[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