow additional interrogatories upon motion therefor showing good
cause, or] upon stipulation of the parties. [A motion for leave to
serve additional interrogatories must be filed and granted prior to the
service of the proposed additional interrogatories; and must be
accompanied by a copy of the interrogatories, if any, which have
already been served by the moving party, and by a copy of the
interrogatories proposed to be served.] If a party upon which
interrogatories have been served believes that the number of
interrogatories served exceed>s< the limitation specified in this
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 interrogatories, serve a general objection
on the ground of their excessive number. If the inquiring party, in
turn, files a motion to compel discovery, the motion must be
accompanied by a copy of the set(s) of interrogatories which together
are said to exceed the limitation, and must otherwise comply with the
requirements of paragraph (e) of this section.
(2) >The total number of requests for production of documents and
things which a party may serve upon another party pursuant to Rule 34
of the Federal Rules of Civil Procedure, in a proceeding, shall not
exceed 15, counting subparts, except upon stipulation of the parties.
If a party upon which requests for production of documents and things
have been served believes that the number of requests served exceeds
the limitation specified in this 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. If
the inquiring party, in turn, files a motion to compel discovery, the
motion must be accompanied by a copy of the set(s) of requests which
together are said to exceed the limitation, and must otherwise comply
with the requirements of paragraph (e) of this section.< The production
of documents and things under the provisions of Rule 34 of the Federal
Rules of Civil Procedure will be made at the place where the documents
and things are usually kept, or where the parties agree, or where and
in the manner which the Trademark Trial and Appeal Board, upon motion,
orders.
(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 within 30 days after the close of
the discovery 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 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 [does not have authority to]
>will not< hold any person in contempt or [to] 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) Request>s< for admission[s]. >(1)< [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 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. If a party upon which requests for
admission have been served believes that the number of requests served
exceeds the limitation specified in this 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. 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
[[Page 30816]]
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 this section.
(2) Any < [A] 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. 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.
>(3) 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 party to respond to any
outstanding discovery requests or to appear for any noticed discovery
deposition.<
* * * * *
10. Section 2.121 is proposed to be 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 >showing
extraordinary circumstances< granted by the Board; >if such a motion is
denied, the testimony periods will remain as set< [, or by order of the
Board]. The resetting of the closing date for discovery will result in
the rescheduling of the testimony periods without action by any party.
[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.]
* * * * *
(c) A testimony period which is solely for rebuttal will be set for
>30< [fifteen] days. All other testimony periods will be set for >60<
[thirty] days. 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; >if
such a motion is denied, the testimony periods will remain as set< [,
or by order of the Board].
(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< [in
one original plus as many photocopies as there are parties], will, if
approved, be so stamped, signed, and dated, and >a copy< [the copies]
will be promptly returned to >each of< the parties.
11. Section 2.122 is proposed to be amended by revising paragraphs
(b)(1) and (d)(1) 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< [declaration] 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 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)<
[Sec. 2.6(n)].
* * * * *
12. Section 2.123 is proposed to be 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< [by officer]. The
officer shall annex to the deposition his certificate showing:
(1) Due administration of the oath by the officer to the witness
before the commencement of his deposition;
(2) 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;
(3) The presence or absence of the adverse party;
(4) The place, day, and hour of commencing and taking the
deposition;
(5) The fact that the officer was not disqualified as specified in
Rule 28 of the Federal Rules of Civil Procedure.
If any of the foregoing requirements 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 [, 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>. 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
[[Page 30817]]
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.
* * * * *
13. Section 2.125 is proposed to be 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 [promptly]
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.
* * * * *
14. Section 2.127 is proposed to be 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< [A]
brief in response to a motion shall be filed within >30< [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 upon motion
showing extraordinary circumstances granted by the Board; if such a
motion for an extension is denied, the time for responding to the
motion remains as specified under this section< [order of the Board on
motion for good cause]. >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< [thirty
days] from the date thereof. A brief in response must be filed within
>15< [fifteen] 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. 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<. 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 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; if such a
motion for an extension is denied, the time for responding to the
motion for summary judgment remains as specified under this section. A
reply brief, if filed, shall be filed within 30 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 [does not have authority to] >will not< hold any
person in contempt, or [to] award attorneys' fees or other expenses to
any party.
15. Section 2.134 is proposed to be 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)< [7(d)] 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.
* * * * *
16. Section 2.146 is proposed to be 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< [and] 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--ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE
17. The authority citation for part 3 continues to read as follows:
Authority: 15 U.S.C. 1123; 35 U.S.C. 6.
17a. Section 3.41 is proposed to be revised to read as follows:
[[Page 30818]]
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)< [Sec. 2.6(q)] of this
chapter for trademarks.
Dated: May 30, 1997.
Bruce A. Lehman,
Assistant Secretary of Commerce and Commissioner of Patents and
Trademarks.
[FR Doc. 97-14711 Filed 6-4-97; 8:45 am]
BILLING CODE 3510-16-P