[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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