[Federal Register Volume 63, Number 174 (Wednesday, September 9, 1998)]
[Rules and Regulations]
[Pages 48081-48100]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 98-23680]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 2 and 3
[Docket No. 970428100-8199-03]
RIN 0651-AA87
iscellaneous Changes to Trademark Trial and Appeal Board Rules
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Final rule.
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[[Page 48082]]
SUMMARY: The Patent and Trademark Office (PTO) is amending the rules
governing practice before the Trademark Trial and Appeal Board (Board).
The amendments provide for the opening and the length of the discovery
period; specify that the automatic disclosure provisions of the Federal
Rules of Civil Procedure do not apply to Board proceedings; state that
the Board will not hold any person in contempt or award any expenses to
any party; specify requirements for briefs on motions; enlarge the time
for filing a response to a motion for summary judgment; specify the
time for filing motions under Rule 56(f) of the Federal Rules of Civil
Procedure (motions for discovery to enable parties to respond to
motions for summary judgment); and specify the time for filing motions
to compel and motions to test the sufficiency of an answer or objection
to a request for admission. In addition, the amendments clarify the
rules, conform the rules to current practice, simplify practice, and
correct cross-references.
DATES: Effective Date: These rule amendments will be effective October
9, 1998.
Applicability Dates: Two of the provisions of amended Sec. 2.120(a)
(the provisions that the Board will specify the opening date for
discovery and that the discovery period will be set for a period of 180
days), will not apply in cases in which a trial order has been issued
by the Board prior to October 9, 1998. The provision of amended
Sec. 2.120(e)(1) that a motion to compel must be filed prior to the
commencement of the first testimony period, as originally set or as
reset, will apply only in those cases in which trial dates, beginning
with the closing date for the discovery period, are set or reset on or
after October 9, 1998. Similarly, the provision of amended
Sec. 2.120(h)(1) that a motion to determine the sufficiency of an
answer or objection to a request for admission must be filed prior to
the commencement of the first testimony period, as originally set or as
reset, will apply only in those cases in which trial dates, beginning
with the closing date for the discovery period, are set or reset on or
after October 9, 1998.
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: A Notice of Proposed Rulemaking was
published in the Federal Register (62 FR 30802) on June 5, 1997, and in
the Official Gazette of the Patent and Trademark Office (1199 TMOG 88)
on June 24, 1997. The purpose of the proposed rule amendments was to
improve practice and expedite proceedings in inter partes cases before
the Board, codify and clarify certain practices of the Board, and
correct certain cross-references to citations of the Trademark Act of
1946 and the Code of Federal Regulations.
In response to a request for written comments, thirty-four written
comments were received. Many of the comments suggested that a public
hearing be scheduled. As a result, the PTO gave notice in the November
4, 1997 Federal Register (62 FR 59640), and in the November 25, 1997
Official Gazette (1204 TMOG 88), of a public hearing on the proposed
rules, and reopened the comment period. At the same time, the PTO
announced that it was withdrawing two of the rule amendments proposed
in the June 5, 1997 Notice of Proposed Rulemaking. Those withdrawn
amendments were to Secs. 2.120(d)(2) and 2.120(h) to limit the number
of requests for production of documents and requests for admission,
respectively, which may be served in an inter partes proceeding before
the Board.
At the public hearing, held on December 17, 1997, seven witnesses
testified. The written and oral comments represent the views of 29
individuals and law firms and five trademark law associations, namely,
the Intellectual Property Law Section of the American Bar Association,
the American Intellectual Property Law Association, the Intellectual
Property Law Section of The District of Columbia Bar, the New York
Intellectual Property LawAssociation, and the International Trademark
Association. A number of rule amendments suggested in the written and
oral comments, though meritorious, cannot be adopted at this time
because they are outside the scope of the present rulemaking. Some of
these suggestions are discussed below; others, particularly suggestions
not directed specifically to one of the proposed rule amendments, are
not.
Background to Rule Amendments
In recent years there has been a rapid growth in the number of new
proceedings filed with the Board, coupled with a marked increase in the
number of motions and other papers filed in each inter partes case. As
a result, the Board's workload has increased dramatically. Many of the
inter partes rule amendments proposed in the Notice of Proposed
Rulemaking were specifically designed to help reduce the Board's
backlog of pending motions and cases ready for final decision, stem
perceived abuses of the rules, and promote expeditious prosecution and
defense of cases. These proposed amendments involved substantial
changes in Board inter partes practice. For example, amendments were
proposed to (1) lengthen the discovery and trial periods, as well as
the time for responding to motions and requests for discovery; (2)
concomitantly limit the situations in which extensions of these times
would be granted; (3) limit the number of requests for production of
documents and things and requests for admission which one party could
serve upon another in a proceeding; (4) further limit the number of
interrogatories which one party could serve upon another; (5) 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 (6) specify
that the filing of a summary judgment motion would not toll the time
for the moving party to respond to outstanding discovery requests but
would toll the time for the nonmoving party to do so.
A significant number of the individuals and organizations which
offered written or oral comments on the proposed rules strongly
objected to these substantial changes. Accordingly, the PTO is not
going forward with them at this time. Instead, the PTO is going forward
only with those proposed rule amendments which involve modest changes
in Board practice, or which serve to clarify the rules, codify current
practice, or correct cross-references in the rules. The Board is
considering other measures to deal with its increased workload,
including a pilot program to make greater use of telephone conferences
in determining pending interlocutory matters and motions. However, the
PTO will continue to monitor carefully the problems which gave rise to
the Notice of Proposed Rulemaking, and may propose and adopt additional
changes in the rules governing Board inter partes practice if
necessary.
Discussion of Specific Rules and Response to Comments
The comments, if any, on a specific rule and the response to the
comments are provided with the discussion of the specific rule.
Comments in support of
[[Page 48083]]
proposed rule changes generally have not been reported.
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 amended to delete the phrase ``or the date of
expiration of the six-month response period after issuance of a final
action.'' Under the amended rule, an amendment to allege use may be
filed more than six months after the issuance of a final action, as a
result of which the amendment may be filed during the pendency of an
appeal. This brings the rule into conformity with current practice, as
stated in ``Waiver of Trademark Rule 2.76(a),'' 1156 TMOG 12 (November
2, 1993).
Section 2.76(g) now provides, in relevant part, that if an
amendment to allege use does not meet the minimum requirements
specified in ( 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.'' It also
provides 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 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.'' This
amendment codifies current practice, which allows a deficiency in an
amendment to allege use to be corrected subsequent to the six-month
response period after issuance of a final action.
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 amended to delete the phrase ``or expiration of the
six-month response period after issuance of a final action.'' As a
result of the rule amendment, an amendment to allege use may be
withdrawn during the pendency of an appeal. This amendment, too,
codifies 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 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) now provides 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.'' The section
is amended to provide also that a request to divide an application may
be filed during a concurrent use or interference proceeding. The
amendment codifies current practice and corrects an oversight in the
rule.
Section 2.87(c) also now provides that 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.'' Similarly, this
section now provides that a request to divide an application under
section 1(b) of the Act may be filed with a statement of use 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.'' The section is amended to delete the phrase ``or the
date of expiration of the six-month response period after issuance of a
final action'' from the two places where it occurs in this section.
Under the amended rule, a request to divide may be filed more than six
months after the issuance of a final action, as a result of which the
request to divide may be filed during the pendency of an appeal. While
this amendment was not included in the notice of proposed rulemaking,
it corresponds to the amendment to Secs. 2.76(a), (g) and (h),
discussed above, and is advantageous to applicants. With this
amendment, an applicant may divide out from its application those
classes or that portion of the goods or services in a class to which no
final refusal or requirement pertains. The divided out application will
immediately go forward to publication or registration, as appropriate,
and will avoid the delays related to briefing and deciding the issues
involved in the appeal.
Section 2.101(d)(1), which includes a cross-reference to
``Sec. 2.6(1),'' is 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 amended to delete the words
``(original plus two copies)''. While a request must be submitted in
triplicate, 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 amended to correct the cross-reference to
``section 14(3) or (5)''.
Section 2.111(c)(1) now includes a cross-reference to ``Sec. 2.6(1)
and 2.85(e)''. The section is amended to correct the cross-reference
``Sec. 2.6(1)'' to ``Sec. 2.6(a)(16)''. The section is further amended
to delete the cross-reference to Sec. 2.85(e) in view of the amendment
to that section.
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
quoted portion of the section is amended to read ``that a party or
parties to a pending case are engaged in a civil action or another
Board proceeding which may have a bearing on the case, proceedings
before the Board may be suspended until termination of the civil action
or the other Board proceeding.'' The amendment clarifies the rules and
codifies the Board's current practice on suspension of proceedings,
which is that a Board proceeding may be suspended if any of the parties
is engaged in a civil action or another Board proceeding which may have
a bearing on the proceeding.
Comment: One comment suggested that Sec. 2.117(a) conclude with the
phrase ``or the Board proceeding'' to correspond to the previous change
in that section. That comment also suggested that the rule be modified
to allow a third party who has a pending application, or who is a party
in a proceeding which has been suspended pending the outcome of the
pending case, to apprise the Board of the impact of the suspension on
the third party.
Response: The first suggestion has been adopted. The suggested
modification to allow third parties to advise the Board about the
impact on them of a suspension order goes beyond the scope of the
amendment as originally proposed. Moreover, no purpose would be served
by allowing third parties to file such impact statements. The Board
suspends proceedings when a decision in a civil action or another Board
proceeding may
[[Page 48084]]
have a bearing on the issues in the pending case. That effect would not
be altered by any adverse impact which suspension of the proceeding
might have upon a third party.
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 amended to clarify that, when a motion to suspend and a
motion which is potentially dispositive of the case are both pending,
the Board may decide the potentially dispositive motion before the
question of suspension is considered, regardless of the order in which
the motions were filed.
Comment: One comment suggested modifying the rule to provide that
the filing of a potentially dispositive motion automatically suspends
proceedings. The comment notes that the suggested modification would
save the Board the paperwork involved in issuing a suspension order,
and would avoid uncertainty for the parties as to what they should do
until the suspension order is received.
Response: The suggested provision is not properly a part of this
section, which relates to suspension in view of a civil action or
another Board proceeding. Accordingly, the suggestion is discussed in
connection with the amendments to Sec. 2.127, which concerns motion
practice.
Section 2.119(d) now 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
and authorized under Sec. 2.17(b). The section is amended to correct an
inadvertent error in the rule by deleting the reference to
Sec. 10.14(c). That section refers to nonresidents, who cannot be
domestic representatives.
Section 2.120(a) now provides, in pertinent 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
this section.'' The section is amended to preface this provision with
the words ``Wherever appropriate,'' and to specify that the provisions
of the Federal Rules of Civil Procedure relating to 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, do not apply to Board
proceedings. The amendment clarifies the rule, and codifies current
Board practice, as expressed in a notice published in the Official
Gazette in 1994, namely, ``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).
Comments: Two comments suggested that all reliance on the Federal
Rules of Civil Procedure be severed because, according to the comments,
so few of the Federal Rules are still applicable to Board practice.
Response: The PTO believes that this suggestion goes beyond the
scope of the proposed rulemaking. In addition, the PTO is not inclined
to adopt it because the Board follows a substantial number of the
Federal Rules and is guided by court decisions interpreting these
rules. Examples of the Federal Rules followed by the Board include
those governing pleadings, motions to dismiss, amendments of pleadings,
acceptable discovery, summary judgment, and relief from judgment.
Section 2.120(a) also now provides 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 amended to, inter alia, state that the Board will specify
the opening (as well as the closing) date for the taking of discovery;
and delete the provision that the opening of discovery is governed by
the Federal Rules of Civil Procedure.
Under current Board practice, discovery 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, 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
have been unpopular with practitioners. The specified amendments to the
section will simplify the opening of discovery.
Comments: One organization suggested a provision allowing discovery
requests to be served after the filing of a proceeding, with responses
to be due 40 days after the mailing by the Board of the notice of
institution. One attorney disagreed with the proposal that the Board
set the date for the opening of discovery. This attorney asserted that
discovery might be necessary to prepare an answer, and that the later
opening of the discovery period would inhibit parties who wanted to be
diligent in initiating discovery. Another organization agreed with the
proposal that the Board set the opening date for discovery, but
suggested that the trial order be issued with the notice of institution
because discovery might be necessary to properly prepare an answer. One
attorney suggested including a provision in the rules to make it clear,
in those cases where a proceeding was initiated prior to the effective
date of this final rule and was suspended, that the former rules apply
unless the parties to the proceeding are expressly notified otherwise.
Response: The suggestion for a provision allowing discovery
requests to be served after the filing of a proceeding, with responses
to be due 40 days after the mailing of the notice of institution, has
not been adopted. If the suggested provision were adopted, a defendant
could be served with discovery requests before it had even been
notified of the filing of the proceeding, with the result that the
defendant would be surprised and confused. Further, because early
served requests might not bear a proceeding number, they would create
an administrative burden for the Board, which would have to respond to
inquiries regarding the existence, number, and status of the
proceeding.
The suggestion that the trial order, which would set the opening of
[[Page 48085]]
discovery, be sent with the notice of institution of the proceeding has
been adopted. It is believed that a defendant will not be prejudiced if
it does not have the plaintiff's discovery responses prior to the time
it must file its answer, because a defendant may move to amend its
answer based upon information obtained through discovery. With respect
to the suggestion for including in the rules a specific provision
concerning applicability of the amended rules in cases initiated prior
to the final rule and then suspended, it is believed that the
information concerning the effective date of the rule amendments, as
set forth at the beginning of this notice, is sufficient.
Section 2.120(a) is further amended to provide that the discovery
period will be set for a period of 180 days, and that the parties may
stipulate to a shortening of that period.
Comments: Two comments believed that the 180-day discovery period
would unduly lengthen proceedings. Another comment said that the
proposal would shorten the current discovery period and suggested that
the discovery period be 270 days. One comment suggested providing that
the period could be shortened on a showing of good cause, for example,
if the applicant had not yet used its mark, while the parties would
have to justify any enlargement, even one that was stipulated, of the
discovery period. That comment also suggested a provision that
extensions of the discovery period would be denied if a non-party files
a notice that the proceeding is delaying its application.
Response: As indicated above, the PTO has adopted a suggestion that
the trial order setting the opening and closing dates for the discovery
period be mailed with the notice of institution of the proceeding. With
the adoption of this suggestion, the proposed 180-day discovery period
will result in a discovery period that is generally the same as that
under present practice. Under current practice, discovery in essence
opens for the defendant upon the commencement of the proceeding and
opens for the plaintiff upon the Board's service of the complaint and
the notice of institution. Often, the defendant does not know that a
complaint has been filed until it receives this mailing from the Board.
The discovery period currently closes 90 days after the mailing of the
trial order, which is not done until the defendant's answer has been
filed and processed by the Board. The amount of time that currently
elapses between the mailing by the Board of the notice of institution
(with a copy of the complaint for the defendant) and the issuance of a
trial order averages approximately 90 days, with the discovery period
set to close 90 days after the issuance of the trial order. Thus,
setting the discovery period for 180 days in a trial order which forms
part of the institution letter will not, in general, either lengthen or
shorten the current discovery period. The suggestion that the discovery
period be enlarged to 270 days has not been adopted because all other
comments received indicated that a 180-day discovery period was either
acceptable or too long.
The suggestion that the section be amended to provide that one
party may move to shorten the discovery period has not been adopted.
With respect to the example given in the comment, although an opposer
may not need substantial discovery from an applicant who has not yet
made use of its mark, that applicant may need discovery with respect to
the opposer's use. The suggestions for provisions that the parties
would have to justify any extension of the discovery period, and that
an extension of the discovery period would be denied if a non-party
files a notice that the proceeding is delaying his application, are not
adopted. The PTO received numerous comments to the effect that
extensions of the discovery period were useful in facilitating
settlement, and it is the Board's experience that the vast majority of
proceedings are settled prior to trial. Although the Board retains its
inherent right to deny motions for extensions of time, even if the
parties stipulate to the extension, it is believed that it would cause
an undue burden on the parties to require them to justify each
consented extension of time. The suggestion that a non-party have the
right to prevent an extension of the discovery period is beyond the
scope of the proposed rules and cannot be considered.
Section 2.120(a) was proposed to be further amended to 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.
Comments: Five comments disagreed with this proposal. There was
concern that the proposed amendment would increase expenses early in
the proceedings and by so doing have a negative effect on settlement.
It was also suggested that discovery would become more dependent on
depositions, again increasing expenses for the parties. In addition,
there was concern that the proposed amendment would create difficulties
with respect to follow-up discovery, particularly in connection with
requests for admission, which are most useful late in the discovery
process. One organization also said that the proposal might create an
incentive for a mischievous party to wait until the last 30 days of the
discovery period to offer up its most damaging documents so that there
would be no opportunity for follow-up discovery.
One attorney suggested a modification regarding the service of
discovery requests so that, when discovery requests are served by
overnight courier, five additional days would not be added to the time
for responding to such discovery requests, which is the case under
present Sec. 2.119(c). Another attorney suggested that Sec. 2.120(a) be
amended to specify that documents to be served by the parties may be
served by fax, and that facsimile signatures are acceptable for all
purposes.
Response: The proposal to require that interrogatories, requests
for production of documents and things, and requests for admission be
served in sufficient time that responses will fall due prior to the
close of the discovery period is withdrawn. The section is instead
amended to specify that ``discovery depositions must be taken, and
interrogatories, requests for production of documents and things, and
requests for admission must be served, on or before the closing date of
the discovery period as originally set or as reset.'' The amendment
codifies current practice.
The suggestion to amend Sec. 2.119(c) to eliminate the five
additional days to respond to discovery requests when service of the
requests is made by overnight courier goes beyond the scope of the
proposed rules, and therefore cannot be considered. But see the final
rule notice entitled ``Amendment of Trademark Rules Governing Inter
Partes Proceedings, and Miscellaneous Amendments of Other Trademark
Rules,'' published in the Federal Register on August 22, 1989, at 54 FR
34886, 34891-34892, and in the Official Gazette on September 12, 1989,
at 1106 TMOG 26, 31 (rejecting a suggestion to amend Sec. 2.119(c) to
provide for the addition of only one day, rather than five, to the
prescribed time for taking action when service is made by ``Express
Mail'' or overnight courier). The suggestion to allow service of
documents by facsimile is also beyond the scope of the proposed rules.
Section 2.120(a) was proposed to be amended to specify that
extensions of the discovery period will be granted
[[Page 48086]]
only upon stipulation of the parties approved by the Board.
Comments: Thirteen comments, including those of each of the
organizations, disagreed with the proposed amendment. Some of the
comments pointed out that there may be genuine business reasons, such
as holidays in foreign countries, change of management, and the time
required to translate materials and locate documents which may have
been archived decades ago, as to why discovery cannot be completed
within the time set. Several comments said the proposal would lend
itself to abuse, for example, if one side can complete taking discovery
in 180 days but the other cannot; it was also suggested that the
proposed amendment would promote the practice of ambushing opponents
through dilatory conduct and obstreperous tactics. It was also felt
that the elimination of extensions of the discovery period absent
consent would eliminate flexibility, which was considered a principal
advantage of Board proceedings. Most of the comments suggested that the
standard for granting an extension remain good cause. Some of those
commenting were willing to accept a modification of the current good
cause basis for an extension, as long as the basis for extensions was
not limited only to stipulation. For example, two comments suggested
that extensions be allowed upon a showing of extraordinary
circumstances; one attorney suggested that extensions of up to two
months be granted for good cause; and an organization suggested keeping
the good cause standard but specifying that both parties' discovery
obligations would continue while the motion is pending, and that
sanctions would be levied against a party abusing the extension
process.
One attorney also commented that the Board should specify in the
rules, rather than merely indicating in the preamble to the notice of
proposed rulemaking, that the Board may reset the discovery period if
necessary. Another attorney suggested that provision be made for a
party to move for sanctions without first filing a motion to compel to
avoid a situation where a party is deprived of follow-up discovery
because its adversary is recalcitrant. The example given involved a
party which serves discovery promptly, the adversary responds on the
last day permitted with evasive answers and objections, weeks of
correspondence to resolve the issues ensue, followed by a motion to
compel. The attorney suggested that even though the motion to compel is
granted, the moving party would be deprived of an opportunity to take
follow-up discovery.
Response: It is clear that most of those commenting want the
standard for obtaining extensions to remain good cause and that most of
those who suggested a more restricted standard than good cause did so
as an alternative to limiting extensions only to situations involving
consent. In view of the comments, the proposal to amend the section to
provide that extensions of the discovery period will be granted only on
stipulation of the parties is withdrawn. The section is instead amended
to provide that the discovery period may be extended upon stipulation
of the parties approved by the Board, or upon motion granted by the
Board, or by order of the Board.
The amended rule codifies the current practice of allowing
extensions of the discovery period upon motion showing good cause.
However, the Board is mindful of the comments that abuses of the
extension process must be curbed. Therefore, the Board will scrutinize
carefully any such motions and will consider, in determining whether
good cause has been shown, the diligence of the moving party during the
discovery period.
Moreover, the rule is amended to specifically state that, if a
motion for an extension is denied, the discovery period may remain as
set or reset. While the Board has always had the discretion to do this,
the explicit statement of this fact in the rules will alert parties to
the potential consequences if a motion to extend does not show good
cause, and will put them on notice that the Board will not tolerate
abuses of the rules. It is hoped that this will avoid some of the
games-playing mentioned in the comments, in which a party files a
motion for an extension as a strategic move to obtain a delay until the
Board decides the motion, even if the requested extension is denied.
With respect to the suggestion that the rule be amended to
explicitly state that the Board may reset the discovery period if
necessary, it is believed that this is unnecessary, and would, because
such a provision is not present in the other rules regarding the
setting of time periods, lead to confusion. For example, there is no
specific provision that, if a motion to dismiss is filed and the motion
is subsequently denied, the Board will reset the time for the defendant
to file an answer, although it is Board practice to do so.
The suggestion that a party be permitted to move for sanctions
without first filing a motion to compel has not been adopted. The
reason cited as the basis for the suggestion is the need to avoid a
situation where a party is deprived of follow-up discovery because its
adversary is recalcitrant. However, it is the practice of the Board,
when granting a motion to compel in such situations, to reset the
discovery period, at the request of the moving party, so as to restore
(at least for that party) that amount of time which would have remained
in the discovery period had the discovery responses been made in a
timely and proper fashion. See Trademark Trial and Appeal Board Manual
of Procedure ( 403.04 (``TBMP''). Thus, there is no need for the
suggested amendment.
Section 2.120(a) was proposed to be amended to 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, and to specify that the
time to respond may be extended only upon stipulation of the parties or
upon motion showing extraordinary circumstances approved by the Board.
Comments: Two organizations and one attorney believed that 30 days
was a sufficient time to respond to discovery requests, and both the
attorney and one of the organizations thought that the Board's practice
should follow the 30-day time period provided by the Federal Rules of
Civil Procedure. One organization expressed the concern that this
proposal, combined with the proposal to eliminate extensions of the
discovery period absent stipulation of the parties, would put too much
pressure on the parties to serve discovery requests early in the
discovery period, which could have an adverse effect on settlement.
Nine comments disagreed with the proposal to amend the section to
provide that the time to provide responses 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. Several comments expressed the view that
this proposal would eliminate flexibility, which was felt to be a
principal advantage of Board proceedings. There were concerns that the
proposal would favor ITU applicants or those who are discovery-proof;
prejudice the party relying on an old, widely used and promoted mark;
and encourage harassing discovery. The comments also pointed out that
there could be legitimate, but ordinary, business reasons why
extensions might be necessary, such as situations where requests have
to be translated for foreign entities, businesses which close for
[[Page 48087]]
vacation, and small businesses which do not have the resources to
compile answers within 40 days. There was also concern that the
proposal would result in parties giving incomplete responses to meet
the deadline.
Response: The proposal to amend the section to specify that 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 is withdrawn. The section is instead amended to specify
that the time to respond may be extended upon stipulation of the
parties, or upon motion granted by the Board, or by order of the Board.
In view thereof, there is no longer a need to enlarge the period for
providing responses to these requests. Accordingly, the proposal to
enlarge the time to serve responses to 40 days from the date of service
of the discovery requests is also withdrawn, and the section is amended
to specify that discovery responses must be served within 30 days from
the date of service of the discovery requests. The period for
responding will thus remain consistent with that provided under the
Federal Rules of Civil Procedure.
Section 2.120(a) was proposed to be further amended to include
provisions currently found in Sec. 2.121(a)(1), in somewhat different
form. Specifically, the section was proposed to be amended to 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; that the discovery period will
be rescheduled only upon stipulation of the parties approved by the
Board; and that 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 latter
parts of this proposed amendment are withdrawn, for the reasons
discussed above in connection with the withdrawal of the proposal to
allow extensions of the discovery period only upon stipulation of the
parties, and below in connection with the withdrawal of the proposal to
amend Secs. 2.121(a)(1) and 2.121(c) to allow the rescheduling or
extension of testimony periods only upon stipulation of the parties or
a showing of extraordinary circumstances. Only the first portion of the
proposed amendment is included in the amended section.
Thus, the section is amended to specify 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. The new provisions are
the same as those currently found at the end of Sec. 2.121(a)(1). 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 these provisions.
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 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. The
section was 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.
Comments: Twenty comments asserted that limiting the number of
interrogatories that could be served upon a party to 25, counting
subparts, was too restrictive, while thirteen comments stated that
parties should be permitted to file a motion for leave to serve
additional interrogatories. Those commenting believed that 25
interrogatories was not a sufficient amount to obtain necessary
discovery. As a result, it was feared that parties would serve overly
broad interrogatories, which would lead to more motions to compel. The
comments also asserted that the proposed limit would force parties into
taking more depositions, and thus increase the cost of litigating an
inter partes proceeding before the Board. Further, the comments noted
that depositions are generally not a viable alternative when the
adversary is a foreign entity.
Response: The proposed amendments to lower the number of
interrogatories which a party may serve upon another party and to
eliminate the provision for a motion for leave to serve additional
interrogatories are withdrawn.
Section 2.120(d)(2), which now includes only a provision concerning
the place for production of documents and things, was proposed to be
amended to limit the number of requests for production of documents and
things which a party may serve upon another party to 15, counting
subparts, except upon stipulation of the parties.
Comments: For reasons similar to those given in connection with the
objections to lowering the number of interrogatories a party could
serve upon another party in a proceeding, twenty-three comments
disagreed with the proposal to limit to 15 the number of document
production requests that a party could serve.
Response: The proposed amendment has been withdrawn, as set forth
in the notice of hearing and reopening of comment period on the
proposed rules, namely, ``Miscellaneous Changes to Trademark Trial and
Appeal Board Rules,'' 62 FR 59640 (Nov. 4, 1997), 1204 TMOG 88 (Nov.
25, 1997).
Section 2.120(e), which governs motions to compel discovery, was
proposed to be amended to, inter alia, redesignate the present
paragraph as (1), and to amend 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.
Comments: Two comments expressed the concern that under the wording
of the proposed amendment, motions to compel could not be filed until
after the close of the discovery period. It was suggested that instead
of stating that the motion must be filed ``within'' 30 days after the
close of the discovery period, the language be changed to ``no later
than'' 30 days after the close of the discovery period. Another
comment, while agreeing that it is appropriate to require that motions
be filed within a specified time, suggested that there should be
flexibility to extend this date.
Response: The PTO agrees that parties should be allowed to file
motions to compel during the discovery period. However, the suggested
language has not been adopted because of changes made to proposed
Sec. 2.120(a). Specifically, Sec. 2.120(a) was proposed to be amended
to require, inter alia, that interrogatories, requests for production
of documents and things, and requests for admission be served in
sufficient time for answers to fall due prior to the close of
discovery. However, as a result of comments received on the proposed
amendment, it has been withdrawn, and Sec. 2.120(a) instead has been
amended to codify the Board's current practice that discovery
depositions must be taken, and interrogatories, requests for production
of documents and things, and requests for admissions must be served, on
or before the closing date of the discovery period. In the case of
written discovery requests served on the last day of the discovery
period, responses would not fall due until 30 days after the close of
the discovery
[[Page 48088]]
period (or 35 days if service of the requests was made by mail--See
Sec. 2.119(c)). In view thereof, a requirement that motions to compel
be filed no later than 30 days after the close of discovery is no
longer appropriate.
Nevertheless, the PTO still believes that a motion to compel (as
well as a motion to test the sufficiency of an answer or objection to a
request for admission) deals with pre-trial matters and should be filed
and determined prior to trial. Therefore, Sec. 2.120(e) is amended to
state, in relevant part of redesignated paragraph (e)(1), ``The motion
must be filed prior to the commencement of the first testimony period
as originally set or as reset.'' Under the amended rule, motions to
compel can be filed at any time during the discovery period, and up to
the commencement of the first testimony period, as originally set or as
reset. The Board, when setting trial dates in cases arising under these
rules as amended, intends to schedule an interval of 60 days between
the closing date of the discovery period and the opening date of the
first testimony period. Accordingly, there will be adequate time to
file a motion to compel prior to the opening of the first testimony
period even with respect to those discovery requests served on the last
day of the discovery period.
Section 2.120(e) is also amended to add a new paragraph, designated
(e)(2), specifying, inter alia, 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.
Comments: One organization suggested that the filing of a motion to
compel (or a motion to test the sufficiency of an answer or an
objection to a request for admission) should automatically suspend
proceedings, so that the parties would not have to wait to receive the
Board's suspension order. Two comments suggested that the rule should
be more specific as to the manner of suspension, and explicitly state
that, when the motion is resolved, discovery will be resumed and the
moving party will be given more time for discovery if the motion is
granted. A law firm commented that the proposed change ``would be
unnecessary if we keep the discovery at 270 days'' and suggested that
suspension should occur only if the motion is not decided within 45
days of filing the motion so that there would be pressure on the Board
to decide discovery matters promptly.
Response: The suggestion that the rule should be modified to
provide that the filing of a motion to compel will automatically
suspend proceedings has not been adopted. The Board must review the
motion to ascertain, for example, whether it is timely and meets the
minimal requirements for a motion to compel. Proceedings should not be
suspended when a motion to compel is not timely or does not meet the
minimal requirements for such a motion. Further, if the mere filing of
a motion to compel resulted in an automatic suspension of proceedings,
parties might be encouraged thereby to file such a motion merely as a
strategic move to gain time and/or delay proceedings. The PTO believes
that the better practice is for the Board to retain control over the
running of the suspension period.
As for the suggestion that the rule specify that the Board will
provide additional time for discovery if a motion to compel is granted,
the determination of whether discovery dates will be reset varies from
situation to situation. For example, if the moving party serves its
discovery requests so late in the discovery period that responses will
not be due until after the close of the discovery period, that party
will not be entitled to time for serving additional discovery requests
even if its motion to compel is granted. On the other hand, the moving
party may serve its discovery requests early enough in the discovery
period that there will be time for follow-up discovery if the adverse
party serves timely responses, but the adverse party may not respond,
or may serve responses which are insufficient, and the propounding
party may be forced to file a motion to compel. In this situation, the
Board, at the request of the propounding party, will reset the
discovery period to put that party back in the position it would have
been in if it had received timely and proper responses. See TBMP
Sec. 403.04. Because the relief to be granted in connection with a
motion to compel (or a motion to test the sufficiency of an answer or
an objection to a request for admission) in any given case is highly
dependent on the particular facts of that case, the Board must have
discretion to determine what relief is appropriate.
The comment that the proposed change ``would be unnecessary if we
keep the discovery at 270 days'' is not understood, because under
present practice the discovery period, absent extensions, would rarely
amount to 270 days. As for the suggestion that suspension should occur
only if a motion to compel is not decided by the Board within 45 days
of its filing, thus keeping pressure on the Board, this suggested
modification would seem to work a hardship not on the Board, but on the
parties. In view of the time allowed under the applicable rules for
filing a brief in opposition to a motion, as well as the time involved
in the processing of mail within the PTO, a motion to compel is not
likely to be determined within 45 days of filing. If a motion to compel
is filed shortly before the commencement of the plaintiff's testimony
period, and the case is not suspended until 45 days or more after the
filing of the motion to compel, the testimony periods would go forward,
and the parties would be left in a state of uncertainty as to what
action, if any, should be taken. A motion to compel (like a motion to
test the sufficiency of an answer or objection to a request for
admission) deals with pre-trial matters and should, therefore, be filed
and determined prior to trial. The new provisions governing the time
for filing a motion to compel and the Board's suspension of proceedings
pending the determination of the motion, 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 testimony period, will
provide for a more orderly administration of the proceeding and allow
parties more certainty in scheduling testimony. Accordingly, the
suggested modification has not been adopted.
Section 2.120(e) is further amended to provide, in the new
paragraph (e)(2), 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.
Comments: One attorney suggested that the entire proceeding
(including the time for responding to outstanding discovery requests or
for appearing at noticed discovery depositions) should be suspended, or
it might create an unfair advantage for the non-moving party. That
person was concerned that the non-moving party could serve the same
discovery requests as the moving party, and that, even if the Board
denied the motion to compel or placed limitations on the required
responses, the moving party would have had to respond fully while the
non-moving party would not. Another commented that with this amendment
a prompt decision on the motion to compel is critical, and suggested
telephone conferences to decide the motion.
Response: The suggested modification has not been adopted. The
Board does not believe that the amended rule prejudices the party
filing a motion to compel. Because the signature of a party
[[Page 48089]]
or its attorney to a request for discovery constitutes a certification
by the party or its attorney that the request is warranted, consistent
with the Federal Rules of Civil Procedure, and not unreasonable or
unduly burdensome, a party ordinarily will not be heard to contend that
a request for discovery is proper when propounded by the party itself
but improper when propounded by its adversary. See TBMP Sec. 402.02 and
cases cited therein. Thus, if the non-moving party serves the same
discovery requests as the moving party, the non-moving party will
ordinarily be required to respond to the requests. Moreover, to the
extent that the moving party believes that any of the discovery
requests served on it are inappropriate, it may object to those
requests when it serves its responses. As for the suggestion that
telephone conferences be used to decide motions to compel, as indicated
previously, the Board is undertaking a pilot program to make greater
use of telephone conferences in determining pending interlocutory
matters and motions.
Section 2.120(g)(1) now provides, in pertinent part, that ``the
Board does not have authority to hold any person in contempt or to
award any expenses to any party.'' The section is amended to state that
``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 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 final rule 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. For this
reason, and in order to harmonize Sec. 2.120(g)(1) with Sec. 1.616,
Sec. 2.120(g)(1) is 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 persons in contempt, or to award attorneys'
fees or other expenses to any party,'' is amended in the same manner.
Comments: Five comments suggested that the rule be amended not only
to indicate that the Board has authority to award expenses as a
sanction, but also to provide that the Board will exercise this
sanctioning power. They stated that awarding expenses would be an
effective tool for combating improper motions and other abuses by
parties and their attorneys. One organization, while approving of the
proposed amendment not to award monetary sanctions, urged the Board to
make more effective use of the sanctioning powers it will exercise by
using its power more often and publishing decisions in which sanctions
are imposed.
Response: As indicated above, 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
the filing of many motions for such sanctions (as well as a large
number of associated papers concerning the appropriate amount for such
expenses and/or fees), thus increasing the workload of the Board.
Accordingly, this suggestion has not been adopted. However, the Board
plans to follow the suggestion that it use its other sanctioning powers
more often, and that it publish more decisions in which it enters
sanctions. It is hoped that these steps will make practitioners aware
of the Board's lack of tolerance for abuses and lead to a curtailment
of abuses.
Section 2.120(h), which concerns requests for admission, was
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 by that
party for an admission shall * * * ,'' to read ``The motion shall * * *
.''
The section was 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
provided 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 paralleled 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) was proposed to be amended to add another
new paragraph, designated (h)(3), which provided for the suspension of
proceedings when a motion to determine the sufficiency of an answer or
objection to a request for
[[Page 48090]]
admission is filed. Specifically, the proposed new paragraph provided
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 provided 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) paralleled the provisions of proposed new
Sec. 2.120(e) and Sec. 2.127(d).
Comments: Nineteen comments were received which objected to the
proposed limit on requests for admission. The comments noted that
requests for admission are useful in limiting issues for trial and for
streamlining the introduction of documentary evidence. In addition, the
comments raised objections similar to those made in response to the
proposal to amend Sec. 2.120(d)(1) to lower the number of
interrogatories which one party may serve upon another in a proceeding.
Response: As a result of the comments received, the proposed
amendment to limit requests for admission has been withdrawn. See the
notice of hearing and reopening of comment period on the proposed
rules, namely, ``Miscellaneous Changes to Trademark Trial and Appeal
Board Rules,'' 62 FR 59640 (Nov. 4, 1997), 1204 TMOG 88 (Nov. 25, 1997)
(stating the PTO's intention to withdraw this proposal). Accordingly,
the rule is not being amended to include the proposed new first
paragraph; the present paragraph will remain but is redesignated
(h)(1), and the proposed paragraph (h)(3) is added but redesignated
(h)(2). These amendments are described in more detail below.
Section 2.120(h), redesignated as (h)(1), is amended to 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.'' 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.
Moreover, Sec. 2.120(a), as amended herein, specifies that whenever
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, Sec. Sec. 2.120(g)(1) and
2.127(f), as amended herein, provide that the Board will not hold any
person in contempt or award expenses to any party. Accordingly, the
first sentence of Sec. 2.120(h), redesignated herein as (h)(1), is
being deleted because it is confusing and redundant.
It was proposed to amend the second sentence of the present
paragraph (now redesignated as Sec. 2.120(h)(1)) to add to the
beginning of the paragraph 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.'' For the reasons stated above in connection with
Sec. 2.120(e)(1), governing motions to compel, the paragraph is instead
amended to include a new first 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 prior to the
commencement of the first testimony period, as originally set or as
reset.'' The amendment parallels a similar amendment to Sec. 2.120(e).
Present Sec. 2.120(h), redesignated as Sec. 2.120(h)(1), is further
amended to 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 by that party for an admission shall * *
*,'' to read ``The motion shall * * *.''
Section 2.120(h) is amended to add a new paragraph, proposed to be
designated as (h)(3) but, with the withdrawal of the proposal to limit
requests for admission, now designated (h)(2). This new paragraph
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 paragraph provides that when a party files a
motion to determine the sufficiency of an answer or objection to a
request 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 paragraph further
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 amendment parallels a
similar amendment to Sec. 2.120(e). The comments submitted (and
discussed above) in connection with the amendment to Sec. 2.120(e) were
considered also in connection with this amendment, with the same
outcome.
Section 2.121(a)(1) now provides, inter alia, 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.'' The sentence was proposed to be amended 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.'' Similarly, Sec. 2.121(c) now
provides, inter alia, that testimony 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.''
The sentence was proposed to be amended to provide that testimony
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 proposed amendments would
have eliminated extensions or rescheduling upon motion showing good
cause.
Comments: Thirteen comments, including those from four
organizations, disagreed with the proposal to eliminate the good cause
standard for extending or rescheduling the testimony periods. The
reasons given included that there could be many genuine business
reasons, or unforeseen developments, why extensions would be necessary,
but which would not rise to the level of extraordinary circumstances.
Some of the comments suggested allowing one 30-day extension for good
cause, or extensions for up to 2 months on a showing of good cause, or
extensions on good cause with sanctions for abuse. Three attorneys from
the same law firm suggested that the rule should provide for the grant
of one extension as of right, and further extensions on a showing of
good cause. One attorney suggested changing the pertinent sentence in
Sec. 2.121(a)(1) to read ``Testimony periods may be rescheduled or
extended as provided for in 37 CFR 2.121(c)'' to avoid duplication.
That same attorney also suggested providing for a non-party to object
to a stipulated rescheduling or enlargement of testimony when the
[[Page 48091]]
proceeding is delaying an application by a non-party or delaying
another proceeding in which the non-party has an interest.
Response: The proposal to amend Secs. 2.121(a)(1) and 2.121(c) to
eliminate the good cause standard for motions to reschedule or extend
the testimony periods is withdrawn. As for the suggestion that one
rescheduling or extension of the testimony periods be granted without
any showing of cause, the Board does not believe this is warranted
since the proposed amendments have been withdrawn. Moreover, once an
inter partes proceeding commences, no other extensions of time are
granted as of right. With respect to the suggestion to reword the
pertinent sentence in Sec. 2.121(a)(1) to refer to Sec. 2.121(c), it is
believed that the clarity offered in setting forth the bases for the
rescheduling of testimony periods in Sec. 2.121(a)(1) is helpful to the
parties. The suggestion that a non-party be permitted to object to a
rescheduling of the testimony periods is beyond the scope of the
proposed rule amendment, and therefore cannot be considered at this
time.
Section 2.121(a)(1) is amended to add a new sentence specifying
that if a motion to reschedule testimony periods is denied, ``the
testimony periods may remain as set.'' The Board has always had the
discretion to leave the testimony periods as set when a motion to
reschedule is denied. However, it is hoped that explicit statement of
this fact in the rules will alert parties to the potential consequences
if a motion to reschedule does not show good cause, and will put them
on notice that the Board will not tolerate abuses of the rules.
Section 2.121(a)(1) now includes a last sentence reading, ``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.'' The section is
amended by deleting this sentence, which has been added to
Sec. 2.120(a). It is believed that Sec. 2.120(a), which governs, inter
alia, extensions of time to respond to discovery requests, is the most
logical place for the sentence.
Comment: One attorney suggested that the rule provide that if the
discovery period is rescheduled, the start of the testimony period
should be automatically reset without a party having to make a request
or motion.
Response: Such a provision appears as the fourth sentence of
present Sec. 2.121(a)(1), and will remain in the amended rule as the
last sentence of the paragraph.
Section 2.121(c), which governs the length of the testimony
periods, was 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.
Comments: Four comments disagreed with this proposal, stating that
the existing trial periods are adequate, that 60 days is rarely needed
to complete testimony, and that most trials in trademark litigation are
conducted in one to two weeks or less. It was also felt that enlarging
the testimony periods would unduly lengthen inter partes proceedings.
Response: The proposal to lengthen the testimony periods was tied
to the proposal to eliminate good cause extensions of these periods.
Because the proposal to eliminate good cause extensions is withdrawn,
the proposal to lengthen the testimony periods is also withdrawn.
Section 2.121(c), which now provides, inter alia, that the
testimony 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,'' was also 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 proposed amendment paralleled a similar proposed amendment to
Sec. 2.121(a)(1), which governs, inter alia, the rescheduling of
testimony periods. For the reasons stated in connection with the
proposed parallel amendment to Sec. 2.121(a)(1), the proposal is
withdrawn.
Section 2.121(c) is amended to specify that if a motion to extend
the testimony period is denied, ``the testimony periods may remain as
set.''
Comments: One organization suggested that if the motion were
denied, the testimony period should be reset to allow the amount of
time which remained when the motion to extend was filed. Three
attorneys, all from the same law firm, commented that if prior
deadlines are to remain in effect when a motion to extend is denied,
the Board needs new procedures to expedite the delivery of motion
papers to the Board, and for deciding the motion.
Response: With respect to the first comment, the PTO believes it is
important for the Board to retain discretion as to the rescheduling of
testimony periods. There is a concern that, if testimony periods had to
be reset to provide the amount of time which was remaining at the time
a motion to extend was filed, a party might file a motion for extension
as a strategic measure to obtain a delay until the Board decides the
motion, even if the motion is ultimately denied. The Board has always
had the discretion, if it denied a motion for an extension, to leave
the testimony periods as set. It is hoped that specifically stating
this fact in this section, as well as in Sec. 2.121(a)(1), will alert
parties to the potential consequences if a motion to extend does not
show good cause, and will put them on notice that the Board will not
tolerate abuses of the rules.
As for the need for new procedures to expedite the processing and
determination of motions to extend, the telephone pilot program,
discussed above, should prove helpful in expediting the rendering of
such decisions.
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 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.'' The Board does not
need the original copy.
Section 2.122(b)(1) 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. The section is 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
[[Page 48092]]
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 2.122(d)(1) provides that a registration of the opposer or
petitioner pleaded in an opposition or petition to cancel will be 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.'' The section, which now includes a cross-
reference to ``Sec. 2.6(n),'' is amended to correct the cross-reference
to ``Sec. 2.6(b)(4).''
Comment: A suggestion was made to further amend this section to
require that only one status and title copy of a registration be
submitted with a notice of opposition. It was pointed out that only one
copy of a registration is necessary when it is submitted with a notice
of reliance, and it was believed that requiring that two be submitted
with a notice of opposition was wasteful.
Response: A notice of opposition or petition to cancel, together
with any exhibits thereto, must be submitted in duplicate. See
Secs. 2.104(a) and 2.112(a). This is because the Board places one of
the copies in the Board's file of the proceeding, and the other copy is
sent to the applicant or registrant with the notification of the
institution of the proceeding. Thus, when a plaintiff wishes to make a
pleaded registration of record by submitting a status and title copy of
the registration with its complaint pursuant to Sec. 2.122(d)(1), one
copy of the registration must be submitted with each copy of the
complaint. That is, both the complaint, and the status and title copy
of the registration, must be submitted in duplicate. A party need only
file one copy of a registration with a notice of reliance, on the other
hand, because the party itself must separately serve a copy of the
notice of reliance and the registration on each adverse party. It may
be that the comment was occasioned by a belief that two copies of a
pleaded registration must be submitted with each copy of the complaint,
for a total of four copies of the registration. That is not the case.
To the extent the comment is concerned about the expense of obtaining
two status and title copies of a registration from the PTO, the Board
does not require that two ``originals'' be submitted. The section is
amended to make this clear by adding as a parenthetical the words
``originals or photocopies'' after the word ``copies'', so that the
sentence will read, in pertinent part, `` * * * if the opposition or
petition is accompanied by two copies (originals or photocopies) of the
registration prepared and issued by the Patent and Trademark Office * *
* ''
Section 2.122(d)(2), provides, inter alia, that a registration
owned by any party to a proceeding may be made of record by filing a
notice of reliance which is accompanied by a copy of the registration
prepared and issued by the Patent and Trademark Office showing the
current status of and current title to the registration. This section
is amended to add, as a parenthetical after the word ``copy,'' the
words ``original or photocopy'', so that the sentence will read, in
pertinent part, `` * * * a notice of reliance, which shall be
accompanied by a copy (original or photocopy) of the registration
prepared and issued by the Patent and Trademark Office * * * '' This
change is consistent with the amendment to Sec. 2.122(d)(1).
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 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 amended by inserting the words
``in writing'' after the word ``stipulate'' and after the word
``stipulated.'' The amendments clarify the rule.
Section 2.123(f) pertains to the certification and filing of a
deposition by the officer before whom the deposition was taken. The
section 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. The section is amended to eliminate the requirement that
this material be forwarded to the Commissioner ``without delay.'' The
section is also 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.
Specifically, 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 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 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 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
amendments to the third and fourth sentences, the title of the section,
which now reads ``Certification and filing by officer,'' is amended to
read ``Certification and filing of deposition.'' To eliminate
undesignated text, paragraph (f) has been redesignated.
The amendment eliminating the present requirement that the material
be forwarded to the Commissioner of Patents and Trademarks ``without
delay,'' 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
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. The amendment concerning who is to file the material
makes it clear that if the officer sends the envelope or package
containing the deposition and
[[Page 48093]]
associated materials 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.
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 amended to delete the word ``promptly.'' The
amendment corresponds to the amendment deleting the words ``without
delay'' from Sec. 2.123(f), and conforms Sec. 2.125(c) to current Board
practice.
Section 2.127(a), which governs the filing of briefs on motions,
was proposed to be amended to enlarge the time for filing a brief in
response to a motion (other than a motion for summary judgment which
was covered separately in proposed Sec. 2.127(e)(1)) from 15 days to 30
days.
Comments: Two comments stated that 30 days was too long a period
and suggested that 15 or 20 days would be sufficient; a third comment,
while not objecting to the enlargement of time, believed that the
current time period was not too short.
Response: The proposal to enlarge the time to respond to a motion
which is not a motion for summary judgment was tied to a proposal to
amend Sec. 2.127(a) to eliminate good cause extensions of this time.
Because the proposal to eliminate good cause extensions is withdrawn,
as indicated immediately hereafter, the proposal to lengthen the time
to respond is also withdrawn.
Section 2.127(a) was proposed to be amended to delete, from the
second sentence, a provision for extension of the time to respond to a
motion 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.''
Comments: Three comments suggested that the good cause standard be
retained, one organization stating that sanctions should be imposed in
cases involving abuse. Three attorneys from the same law firm suggested
that a first extension of time be granted as of right, and that further
extensions be granted upon a showing of good cause.
Response: Just as the proposals to eliminate good cause as a
standard for motions to extend the discovery and discovery response
periods (Sec. 2.120(a)), and motions to reschedule (Sec. 2.121(a)(1))
or extend (Sec. 2.121(c)) testimony periods, are withdrawn herein, so
too the proposal to eliminate good cause as a standard for obtaining
extensions of time to respond to a motion is withdrawn.
Section 2.127(a) is amended to provide that if a motion for an
extension of time to file a brief in response to a motion is denied,
the time for responding to the motion for summary judgment may remain
as specified under this section.
Comment: Three attorneys from the same law firm commented that in
view of this amendment, the Board will need some provision for quick
processing of the motion papers and for expedited decisions.
Response: The telephone pilot program, discussed above, should
prove helpful in expediting decisions on motions for extensions of
time.
Section 2.127(a), which now makes no mention of reply briefs or
further papers in support of or in opposition to motions, was proposed
to be amended to (1) state 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; (2) preface this new provision with the phrase ``Except as
provided in paragraph (e)(1), a'' to make clear that this provision
does not apply to reply briefs in support of summary judgment motions;
and (3) 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.
Comments: One organization disagreed with the proposal to amend the
section to specify that the time to file a reply brief will not be
extended. This organization stated that there was no reason why the
circumstances that necessitate an extension of time to file a brief in
opposition are less likely to be present when filing a reply brief. As
for the prohibition against papers beyond a reply brief, four comments
expressed the concern that the moving party will save new issues for
its reply, and the party opposing a motion will be at a disadvantage
because it will not be able to respond. A suggestion was made to adopt
the rule that the reply be limited to rebuttal of points newly raised
in the answering brief, and that issues not raised in the moving brief
are waived. Another comment suggested that there should either be a
provision in the section that no new issues raised in a reply brief
will be considered, or the Board should allow for a surreply brief
limited to any new issues raised in the reply.
Response: It is believed that extensions of time to file a reply
brief need not be available in the same way that extensions to file a
brief in opposition are available, because the circumstances
surrounding the filing of a reply brief and a brief in opposition are
different. Specifically, while the service of a motion may come as a
surprise to a party, the moving party labors under no such obstacle. It
must also be acknowledged that reply briefs are generally found to have
little persuasive value; often they are a mere reargument of the points
made in the main brief. It is the practice of the Board to consider a
reply brief only when, in the Board's opinion, such a brief is
warranted under the circumstances of a particular case, such as when
the Board finds that a reply brief is necessary to permit the moving
party to respond to new issues raised in the brief in opposition to the
motion, or that the issue to be determined is complex or needs to be
further clarified, or that certain arguments against the motion should
be answered so as to assist the Board in arriving at a just decision on
the motion. See TBMP Sec. 502.03. Accordingly, the section is amended
as proposed. However, to emphasize that the Board does not intend to
encourage the filing of reply briefs, the sentence, ``The Board may, in
its discretion, consider a reply brief,'' has been added to the
section.
With respect to the concern that the moving party may ``save'' new
issues for its reply brief, the Board is able to recognize what is
proper material for a reply brief. However, it is believed that it is
not necessary to include a specific provision that ``no new issues
raised in a reply brief will be considered''; there are no such
specific provisions in Sec. 2.121(b)(1), which involves the rebuttal
testimony period, and Sec. 2.128(a)(1), which concerns a reply brief at
final hearing.
Section 2.127(a) is further amended to (1) 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; (2) 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 (3) 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.
Comments: One organization thought the page limits were too
restrictive, and suggested 35 pages for main briefs and 15 for reply
briefs; three comments suggested higher page limits for potentially
dispositive motions; one attorney recommended 30- and 15-page limits
for summary judgment motions; and an organization suggested a 40-page
[[Page 48094]]
limit for dispositive motions, pointing out that other courts have 45-
and 50-page limits. Two organizations agreed with the proposed page
limit, as long as the Board would grant leave to file longer briefs
with a good cause showing, such as if there were multiple parties,
consolidated proceedings, or multiple marks.
Response: It is believed that 25 and 10 pages are sufficient for
the main brief and reply brief, respectively, of any motion that arises
in a Board inter partes proceeding. Because of the limited nature of
Board proceedings, briefing for motions in such proceedings need not be
as extensive as that in proceedings in court. Although the Board is of
the firm opinion that all issues in a motion can be briefed in 25 pages
for a main brief, and 10 pages for a reply brief, the rule does not
specifically prohibit a motion for leave to file a longer brief upon a
showing of good cause. The Board may include such a prohibition as part
of a future rulemaking if it appears that parties are abusing such
requests.
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 of
the order or decision, is amended to change the specification of the
time period for requesting reconsideration or modification from
``thirty days'' to ``one month.'' The amended rule parallels
Sec. 2.129(c), which governs the time for filing a request for
rehearing or reconsideration or modification of a decision issued after
final hearing.
Section 2.127(d) now 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 amended to add to the end of the
sentence the phrase ``except as otherwise specified in the Board's
suspension order.''
Comment: One organization suggested the section should be amended
to provide that the filing of a potentially dispositive motion
automatically suspends proceedings, without any action by the Board.
Response: The suggested modification has not been adopted. A
variety of motions are potentially dispositive, including a motion for
sanctions in the form of entry of judgment. Because of the number of
situations in which a party may make a potentially dispositive motion,
it is believed better for the Board to determine whether proceedings
should be suspended based on the situation presented by the particular
case.
Section 2.127(d) was also proposed to be amended to add a new
sentence providing 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
it shall toll the time for the nonmoving party to serve such responses
or to appear for such deposition.
Comments: Three comments disagreed with this proposal. They stated
that the moving party should not be forced to spend unnecessary time
and money to provide discovery responses when the proceeding may be
decided on the basis of the pending summary judgment motion. They
believed that any discovery that is essential for the non-moving party
can be obtained through an FRCP 56(f) motion. Another comment suggested
that the non-moving party's obligation to respond to discovery not be
tolled by the filing of a summary judgment motion, in that the moving
party might require discovery if it were moving for partial summary
judgment.
Response: Upon consideration of the comments regarding the tolling
of time for responding to discovery, the proposal to amend
Sec. 2.127(d) to add the sentence, ``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.'', is withdrawn.
Section 2.127(e)(1) presently provides that a motion for summary
judgment should be filed prior to the commencement of the first
testimony period, as originally set or as reset, and that the Trademark
Trial and Appeal Board, in its discretion, may deny as untimely any
motion filed thereafter. The section is 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. The amendment codifies current Board
practice, as set forth in Nabisco Brands Inc. v. Keebler Co., 28 USPQ2d
1237 (TTAB 1993).
Comments: One comment suggested that parties should be allowed to
file summary judgment motions with the pleadings. Another comment
suggested that parties be permitted to file summary judgment motions up
to the end of a party's testimony period.
Response: The suggestion that parties be allowed to file summary
judgment motions with the pleadings has not been adopted. The Board
considers a motion for summary judgment filed prior to the issuance of
the notice of institution to be premature. Although the proceeding
commences with the filing of the complaint, formal service of the
complaint upon the defendant is made by the Board, not by the
plaintiff. 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 the 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, until it receives from the
Board the notice of institution along with a copy of the complaint.
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.
As for the suggestion that parties be permitted to file summary
judgment motions up to the end of a party's testimony period, this is
beyond the scope of the proposed amendment. Moreover, the suggested
modification would defeat the concept of summary judgment, which is a
procedure to dispose of a case before trial. Once a party's testimony
period has opened, trial has begun. Accordingly, the suggested
modification has not been adopted.
Section 2.127(e)(1) is further amended to add 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, and (2) the time for
[[Page 48095]]
filing a motion under Rule 56(f) will not be extended.
Comments: Three attorneys from one law firm asserted that this
amendment would put extraordinary pressure on counsel, and suggested
that there be a provision for extensions given the dispositive nature
of a summary judgment motion. An organization raised a concern that
when a motion to dismiss which is accompanied by affidavits and
exhibits is treated as a summary judgment motion it would be difficult
for the plaintiff to properly frame a Rule 56(f) motion without having
the defendant's answer, and suggested that in such a case the defendant
should be required to file its answer before the plaintiff must file a
56(f) motion.
Response: The PTO believes that 30 days is an adequate time for a
party to review a summary judgment motion, determine whether it needs
particular discovery in order to respond to the motion, and prepare a
motion for such discovery, supported by an affidavit attesting to the
reasons for the need for the discovery. With respect to the suggestion,
in the motion to dismiss turned motion for summary judgment situation,
that the defendant be required to file its answer before the plaintiff
must file a 56(f) motion, the Board believes that the plaintiff will be
adequately informed of the factual issues regarding the defendant's
position by the summary judgment motion and accompanying materials,
such that the plaintiff can frame a Rule 56(f) motion.
Section 2.127(e)(1) was also proposed to be amended to provide that
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.
Comments: Two comments disagreed with the proposal to enlarge the
period to respond to a summary judgment motion to 60 days, stating that
30 days was adequate. Three comments disagreed with the proposal to
allow extensions of the time to file a brief only on consent or a
showing of extraordinary circumstances: two suggested a good cause
basis, while three comments, by attorneys from the same law firm,
suggested that a first extension be allowed as of right, and additional
extensions upon a showing of good cause.
Response: The proposal to amend this section to allow extensions of
time to file a brief opposing a motion for summary judgment only on
consent or a showing of extraordinary circumstances is withdrawn. The
withdrawal of this proposal is consistent with the withdrawals herein
of proposals to eliminate good cause as a standard for motions to
extend the discovery and discovery response periods (Sec. 2.120(a)),
motions to reschedule (Sec. 2.121(a)(1)) or extend (Sec. 2.121(c))
testimony periods, and motions to extend the time to respond to motions
other than summary judgment motions (Sec. 2.127(a)). The Board practice
of granting extensions based on a showing of good cause will continue,
and the rule has been amended to specifically state that extensions may
be had on this basis. However, the suggestion that a first extension
should be granted as of right is not adopted. Once a proceeding has
commenced there is no other situation where an extension of time may be
obtained without providing any reason whatsoever. It is believed that a
good cause standard will not place an undue burden on the parties. As
for the proposal to allow 60 days for the filing of a brief in response
to a motion for summary judgment, Sec. 2.127(e)(1) is amended to
provide instead that a brief in response to a motion for summary
judgment shall be filed within 30 days from the date of service of the
motion. The modification is made because of the decision to allow
extensions upon a showing of good cause, and because of the comments
regarding the time to respond to a summary judgment motion.
Section 2.127(e)(1) is further amended to provide that if a motion
for an extension of time to file a brief in response to a motion for
summary judgment is denied, the time for responding to the motion for
summary judgment may remain as specified under this section.
Comment: Three attorneys, all of whom are from the same law firm,
commented that in view of this amendment, new procedures are needed to
expedite the delivery of the motion papers to the Board and for
deciding the motion.
Response: The telephone pilot program, discussed above, should
prove helpful in expediting decisions on motions for extensions of
time.
Section 2.127(e)(1) now makes no mention of reply briefs or further
papers in support of or in opposition to summary judgment motions. It
was proposed to amend this section to provide that a reply brief, if
filed, shall be filed within 30 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.
Comments: One comment suggested that 15 days was a sufficient time
to file a reply brief. One organization disagreed with the proposed
provision that the time to file a reply brief will not be extended.
This organization stated that there was no reason why the circumstances
that necessitate an extension of time to file a brief in opposition are
less likely to be present when filing a reply brief. With regard to the
prohibition against filing papers beyond a reply brief, one
organization raised the concern that the party opposing a motion will
be at a disadvantage if the moving party saves new issues for its
reply. It suggested that either the rule be amended to provide that new
issues raised in a reply brief will not be considered, or that
provision be made for a surreply brief which is limited to any new
issues raised in the reply.
Response: The suggestion that a reply brief, if filed, should be
filed within 15 days from the date of service of the brief in response
to the motion for summary judgment is adopted. The section is otherwise
amended as proposed. The amended rule parallels that portion of amended
Sec. 2.127(a) which pertains to the time for filing reply briefs to
other types of motions. With respect to the comment that extensions of
time to file a reply brief should be available in the same way that
extensions to file a brief in opposition are available, it is believed
that the circumstances surrounding the filing of a reply brief and a
brief in opposition to a summary judgment motion are different, such
that extensions should be permitted in the latter situation and not in
the former. Specifically, the service of a motion for summary judgment
may come as a surprise to a party, and it may take some time to obtain
documents and affidavits in order to show that genuine issues of
material fact exist; on the other hand, the party who has moved for
summary judgment would have gathered the necessary evidence, and have
researched the law prior to filing its motion. It must also be
acknowledged that reply briefs are generally found to have little
persuasive value; often they are a mere reargument of the points made
in the main brief, and as such serve no useful purpose. It is not the
practice of the Board to consider a reply brief of that nature. Rather,
the Board considers a reply brief only when, in the Board's opinion,
such a brief is warranted under the circumstances of a
[[Page 48096]]
particular case. See, in this regard, the discussion herein of the
amendment of Sec. 2.127(a) to add matter relating to reply briefs for
motions other than summary judgment motions. However, to emphasize that
the Board does not intend to encourage the filing of reply briefs, the
sentence, ``The Board may, in its discretion, consider a reply brief,''
has been added to the section.
With respect to the concern that the moving party may ``save'' new
issues for its reply brief, the Board is able to recognize what is
proper material for a reply brief. However, it is believed that it is
not necessary to include a specific provision that ``no new issues
raised in a reply brief will be considered''; there are no such
specific provisions in Sec. 2.121(b)(1), which involves the rebuttal
testimony period, and Sec. 2.128(a)(1), which concerns a reply brief at
final hearing.
Section 2.127(f) now provides that ``the Board does not have
authority to hold any person in contempt, or to award attorneys' fees
or other expenses to any party.'' This section is amended, in
conformity with amended Sec. 2.120(g)(1), and for the reasons indicated
in connection therewith, to state that ``the Board will not hold any
person in contempt, or award attorneys' fees or other expenses to any
party.''
Comments: The comments made with respect to the amendment to
Sec. 2.120(g)(1) are applicable to this amendment. Five comments
concerning Sec. 2.120(g)(1) suggested that the rule not only be amended
to indicate that the Board has authority to award expenses as a
sanction, but also that the rule be amended to provide that the Board
will exercise this sanctioning power. They stated that awarding
expenses would be an effective tool in combating improper motions and
other abuses by parties and their attorneys.
Response: As indicated in the response to the comments regarding
the amendment to Sec. 2.120(g)(1), 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
the filing of many motions for such sanctions (as well as a large
number of associated papers concerning the appropriate amount
therefor), thus increasing the workload of the Board. Accordingly, this
suggestion has not been adopted. However, the Board is adopting the
suggestion that it use its other sanctioning powers more often, and
that it publish more decisions in which it enters sanctions. It is
hoped that these steps will make practitioners aware of the Board's
lack of tolerance for abuses and lead to a curtailment of abuses.
Section 2.134(a), which now includes a cross-reference to ``section
7(d)'' of the Act of 1946, is 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 amended to provide also for filing a
petition from the grant of such a request. Specifically, the first
sentence of the section is 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 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 * * *.'' The amendments to Sec. 2.126(e)(1) codify current
practice and clarify the rule.
Section 3.41, which now includes a cross-reference to
Sec. 2.6(q),'' is amended to correct the cross-reference to
``Sec. 2.6(b)(6).''
Environmental, Energy, and Other Considerations
The 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 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 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 rule changes have no Federalism
implications affecting the relationship between the National Government
and the States as outlined in Executive Order 12612.
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 OMB Control Number.
This rule involves collections of information subject to the
requirements of the PRA. The rule involves the Petition to Cancel
requirement. This requirement has been approved by the Office of
Management and Budget (OMB) under OMB control number 0651-0040. The
public reporting burden for this collection of information is estimated
to be 45 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. 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 OMB 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,
725 17th Street, N.W. Washington, DC 20230 (Attention: PTO Desk
Officer).
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, Part 2 and Part 3 of Title
37 of the Code of Federal Regulations are amended as set forth below.
[[Page 48097]]
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.
2. Section 2.76 is 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. 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. If an acceptable amendment to correct
the deficiency is not filed prior to approval of the mark for
publication, 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.
3. Section 2.85 is 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 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 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.
* * * * *
4. Section 2.87 is 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 during an
opposition, concurrent use, or interference proceeding, upon motion
granted by the Trademark Trial and Appeal Board. 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.
* * * * *
5. Section 2.101 is 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). 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.
* * * * *
6. Section 2.102 is 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.
7. Section 2.111 is 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) or (5) 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
2.6(a)(16)). 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 fees(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.
* * * * *
8. Section 2.117 is 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 another Board proceeding which may have a bearing
on the case, proceedings before the Board may be suspended until
termination of the civil action or the other Board proceeding.
(b) 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.
* * * * *
9. Section 2.119 is amended by revising paragraph (d) to read as
follows:
Sec. 2.119 Service and signing of papers.
* * * * *
(d) If a party to an inter partes proceeding is not domiciled in
the
[[Page 48098]]
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
Sec. 10.14(b) and authorized under Sec. 2.17(b).
* * * * *
10. Section 2.120 is amended by redesignating current paragraphs
(e) and (h) as (e)(1) and (h)(1), respectively; adding new paragraphs
(e)(2) and (h)(2); and revising paragraphs (a), (g)(1) and redesignated
paragraphs (e)(1) and (h)(1) to read as follows:
Sec. 2.120 Discovery.
(a) In general. 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 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 dates for the taking of discovery. The trial order setting
these dates will be mailed with the notice of institution of the
proceeding. The discovery period will be set for a period of 180 days.
The parties may stipulate to a shortening of the discovery period. The
discovery period may be extended upon stipulation of the parties
approved by the Board, or upon motion granted by the Board, or by order
of the Board. If a motion for an extension is denied, the discovery
period may remain as originally set or as reset. Discovery depositions
must be taken, and interrogatories, requests for production of
documents and things, and requests for admission must be served, on or
before the closing date of the discovery period as originally set or as
reset. Responses to interrogatories, requests for production of
documents and things, and requests for admission must be served within
30 days from the date of service of such discovery requests. The time
to respond may be extended upon stipulation of the parties, or upon
motion granted by the Board, or by order of 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; 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.
* * * * *
(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 prior to the commencement of the
first testimony 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 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 will not hold any person in
contempt or 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) (1) 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 prior to the commencement of the first testimony 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.
(2) 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
[[Page 48099]]
party to respond to any outstanding discovery requests or to appear for
any noticed discovery deposition.
* * * * *
11. Section 2.121 is 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 granted by the
Board, or by order of the Board. If a motion to reschedule testimony
periods is denied, the testimony periods may remain as set. The
resetting of the closing date for discovery will result in the
rescheduling of the testimony periods without action by any party.
* * * * *
(c) A testimony period which is solely for rebuttal will be set for
fifteen days. All other testimony periods will be set for thirty days.
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. If a motion for an extension is
denied, the testimony periods may remain as set.
(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, will,
if approved, be so stamped, signed, and dated, and a copy will be
promptly returned to each of the parties.
12. Section 2.122 is amended by revising paragraphs (b)(1), (d)(1)
and (d)(2) 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 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 (originals or photocopies) 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).
(2) A registration owned by any party to a proceeding may be made
of record in the proceeding by that party by appropriate identification
and introduction during the taking of testimony or by filing a notice
of reliance, which shall be accompanied by a copy (original or
photocopy) of the registration prepared and issued by the Patent and
Trademark Office showing both the current status of and current title
to the registration. The notice of reliance shall be filed during the
testimony period of the party that files the notice.
* * * * *
13. Section 2.123 is 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. (1) The officer shall
annex to the deposition his certificate showing:
(i) Due administration of the oath by the officer to the witness
before the commencement of his deposition;
(ii) 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;
(iii) The presence or absence of the adverse party;
(iv) The place, day, and hour of commencing and taking the
deposition;
(v) The fact that the officer was not disqualified as specified in
Rule 28 of the Federal Rules of Civil Procedure.
(2) If any of the foregoing requirements in paragraph (f)(1) of
this section 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 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 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.
* * * * *
14. Section 2.125 is 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 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.
* * * * *
15. Section 2.127 is 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 brief
in response to a motion shall be filed within 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
[[Page 48100]]
upon motion granted by the Board, or upon order of the Board. If a
motion for an extension is denied, the time for responding to the
motion may remain as specified under this section. The Board, may in
its discretion, consider a reply brief. 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 from the
date thereof. A brief in response must be filed within 15 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. 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 30
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
granted by the Board, or upon order of the Board. If a motion for an
extension is denied, the time for responding to the motion for summary
judgment may remain as specified under this section. The Board may, in
its discretion, consider a reply brief. 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
for summary judgment will be considered by the Board.
* * * * *
(f) The Board will not hold any person in contempt, or award
attorneys' fees or other expenses to any party.
16. Section 2.134 is 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) 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.
* * * * *
17. Section 2.146 is 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 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--RULES OF PRACTICE IN TRADEMARK CASES
18. The authority citation for part 3 continues to read as follows:
Authority: 15 U.S.C. 1123; 35 U.S.C. 6.
19. Section 3.41 is revised to read as follows:
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) of this chapter for
trademarks.
Dated: August 27, 1998.
Bruce A. Lehman,
Assistant Secretary of Commerce and Commissioner of Patents and
Trademarks.
[FR Doc. 98-23680 Filed 9-8-98; 8:45 am]
BILLING CODE 3510-16-P