[Federal Register Volume 63, Number 189 (Wednesday, September 30, 1998)]
[Rules and Regulations]
[Pages 52158-52159]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 98-26160]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 2 and 3
RIN 0651-AA87
Miscellaneous Changes to Trademark Trial and Appeal Board Rules;
Correction
AGENCY: Patent and Trademark Office, Commerce.
ACTION: Correcting amendment.
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SUMMARY: This document contains corrections to the rules relating to
discovery, motions, and the fee for recording documents, and to the
title of Part 3 of Volume 37 of the Code of Federal Regulations.
EFFECTIVE DATE: September 30, 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: On September 9, 1998, the Patent and
Trademark Office published a final rule entitled ``Miscellaneous
Changes to Trademark Trial and Appeal Board Rules'' in the Federal
Register (63 FR 48081).
There is an error on page 48093, column 2, in the discussion of the
amendment of Section 2.127(a), which states 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.'' The words ``for summary judgment''
should be deleted.
Section 2.120(a) was amended to clarify certain Board practices and
to change certain provisions relating to discovery. When the final rule
was printed, this section was incorrectly published as two paragraphs
instead of one. Section 2.120(a) should appear as a single paragraph.
Section 2.127(a) was amended to, inter alia, provide that the Board
may, in its discretion, consider a reply brief. As published, however,
a comma was erroneously placed after the word ``Board'' rather than
after the word ``may.''
Section 3.41 was amended in order to correct a cross-reference to
the section relating to the fee for recording a trademark document.
However, an earlier version of Sec. 3.41 was inadvertently inserted.
The version of Sec. 3.41 as published in the Federal Register on
October 10, 1997, 62 FR 53132, 1203 TMOG 63 (October 21, 1997), which
became effective December 1, 1997, should be reinserted with the
corrected cross-reference.
Finally, the title of Part 3 of Volume 37 of the Code of Federal
Regulations was erroneously listed as ``Rules of Practice in Trademark
Cases.'' It should remain as ``Assignment, Recording and Rights of
Assignee.''
List of Subjects
37 CFR Part 2
Administrative practice and procedure, Patents, Trademarks.
37 CFR Part 3
Administrative practice and procedure, Patents, Trademarks.
Accordingly, 37 CFR Parts 2 and 3 are corrected as follows:
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.
2. Section 2.120(a) is correctly revised to read as follows:
[[Page 52159]]
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.
* * * * *
3. Section 2.127(a) is correctly revised 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 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.
* * * * *
PART 3--ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE
4. The authority citation for Part 3 continues to read as follows:
Authority: 15 U.S.C. 1123; 35 U.S.C. 6.
5. The title of Part 3 is correctly revised to read as follows:
PART 3--ASSIGNMENT, RECORDING AND RIGHTS OF ASSIGNEE
6. Section 3.41 is correctly revised to read as follows:
Sec. 3.41 Recording fees.
(a) All requests to record documents must be accompanied by the
appropriate fee. Except as provided in paragraph (b) of this section, 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.
(b) No fee is required for each patent application and patent
against which a document required by Executive Order 9424 is to be
filed if:
(1) The document does not affect title and is so identified in the
cover sheet (see Sec. 3.31(c)(2)); and (2) The document and cover sheet
are mailed to the Office in compliance with Sec. 3.27(b).
Dated: September 24, 1998.
Albin F. Drost,
Deputy Solicitor.
[FR Doc. 98-26160 Filed 9-29-98; 8:45 am]
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