[Federal Register Volume 71, Number 10 (Tuesday, January 17, 2006)]
[Proposed Rules]
[Pages 2498-2509]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 06-197]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 2

[Docket No. 2003-T-009]
RIN 0651-AB56


Miscellaneous Changes to Trademark Trial and Appeal Board Rules

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rulemaking.

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SUMMARY: The United States Patent and Trademark Office (Office) 
proposes to amend its rules to require plaintiffs in Trademark Trial 
and Appeal Board (Board) inter partes proceedings to serve on 
defendants their complaints or claims; to utilize in Board inter partes 
proceedings a modified form of the disclosure practices included in the 
Federal Rules of Civil Procedure; and to delete the option of making 
submissions to the Board in CD-ROM form. In addition, certain 
amendments clarify rules, conform the rules to current practice, and 
correct typographical errors or deviations from standard terminology.

DATES: Comments must be received by March 20, 2006 to ensure 
consideration.

ADDRESSES: Submit comments by electronic mail (e-mail) to 
[email protected]. Written comments may be submitted by mail to: 
Trademark Trial and Appeal Board, P.O. Box 1451, Alexandria, VA 22313-
1451, attention Gerard F. Rogers; or by hand delivery to Trademark 
Assistance Center, Concourse Level, James Madison Building-East Wing, 
600 Dulany Street, Alexandria, Virginia, attention Gerard F. Rogers.
    Comments may also be sent by electronic mail message over the 
Internet via the Federal eRulemaking Portal. See the Federal 
eRulemaking Portal Web site (http://www.regulations.gov) for additional 
instructions on providing comments via the Federal eRulemaking Portal.

FOR FURTHER INFORMATION CONTACT: Gerard F. Rogers, Trademark Trial and 
Appeal Board, by telephone at (571) 272-4299, by e-mail to 
[email protected], or by facsimile at 571-273-0059.

SUPPLEMENTARY INFORMATION: The Office proposes to increase the 
efficiency of the processes for commencing inter partes cases, in light 
of the Board's deployment in recent years of electronic filing options 
and the increased availability and use of facsimile and e-

[[Page 2499]]

mail as methods of communication between parties involved in inter 
partes cases. Also, the Office proposes to increase the efficiency by 
which discovery and pre-trial information is exchanged between parties 
to inter partes cases, by adopting a modified form of the disclosure 
practice that is uniformly followed in the federal district courts. 
These practices have been found in the courts to enhance settlement 
prospects and to lead to earlier settlement of cases; and for cases 
that do not settle, disclosure has been found to promote greater 
exchange of information, leading to increased procedural fairness and a 
greater likelihood that cases eventually determined on their merits are 
determined on a fairly created record. Finally, in addition to the 
foregoing non-substantive changes to the rules, the Office proposes 
minor modifications necessary to make corrections or updates to certain 
rules and conform those rules to current practice.

Background

I. Commencement of Proceedings

    The current process by which a plaintiff in a Board proceeding 
files notice of its complaint (or claim of right to a concurrent use 
registration) requires the plaintiff to prepare as many copies of its 
complaint (or claim of right) as there will be defendants in the 
action. The plaintiff is then required to file the requisite copies 
with the original, for subsequent forwarding to the defendants. 
Occasionally, before the Board can forward the copies to the 
defendants, the plaintiff will have to engage in additional 
correspondence with the Board, to provide the Board with updated 
correspondence address information the plaintiff has uncovered in its 
investigation of the defendant's application, registration or mark, 
particularly in cancellation and concurrent use proceedings.
    Under the practice envisioned by the proposed rules, the initiation 
of a Board proceeding would become more efficient, because a plaintiff 
would be able to serve its copies directly on defendants. Use of a 
direct service approach recognizes that plaintiffs and defendants often 
are in contact prior to a plaintiff's filing of its complaint or claim, 
and also recognizes that continuation of such direct communication is 
vital both for promoting possible settlement of claims and for ensuring 
cooperation and procedural efficiency in the early stages of a 
proceeding.

(Plaintiffs in Board proceedings include an opposer that files a 
notice of opposition against an application, a petitioner that files 
a petition for cancellation of a registration, and a concurrent use 
applicant whose concurrent use application sets forth details about 
the concurrent use applicant's claim of entitlement to a concurrent 
use registration.)

    In recent years, the Board has deployed its ESTTA system, the 
Electronic System for Trademark Trials and Appeals, so that virtually 
all filings a party may need to submit to the Board can be submitted 
electronically. In addition, more and more parties to Board proceedings 
are choosing to utilize fax or e-mail options for communicating with 
each other during an inter partes proceeding, either in lieu of using 
the mail or in combination with use of the mail.
    Under the proposed rules changes, an opposer or petitioner would 
file its complaint with the Board and be required to concurrently serve 
a copy of its complaint (notice of opposition or petition for 
cancellation), including any exhibits, on the owner of record, or when 
applicable the attorney or domestic representative therefor, of the 
defending application or registration. A concurrent use applicant, 
however, would not have to serve copies of its application on any 
defending applicant, registrant or common law mark owner until 
notification of commencement of the concurrent use proceeding was 
issued by the Board, as discussed below.
    A plaintiff would be expected to serve the owner of record 
according to Office records, or the domestic representative of the 
owner of record, as well as any party the plaintiff believed had an 
ownership interest (e.g., an assignee or survivor of merger that had 
not recorded the document of transfer in the Office but was known to 
the plaintiff) at the correspondence address known to the plaintiff. 
The plaintiff would have to inform the Board of any service copies 
returned as undeliverable. As for a concurrent use applicant, current 
practice requires such party to provide, for forwarding by the Board, 
as many copies of its application as are necessary to forward one to 
each person or entity listed in the concurrent use application as an 
exception to the concurrent use applicant's rights. By these proposed 
changes to the trademark rules, the concurrent use applicant would 
directly serve the copies of its application on the excepted parties 
after notification by the Board that the concurrent use application was 
free of any opposition and the concurrent use proceeding therefore had 
been instituted. The concurrent use applicant would bear the same 
service obligations as an opposer or petitioner.
    The Board would, after an opposition or petition was filed, or a 
concurrent use application was published for opposition and free of any 
opposition, send notice to all parties to the proceeding, noting the 
filing of the complaint, or publication of the concurrent use 
application, and setting via such notice the due date for an answer, 
and the discovery and trial schedule. Notification from the Board may 
be sent by e-mail when a party has provided an e-mail address. This 
would include a plaintiff providing an e-mail address when filing by 
ESTTA or with its complaint, an applicant that authorized the Office to 
communicate with it by e-mail when it filed its application, and any 
registrant whose registration file record includes such authorization.
    A plaintiff may not serve its complaint or concurrent use 
application on a defendant by e-mail unless the defendant has agreed 
with the plaintiff to accept such service, notwithstanding that the 
defendant may have authorized the Office to communicate with it by e-
mail.
    Whenever a plaintiff has a service copy of a complaint or claim 
returned as undeliverable, it would have to inform the Board within 10 
days of the return and, if known, any new address information for the 
defendant whose service copy was returned to the plaintiff. Any 
undelivered notice from the Board of the commencement of a proceeding 
may result in notice by publication in the Official Gazette, available 
via the Office's Web site (http://www.uspto.gov), for any proceeding.

II. Adoption of Disclosure

    In 1993, significant amendments to the Federal Rules of Civil 
Procedure (federal rules) implemented a system requiring parties 
litigating in the federal courts to disclose certain information and/or 
documents and things without waiting for discovery requests. Individual 
district courts were permitted to opt out of the mandatory disclosure 
regime.
    In 2000, the federal rules were further amended, with elimination 
of the option for individual courts to opt out of mandatory disclosure 
among the most significant changes.
    By notice issued January 15, 1994 (and published in the Official 
Gazette at 1159 TMOG 14), the Board announced its decision not to 
follow many of the 1993 changes to the federal rules, including the 
disclosure regime established by Federal Rule 26. The Board 
subsequently amended the Trademark Rules of Practice (trademark

[[Page 2500]]

rules) in 1998. The original notice issued September 29, 1998 (and was 
published at 1214 TMOG 145) and a correction notice issued October 20, 
1998 (and was published at 1215 TMOG 64). While it did not adopt a 
disclosure practice as an element of these amendments, the Board noted 
that it would monitor recurring procedural issues in Board cases and 
might propose and adopt additional changes to practice in the future.
    Empirical study has shown that disclosure has been successful in 
the courts:

    In general, initial disclosure appears to be having its intended 
effects. Among those attorneys who believed there was an impact, the 
effects were most often of the type intended by the drafters of the 
1993 amendments. Far more attorneys reported that initial disclosure 
decreased litigation expense, time from filing to disposition, the 
amount of discovery, and the number of discovery disputes than said 
it increased them. At the same time, many more attorneys said 
initial disclosure increased overall procedural fairness, the 
fairness of the case outcome, and the prospects of settlement than 
said it decreased them.

    Thomas E. Willging, Donna Stienstra, John Shapard & Dean Miletich, 
An Empirical Study of Discovery and Disclosure Practice Under the 1993 
Federal Rule Amendments, 39 B.C.L. Rev. 525, 534-35 (May 1998).
    The Office has conducted a thorough review of the empirical study 
and available articles and reports on the subject of disclosure. The 
Office has concluded from such review that use of disclosure in Board 
proceedings, in a modified form of that used in the courts, would 
enhance the possibility of parties settling a Board proceeding and 
doing so sooner. In addition, disclosure will, if parties do not settle 
the case, promote more efficient discovery and trial, reduce incidents 
of unfair surprise, and increase the likelihood of fair disposition of 
the parties' claims and defenses. In large part, disclosure would serve 
as a substitute for a certain amount of traditional discovery and a 
more efficient means for exchange of information that otherwise would 
require the parties to serve traditional discovery requests and 
responses thereto.
    The Board's standard protective order would be applicable to all 
cases and the Board notice of the commencement of a proceeding would so 
indicate (and would note the availability of the standard protective 
order on the Office's Web site or in hard copy form, by request made to 
the Board). The applicability of this standard protective order would 
not make all submissions confidential, as parties would still have to 
utilize its provisions as necessary. As under current practice, parties 
would be free to agree to modify the standard protective order. Absent 
approval of a stipulation to vary the terms of the standard protective 
order, approved by the Board, the parties would have to abide by it.
    The parties may agree to use e-mail to communicate with each other 
and for forwarding of service copies.
1. The Schedule for Cases Under Disclosure
    The Board's notice of the commencement of the proceeding (commonly 
referred to as the institution order) will set forth disclosure-related 
deadlines, as illustrated below.
    The institution order will set forth specific dates for the various 
phases in a case. Since each deadline or phase is measured from the 
date of the institution order, the parentheticals explain the total 
number of days, as measured from that date, until each deadline:
    Due date for an answer--40 days from the mailing date of 
institution order. (Institution date plus 40 days.)
    Deadline for a discovery conference--30 days from the date the 
answer is due. (Institution date plus 70 days.)
    Discovery opens--30 days after the date the answer is due. 
(Institution date plus 70 days.)
    Deadline for making initial disclosures--30 days from the opening 
of the discovery period. (Institution date plus 100 days.)
    Expert disclosure--90 days prior to close of discovery (the mid-
point of the 180-day discovery period). (Institution date plus 160 
days.)
    Discovery closes--180 days from the opening date of the discovery 
period. (Institution date plus 250 days.)
    Pre-Trial disclosures--30 days after the close of the discovery 
period. (Institution date plus 280 days.)
    Plaintiff's 30-day testimony period--closes 90 days after the close 
of discovery. (Institution date plus 340 days.)
    Defendant's 30-day testimony period--closes 60 days after the close 
of plaintiff's testimony period. (Institution date plus 400 days.)
    Plaintiff's 15-day rebuttal testimony period--closes 45 days from 
close of defendant's testimony period. (Institution date plus 445 
days.)
    Under this schedule, discovery generally opens after the discovery 
conference, unless the parties defer their discovery conference to the 
deadline date, in which case discovery would open concurrently with the 
conference.
    The deadline for making initial disclosures is similar to that of 
Federal Rule 26(a)(1), except that disclosure under the federal rule is 
measured from the actual date of, not the deadline for, the discovery 
conference. Plus, the Board approach provides a longer period for 
making disclosures than is provided under the federal rules. This will 
accommodate the possibility of motions to suspend for settlement talks, 
which are quite common in Board proceedings.
    The length of the discovery period is the same as under current 
Board practice, i.e., 180 days. Disclosures would be made no later than 
30 days into that period and the parties would have another 150 days 
for any necessary additional discovery. The trial schedule, with its 
60-day break between discovery and trial and 30-day breaks between the 
respective testimony periods, is also the same as under current Board 
practice.
    Because disclosure is tied to claims and defenses, in general, a 
defendant's default or the filing of various pleading motions under 
Federal Rule 12 would effectively stay the parties' obligation to 
conference and make initial disclosures. An answer must be filed and 
issues related to the pleadings resolved before the parties can know 
the extent of claims and defenses and, therefore, the extent of their 
initial disclosure obligations.
    The Board anticipates it will be liberal in granting extensions or 
suspensions of time to answer, when requested to accommodate settlement 
talks, or submission of the dispute to an arbitrator or mediator. 
However, if a motion to extend or suspend for settlement talks, 
arbitration or mediation is not filed prior to answer, then the parties 
will have to proceed, after the filing of the answer, to their 
discovery conference, one point of which is to discuss settlement. It 
is unlikely the Board will find good cause for a motion to extend or 
suspend for settlement when the motion is filed after answer but prior 
to the discovery conference, precisely because the discovery conference 
itself provides an opportunity to discuss settlement.
    The parties' discovery conference may be in person or by other 
means. A Board professional, i.e., an Interlocutory Attorney or an 
Administrative Trademark Judge, will participate in the conference upon 
the request of any party; but if the parties propose to meet in person, 
participation by a Board professional would be by telephone, by 
arrangement of the parties. A request for the participation of a Board 
professional may only be made after answer is filed but in no event 
later than 10 days prior

[[Page 2501]]

to the deadline for conducting the discovery conference. If neither 
party requests participation of a Board professional in the discovery 
conference, the Board will assume that the parties have met on their 
own, in person or by other means, no later than the prescribed 
deadline. The parties would not have to file a disclosure/discovery 
plan with the Board, following their discovery conference, unless they 
were seeking leave to alter standard deadlines/obligations; or unless 
they were so directed by a participating Board professional.
    There is no Federal Rule 16(b) scheduling conference/order. The 
Board's institution order will already have set a schedule for the 
case.
    Disclosure deadlines and obligations may be modified upon 
stipulation of the parties approved by the Board, or upon motion 
granted by the Board, or by order of the Board. If a stipulation or 
motion is denied, dates may remain as set. The Board is likely to 
employ rather strict time frames for filing such stipulations or 
motions and may routinely employ phone conferences when any request to 
alter disclosure obligations or deadlines is made by unilateral rather 
than consented motion.

2. The Interplay of Disclosure and Discovery

    A party may not seek discovery through traditional devices until 
after it has made its disclosures. A party may not move for summary 
judgment except on claim or issue preclusion grounds until after it has 
made its disclosures.
    The number of interrogatories will be limited to reflect the fact 
that core information (as discussed below) will be disclosed and 
interrogatories will not be needed to obtain this information.
    Initial disclosure should be much more limited in Board cases than 
it is in civil actions. For a variety of reasons related to the unique 
nature of Board proceedings, the extent of initial disclosure can be 
more limited than in the courts while still promoting the goals of 
increased fairness and efficiency.
    One reason is that the Board's jurisdiction is limited to 
determining the right of a party to obtain, or retain, a registration, 
and the extent of available claims and defenses that may be advanced is 
not nearly as broad as in the district courts. In addition, the Board 
recognizes the existence of other issues relatively unique to Board 
proceedings, for example, that a high percentage of applications 
involved in oppositions are not based on use of the applied-for mark in 
commerce, but rather, on intent to use, on a foreign registration or on 
an international registration. Further, certain precepts that govern 
analysis of issues raised by claims or defenses in typical Board cases 
effectively limit the Board's focus. For example, in a case under 
Section 2(d) of the Trademark Act, 15 U.S.C. 1052(d), the Board focuses 
only on goods or services recited in identifications, and on a mark as 
registered or applied-for, irrespective of many actual marketplace 
issues.
    Federal Rule 26(a)(1) requires initial disclosure as a means of 
obviating the need to use traditional discovery to obtain ``core 
information'' about a party's claims or defenses. The federal rule is 
written very generally to account for the wide variety of types of 
cases tried in the federal district courts; even under the federal 
rule, however, a party is not obligated under initial disclosure to 
disclose every fact, document or thing that is considered discoverable 
about its claim or defense, but merely the ``information that the 
disclosing party may use to support its claims or defenses.'' Further, 
disclosure focuses on exchange of ``core information'' and does not 
substitute for comprehensive discovery.
    In inter partes proceedings before the Board, parties will 
generally be found to have met their initial disclosure obligations if 
they provide information about the following, as applicable in any 
particular case:

    Origin of any mark on which the party relies, including adoption 
or creation of the mark and original plans for use of the mark;
    Dates of use of any marks, registered or not, on which the 
party's claims or defenses rely;
    The extent of past or current use, if any, or plans for future 
use of any marks on which claims or defenses rely, including use by 
the party or by licensees;
    Evidence of actual confusion possessed by a party in regard to 
the involved marks;
    The party's awareness of third-party use or registration of 
marks that are the same or very similar for goods or services the 
same as or closely related to the involved marks and goods or 
services;
    The extent of use by the party, if any, in a non-trademark 
manner of words or designs asserted by that party to be non-
distinctive;
    A party's awareness of use of involved words or designs by third 
parties when the party is asserting that such words or designs are 
non-distinctive;
    Classes of customers for the party's involved goods or services, 
including information on the technical expertise or knowledge 
employed by customers in making purchasing decisions;
    Channels of trade for the party's involved goods or services;
    Methods of marketing and promoting the party's involved goods or 
services;
    Surveys or market research conducted by the party in regard to 
any involved mark on which it will rely;
    Information regarding other Board proceedings, litigation, or 
controversies in which the party has been involved, which were 
related to the involved marks or, if applicable, assertedly non-
distinctive matter;
    The names of individual officials or employees of a party, and 
contact information therefor, who are known to have the most 
extensive knowledge of subjects on which disclosure is made; and
    General descriptions of and the probable locations of non-
privileged documents and things maintained by the party or its 
attorneys related to the subjects on which disclosure is made.


The Board recognizes that the language used herein to describe subjects 
for which there must be initial disclosure, unless inapplicable in a 
particular case, may be subject to dispute. Parties are expected, 
however, to read the descriptions in light of the intended goals for 
disclosure and in a reasonable manner, and without engaging in 
artificial attempts to limit disclosure through arcane interpretation.
    The Board also recognizes that the specificity of information 
released by a party to comply with its disclosure obligations may be 
subject to dispute. This is, however, one of the issues that must be 
anticipated and discussed by the parties during their discovery 
conference. In addition, the parties are free to discuss additional 
subjects for which disclosure should be made, or subjects which they do 
not believe should require disclosure because they are insignificant or 
not in genuine dispute.
    Finally, the Board recognizes that a disclosure obligation may be 
met, in regard to some subjects, by providing summary information, 
round numbers, or representative samples. To emphasize, initial 
disclosure is not intended to substitute for all discovery, but rather, 
to prompt routine disclosure of core information that a party may use 
to support a claim or defense. Any adverse party is free to take 
discovery on subjects that will undermine a claim or defense.
    Written disclosures may be used in support of or in opposition to a 
motion for summary judgment and may, at trial, be introduced by notice 
of reliance. Disclosed documents also may be used to support or contest 
a motion for summary judgment but, at trial, they may be introduced by 
notice of reliance only if otherwise appropriate for such filing. In 
essence, initial disclosures will be treated like responses to written 
discovery.

[[Page 2502]]

3. Expert Disclosure and Pre-trial Disclosure
    A party's plan to use experts must be disclosed no later than 90 
days prior to the close of discovery, so that any adverse party will 
have an opportunity to take necessary discovery. However, if the expert 
is retained early and an adverse party has inquired about experts 
through discovery, the party may not delay revealing the expert until 
the deadline for disclosure of experts. Also, the Board recognizes that 
there may be cases in which a party retains an expert after the 
deadline for expert disclosure. In such cases, disclosure must be made 
promptly when the expert is retained.
    Pretrial disclosure will require disclosure of the identity of 
witnesses that a party expects to present, or may present if the need 
arises. For each witness, general summaries or descriptions of the 
subjects on which the witness will testify and the documents or things 
to be introduced during the deposition must be disclosed. These 
disclosures must be made 30 days prior to the opening of trial. A party 
may object to improper or inadequate pre-trial disclosures and may move 
to strike the testimony of a witness for lack of proper pre-trial 
disclosure.
    Pretrial disclosure of plans to file notices of reliance is not 
required. The notice of reliance is a device for introduction of 
evidence that is unique to Board proceedings. There are established 
practices covering what can be introduced, how it must be introduced, 
and for objecting to, or moving to strike, notices or material attached 
thereto. There is less opportunity for surprise or trial by ambush with 
notices of reliance, because they are most often used to introduce 
discovery responses obtained from an adversary, or printed publications 
in general circulation, or government documents generally available to 
all parties.

III. Removal of Option To Make Submissions on CD-ROM

    The Office proposes to remove from Trademark Rule 2.126, 37 CFR 
2.126, the option to file submissions in CD-ROM form. CD-ROMs present 
technical problems for the ESTTA/TTABIS systems and have rarely been 
utilized by parties.

IV. Change to Rule on Briefing of Motions

    The Office proposes to amend Trademark Rule 2.127, 37 CFR 2.127, to 
clarify that a table of contents, index of cases, description of 
record, statement of the issues, recitation of facts, argument and 
summary, whichever a party may choose to employ, all count against the 
limit of 25 pages for a brief in support of a motion or in response to 
a motion and the limit of 10 pages for a reply brief.

Discussion of Specific Rules

    The Office proposes to make the following amendments:
[2.99(b) to (d)]
    The Office proposes to revise Sec.  2.99(b), (c) and (d)(1) by 
shifting applicant's time to furnish copies of applicant's application, 
specimens and drawing until after the Board's notification of the 
proceeding; and to indicate that the Office may transmit the 
notification of proceedings via e-mail to any party that has provided 
an e-mail address.
[2.101(a), (b) and (d)]
    The Office proposes to revise Sec.  2.101(a) to specify that proof 
of service on applicant at the correspondence address of record must be 
included with the filing of the notice of opposition.
    The Office proposes to revise Sec.  2.101(b) to define the phrase 
``correspondence address of record''; and to specify the steps opposer 
should take if opposer believes that the correspondence address of 
record is not accurate, or if the service copy of the notice of 
opposition is returned as undeliverable to opposer.
    The Office proposes to revise Sec.  2.101(d)(4) to add to the 
requirements for receiving a filing date for the notice of opposition 
the inclusion of proof of service on applicant at the correspondence 
address of record.
[2.105(a) and 2.105(c)]
    The Office proposes to revise Sec.  2.105(a) to cross-reference 
rules concerning proper form and proper service; and to indicate that 
the Office may transmit the notification of proceedings via e-mail to 
any party that has provided an e-mail address.
    The Office proposes to revise Sec.  2.105(c) introductory text to 
shift to plaintiffs the responsibility for service of the complaint 
directly on defendants, rather than through the Board.
[2.111(a) to (c)]
    The Office proposes to revise Sec.  2.111(a) to specify that proof 
of service on the owner of record for the registration, or the owner's 
domestic representative of record, at the correspondence address of 
record must be included with the filing of the petition to cancel, 
along with the required fee.
    The Office proposes to revise Sec.  2.111(b) to define the phrase 
``correspondence address of record'; and to specify the steps 
petitioner should take if petitioner believes that the correspondence 
address of record is not accurate, or if the service copy of the 
petition to cancel is returned as undeliverable to petitioner.
    The Office proposes to revise Sec.  2.111(c)(4) to add to the 
requirements for receiving a filing date for the petition to cancel the 
inclusion of proof of service on the owner of record or on the owner's 
domestic representative of record, at the correspondence address of 
record.
[2.113(a) and (c)]
    The Office proposes to revise Sec.  2.113(a) to clarify that the 
answer must be filed by the respondent; and to indicate that the Office 
may transmit the notification of proceedings via e-mail to any party 
that has provided an e-mail address.
    The Office proposes to revise Sec.  2.113(c) to shift to plaintiffs 
the responsibility for service of the complaint directly on defendants, 
rather than through the Board.
[2.113(e)] [remove]
    The Office proposes to remove Sec.  2.113(e) to conform the rule to 
the existing practice whereby the Office no longer advises petitioners 
of defective petitions to allow for correction of defects.
[2.116(g)] [add]
    The Office proposes to add new paragraph (g) to Sec.  2.116. 
Proposed Sec.  2.116(g) provides that the Board's standard protective 
order, available via the Office's Web site or upon request made to the 
Board, is applicable to all inter partes proceedings, unless the 
parties agree to, and the Board approves, an alternative protective 
order, or unless a motion by a party to enter a specific protective 
order is granted by the Board.
[2.118]
    The Office proposes to revise Sec.  2.118 to extend its coverage to 
applicants as well as registrants, so as to allow for service of 
additional notice of a proceeding, by publication in the Official 
Gazette, when a notice mailed to an applicant is returned as 
undeliverable.
[2.119(a) and (b)]
    The Office proposes to revise Sec.  2.119(a) by changing ``Patent 
and Trademark Office'' to ``United States

[[Page 2503]]

Patent and Trademark Office;'' by making the singular ``notice of 
appeal'' the plural ``notices of appeal;'' and by striking out the list 
of filings that are exceptions to the general requirement that a party 
to a Board proceeding serve its filings on its adversary. The last of 
these changes will accommodate the Board's shift to service by 
plaintiffs on defendants, rather than through the Board, at the 
commencement of a proceeding.
    The Office proposes to revise Sec.  2.119(b) by adding subsection 
(6), which will allow parties to meet their service obligations by 
utilizing fax or e-mail, upon agreement of the parties.
[2.120(a), (d) through (j)]
    The Office proposes to revise Sec.  2.120(a)(1) to include detailed 
provisions regarding the requirements for a discovery conference and 
for initial and expert disclosures in lieu of discovery.
    The Office proposes to revise Sec.  2.120(d)(1) to limit the number 
of interrogatories a party may serve to 25; and to clarify that a 
motion or stipulation of the parties to allow interrogatories in excess 
of the limit requires approval of the Board.
    The Office proposes to revise Sec.  2.120(e) so that provisions 
regarding a motion for an order to compel will apply to discovery and 
disclosures in lieu of discovery.
    The Office proposes to revise Sec.  2.120(f) so that provisions 
regarding a motion for a protective order will apply to discovery and 
disclosures in lieu of discovery.
    The Office proposes to revise Sec.  2.120(g) so that provisions 
regarding a motion for sanctions may apply to a party's non-
participation in the discovery conference, to a party's failure to 
comply with its disclosure obligations, and to its failure to comply 
with its discovery obligations; and to specify a deadline for filing a 
motion for sanctions for failure of a party to participate in the 
discovery conference.
    The Office proposes to revise Sec.  2.120(h)(2) to specify that the 
filing of a motion to test the sufficiency of responses to requests for 
admissions shall not toll the time for a party to comply with 
disclosure obligations, to respond to outstanding discovery requests, 
or to appear for a noticed deposition.
    The Office proposes to revise Sec.  2.120(i) to clarify the 
language in paragraph (i)(1), to conform titles used in paragraph 
(i)(2) to existing titles, and to specify that the existing provision 
through which the Board may require parties to attend a conference at 
the Board's offices can involve discovery or disclosure issues.
    The Office proposes to revise Sec.  2.120(j)(3) and (5) through (8) 
to provide that disclosures and disclosed documents shall be treated in 
essentially the same manner as information and documents obtained 
through discovery requests; and to remove a reference to a past 
practice of the Board whereby it would return to parties filings 
related to discovery that should not have been filed with the Board.
[2.121(a) and (d)]
    The Office proposes to revise Sec.  2.121(a) to provide for a 
deadline for pre-trial disclosures and for testimony periods.
    The Office proposes to revise Sec.  2.121(d) to account for the 
resetting of the pre-trial disclosure deadline and testimony periods.
[2.121(e)] [add]
    The Office proposes to add Sec.  2.121(e) to explain what is 
required of a party making pre-trial disclosures.
[2.122(d)]
    The Office proposes to revise Sec.  2.122(d)(1) to conform to 
existing practice by removing the requirement for an opposer or 
petitioner to file two copies when making a pleaded registration of 
record with a notice of opposition or petition for cancellation.
[2.123(e)]
    The Office proposes to revise Sec.  2.123(e)(3) to provide that a 
party may object to improper or inadequate pre-trial disclosures and 
may move to strike the testimony of a witness for lack of proper pre-
trial disclosure.
[2.126(a)]
    The Office proposes to revise Sec.  2.126(a)(6) to reflect the 
proposed removal of Sec.  2.126(b).
[2.126(b)] [remove]
    The Office proposes to remove Sec.  2.126(b), which allows a party 
to make submissions on CD-ROM.
[2.127(a), (c) and (e)]
    The Office proposes to revise Sec.  2.127(a) to clarify the 
provisions relating to briefing of motions and to conform them to 
existing practice.
    The Office proposes to revise Sec.  2.127(c) to update titles and 
to correct a typographical error.
    The Office proposes to revise Sec.  2.127(e) to provide that a 
party may not file a motion for summary judgment before it has made its 
initial disclosures; and to provide that a party may submit disclosures 
and disclosed documents when briefing a motion for summary judgment.
[2.129(a)]
    The Office proposes to revise Sec.  2.129(a) to update titles.
[2.133(a) and (b)]
    The Office proposes to revise Sec. Sec.  2.133(a) and (b) to 
conform to current practices related to amendment of an application or 
registration involved in an inter partes proceeding.
[2.142(e)]
    The Office proposes to revise Sec.  2.142(e)(1) to update titles.
[2.173(a)]
    The Office proposes to revise Sec.  2.173(a) to conform to current 
practices related to amendment of a registration involved in an inter 
partes proceeding.
[2.176]
    The Office proposes to revise Sec.  2.176 to conform to current 
practices related to amendment of a registration involved in an inter 
partes proceeding.

Rulemaking Requirements

I. Executive Order 13132

    This rulemaking does not contain policies with federalism 
implications sufficient to warrant preparation of a Federalism 
Assessment under Executive Order 13132 (Aug. 4, 1999).

II. Executive Order 12866

    This rulemaking has been determined not to be significant for 
purposes of Executive Order 12866 (Sept. 30. 1993).

III. Regulatory Flexibility Act

    The United States Patent and Trademark Office (Office) is amending 
its rules in 37 CFR Part 2 governing initiation of inter partes 
proceedings at the Trademark Trial and Appeal Board (Board) and the 
prosecution and defense of such proceedings, and making corrections or 
modifications that conform rules to current practice. There are no new 
fees or fee changes associated with any of the proposed rules.
    The changes in this proposed rule involve interpretive rules, or 
rules of agency practice and procedure, and prior notice and an 
opportunity for public comment are not required pursuant to 5 U.S.C. 
553(b)(A) (or any other law). Because prior notice and an opportunity 
for public comment are not required for the changes in this proposed 
rule, a Regulatory Flexibility

[[Page 2504]]

Act analysis is also not required for the changes proposed in this 
rule. See 5 U.S.C. 603. Nevertheless, the Office is publishing this 
notice of proposed rulemaking in the Federal Register and in the 
Official Gazette of the United States Patent and Trademark Office, in 
order to solicit public participation with regard to this rule package.
    The primary changes in this rule are: (1) plaintiffs will serve 
certain papers (complaints or claims of right to a concurrent use 
registration) directly on defendants, and (2) parties will exchange 
core information supporting their claims or defenses and identify 
expert witnesses to be used during Board proceedings, as part of the 
discovery phase, and will disclose the identity of witnesses the party 
expects to call during a pre-trial phase.
    These proposed rules will not have a significant economic impact on 
large or small entities. With regard to the first change, very little 
(if any) additional cost is associated with the rules because 
plaintiffs must currently serve these papers on the Office, which, in 
turn, serves the papers on the defendants. Changing the recipient of 
the papers will not have a significant economic impact on any party to 
a Board proceeding. With regard to the second change, very little (if 
any) additional cost is associated with these rules because under 
current Board procedures, parties are obligated to provide almost all 
of this information, when requested through discovery. This rule simply 
affects when the information is exchanged and eliminates the need for a 
party to incur expenses associated with preparing requests for the 
information.
    The proposed rules also contemplate many instances in which parties 
may avoid disclosure obligations otherwise provided for by the rules. 
For example, if a case is suspended to allow the parties to discuss 
settlement, as occurs in the vast majority of Board cases, no 
disclosure would be required during settlement talks. In addition, 
parties can stipulate, subject to approval of the Board, that 
disclosure is not necessary in a particular case and can specify their 
own plans for exchanging information.

IV. Paperwork Reduction Act

    The proposed amendments to the Trademark Trial and Appeal Board 
Rules do not impose any collection of information requirements within 
the meaning of the Paperwork Reduction Act of 1995 (44 U.S.C. 3501, et 
seq.) (PRA). Accordingly, the PRA does not apply to these proposed 
amendments.

List of Subjects in 37 CFR Part 2

    Administrative practice and procedure, Trademarks.

    For the reasons given in the preamble and under the authority 
contained in 35 U.S.C. 2 and 15 U.S.C. 1123, as amended, the Office 
proposes to amend part 2 of title 37 as follows:

PART 2--RULES OF PRACTICE IN TRADEMARK CASES

    1. The authority citation for 37 CFR part 2 continues to read as 
follows:

    Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.

    2. Revise Sec.  2.99(b), (c) and (d)(1) to read as follows:


Sec.  2.99  Application to register as concurrent user.

* * * * *
    (b) If it appears that the applicant is entitled to have the mark 
registered, subject to a concurrent use proceeding, the mark will be 
published in the Official Gazette as provided by Sec.  2.80.
    (c) If no opposition is filed, or if all oppositions that are filed 
are dismissed or withdrawn, the Trademark Trial and Appeal Board will 
send a notification to the applicant for concurrent use registration 
(plaintiff) and to each applicant, registrant or user specified as a 
concurrent user in the application (defendant). The notification for 
each defendant shall state the name and address of the plaintiff and of 
the plaintiff's attorney or other authorized representative, if any, 
together with the serial number and filing date of the application. If 
a party has provided the Office with an e-mail address, the 
notification may be transmitted via e-mail.
    (d)(1) The applicant for concurrent use registration will be 
required to serve copies of its application, specimens and drawing on 
each applicant, registrant or user specified as a concurrent user in 
the application for registration, within ten days from the date of the 
Board's notification.
* * * * *
    3. Revise Sec.  2.101(a), (b) and (d)(4) to read as follows:


Sec.  2.101  Filing an opposition.

    (a) An opposition proceeding is commenced by filing in the Office a 
timely opposition, with proof of service on the applicant at the 
correspondence address of record, and the required fee.
    (b) Any person who believes that he, she or it would be damaged by 
the registration of a mark on the Principal Register may file an 
opposition addressed to the Trademark Trial and Appeal Board and must 
serve a copy of the opposition, including any exhibits, on the attorney 
for the applicant of record or, if there is no attorney, on the 
applicant or on the applicant's domestic representative, if one has 
been appointed, utilizing the correspondence address of record. The 
opposer must include with the opposition proof of service pursuant to 
Sec.  2.119 at the correspondence address of record. If the opposer 
believes that the applicant of record or correspondence address of 
record is not accurate or current, the opposer should serve an 
additional copy of the opposition and exhibits on any party, or the 
party's attorney or domestic representative, that the opposer has 
reason to believe may be the correct applicant, or its successor-in-
interest, and must also include with its opposition proof of such 
service. If any service copy of the opposition is returned to the 
opposer as undeliverable, the opposer should notify the Board within 
ten days. The opposition need not be verified, but must be signed by 
the opposer or the opposer's attorney, as specified in Sec.  10.1(c) of 
this chapter, or other authorized representative, as specified in Sec.  
10.14(b) of this chapter. Electronic signatures pursuant to Sec.  
2.192(c)(1(iii) are required for oppositions filed under paragraphs (b) 
(1) or (2) of this section.
* * * * *
    (d) * * *
    (4) The filing date of an opposition is the date of receipt in the 
Office of the opposition, with proof of service on the applicant of 
record, at the correspondence address of record, and the required fee, 
unless filed in accordance with Sec.  2.198.
    4. Revise Sec.  2.105(a) and the introductory text of paragraph (c) 
to read as follows:


Sec.  2.105  Notification to parties of opposition proceeding(s).

    (a) When an opposition in proper form (see Sec. Sec.  2.101 and 
2.104), with proof of service in accordance with Sec.  2.101(b), has 
been filed and the correct fee has been submitted, the Trademark Trial 
and Appeal Board shall prepare a notification, which shall identify the 
title and number of the proceeding and the application involved and 
shall designate a time, not less than thirty days from the mailing date 
of the notification, within which an answer must be filed. If a party 
has provided the Office with an e-mail address, the notification may be 
transmitted via e-mail.
* * * * *

[[Page 2505]]

    (c) The Board shall forward a copy of the notification to 
applicant, as follows:
* * * * *
    5. Revise Sec.  2.111(a), (b) and (c)(4) to read as follows:


Sec.  2.111  Filing petition for cancellation.

    (a) A cancellation proceeding is commenced by filing in the Office 
a timely petition for cancellation with the required fee. The petition 
must include proof of service on the owner of record for the 
registration, or the owner's domestic representative of record, at the 
correspondence address of record.
    (b) Any person who believes that he, she or it is or will be 
damaged by a registration may file a petition, addressed to the 
Trademark Trial and Appeal Board, for cancellation of the registration 
in whole or in part. Petitioner must serve a copy of the petition, 
including any exhibits, on the owner of record for the registration, or 
on the owner's domestic representative of record, at the correspondence 
address of record. The petitioner must include with the petition for 
cancellation proof of service, pursuant to Sec.  2.119, on the owner of 
record, or on the owner's domestic representative of record, at the 
correspondence address of record. If the petitioner believes that the 
owner of record, the domestic representative of record, or the 
correspondence address of record is not accurate or current, the 
petitioner should serve an additional copy of the petition and exhibits 
on any party, or the representative therefor, that the petitioner has 
reason to believe may be the correct owner or successor-in-interest and 
must also include with its petition proof of such service. If any 
service copy of the petition for cancellation is returned to the 
petitioner as undeliverable, the petitioner should notify the Board 
within ten days.
    (c) * * *
    (4) The filing date of a petition for cancellation is the date of 
receipt in the Office of the petition for cancellation, with proof of 
service on the owner of record, or on the owner's domestic 
representative of record, at the correspondence address of record, and 
with the required fee, unless filed in accordance with Sec.  2.198.
    6. Remove Sec.  2.113(e) and revise Sec.  2.113 (a) and (c) to read 
as follows:


Sec.  2.113  Notification of cancellation proceeding.

    (a) When a petition for cancellation has been filed in proper form 
(see Sec. Sec.  2.111 and 2.112), the Trademark Trial and Appeal Board 
shall prepare a notification which shall identify the title and number 
of the proceeding and the registration(s) involved and shall designate 
a time, not less than thirty days from the mailing date of the 
notification, within which an answer must be filed by the respondent. 
If a party has provided the Office with an e-mail address, the 
notification may be transmitted via e-mail.
* * * * *
    (c) The Board shall forward a copy of the notification to the 
respondent (see Sec.  2.118). The respondent shall be the party shown 
by the records of the Office to be the current owner of the 
registration(s) sought to be cancelled, except that the Board, in its 
discretion, may join or substitute as respondent a party who makes a 
showing of a current ownership interest in such registration(s).
* * * * *
    7. Add Sec.  2.116(g) to read as follows:


Sec.  2.116  Federal Rules of Civil Procedure.

* * * * *
    (g) The Trademark Trial and Appeal Board's standard protective 
order is applicable during disclosure, discovery and at trial in all 
opposition, cancellation, interference and concurrent use registration 
proceedings, unless the parties, by stipulation approved by the Board, 
agree to an alternative order. The standard protective order is 
available at the Office's Web site, or upon request, a copy will be 
provided. No material disclosed or produced by a party, presented at 
trial, or filed with the Board, including motions or briefs which 
discuss such material, shall be treated as confidential or shielded 
from public view unless designated as protected under the Board's 
standard protective order, or under an alternative order stipulated to 
by the parties and approved by the Board, or under an order submitted 
by motion of a party granted by the Board.
    8. Revise Sec.  2.118 to read as follows:


Sec.  2.118  Undelivered Office notices.

    When a notice sent by the Office to any registrant or applicant is 
returned to the Office undelivered, additional notice may be given by 
publication in the Official Gazette for the period of time prescribed 
by the Director.
    9. Revise Sec.  2.119(a) and add paragraph (b)(6) to read as 
follows:


Sec.  2.119  Service and signing of papers.

    (a) Every paper filed in the United States Patent and Trademark 
Office in inter partes cases, including notices of appeal, must be 
served upon the other parties. Proof of such service must be made 
before the paper will be considered by the Office. A statement signed 
by the attorney or other authorized representative, attached to or 
appearing on the original paper when filed, clearly stating the date 
and manner in which service was made will be accepted as prima facie 
proof of service.
    (b) * * *
    (6) Electronic transmission when mutually agreed upon by the 
parties.
* * * * *
    10. Revise paragraphs (a)(d)(1), (e), (f), (g), (h)(2), (i), (j)(3) 
and (j)(5) through (8) to read as follows:


Sec.  2.120  Discovery.

    (a) In general. (1) Wherever appropriate, the provisions of the 
Federal Rules of Civil Procedure relating to disclosure and 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 
applicable to Board proceedings in modified form, as noted in these 
rules and further explained in documents posted on the Web site of the 
Office. The Trademark Trial and Appeal Board will specify the deadline 
for a discovery conference, the opening and closing dates for the 
taking of discovery, and the deadlines within the discovery period for 
making initial disclosures and expert disclosure. The trial order 
setting these deadlines and dates will be included with the notice of 
institution of the proceeding.
    (2) The discovery conference shall occur no later than the opening 
of the discovery period. A Board Interlocutory Attorney or 
Administrative Trademark Judge will participate in the conference upon 
request of any party made after answer but no later than 10 days prior 
to the deadline for the conference. The discovery period will be set 
for a period of 180 days. Initial disclosures shall be made no later 
than 30 days after the opening of the discovery period. Expert 
disclosure shall occur no later than 90 days prior to the close of the 
discovery period or, if the expert is retained after the deadline for 
disclosure of experts, promptly upon retention of the expert. 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. Disclosure

[[Page 2506]]

deadlines and obligations may be modified upon written stipulation of 
the parties approved by the Board, or upon motion granted by the Board, 
or by order of the Board. If a stipulation or motion for modification 
is denied, disclosure deadlines may remain as originally set or reset 
and obligations may remain unaltered.
    (3) A party must make its initial disclosures prior to seeking 
discovery, absent modification of this requirement by a stipulation of 
the parties approved by the Board, or upon a motion granted by the 
Board, or by order of the Board. 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.
    (d) Interrogatories; request for production. (1) The total number 
of written interrogatories which a party may serve upon another party 
pursuant to Rule 33 of the Federal Rules of Civil Procedure, in a 
proceeding, shall not exceed twenty-five, counting subparts, except 
that the Trademark Trial and Appeal Board, in its discretion, may allow 
additional interrogatories upon motion therefor showing good cause, or 
upon stipulation of the parties, approved by the Board. A motion for 
leave to serve additional interrogatories must be filed and granted 
prior to the service of the proposed additional interrogatories and 
must be accompanied by a copy of the interrogatories, if any, which 
have already been served by the moving party, and by a copy of the 
interrogatories proposed to be served. If a party upon which 
interrogatories have been served believes that the number of 
interrogatories served exceeds the limitation specified in this 
paragraph, and is not willing to waive this basis for objection, the 
party shall, within the time for (and instead of) serving answers and 
specific objections to the interrogatories, serve a general objection 
on the ground of their excessive number. If the inquiring party, in 
turn, files a motion to compel discovery, the motion must be 
accompanied by a copy of the set(s) of the interrogatories which 
together are said to exceed the limitation, and must otherwise comply 
with the requirements of paragraph (e) of this section.
* * * * *
    (e) Motion for an order to compel disclosure or discovery. (1) If a 
party fails to make required initial disclosures or expert disclosure, 
or 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 entitled to disclosure or seeking discovery may file a motion 
before the Trademark Trial and Appeal Board for an order to compel 
disclosure, a designation, or attendance at a deposition, or an answer, 
or production and an opportunity to inspect and copy. A motion to 
compel disclosure must be filed prior to the close of the discovery 
period. A motion to compel discovery must be filed prior to the 
commencement of the first testimony period as originally set or as 
reset. A motion to compel discovery 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. A motion to compel disclosure or 
discovery 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 but 
the parties were unable to resolve their differences. 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 disclosure 
or 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 disclosure or discovery shall not toll the 
time for a party to comply with any disclosure requirement or to 
respond to any outstanding discovery requests or to appear for any 
noticed discovery deposition.
    (f) Motion for a protective order. Upon motion by a party obligated 
to make disclosures or from whom discovery is sought, and for good 
cause, the Trademark Trial and Appeal Board may make any order which 
justice requires to protect a party from annoyance, embarrassment, 
oppression, or undue burden or expense, including one or more of the 
types of orders provided by clauses (1) through (8), inclusive, of Rule 
26(c) of the Federal Rules of Civil Procedure. If the motion for a 
protective order is denied in whole or in part, the Board may, on such 
conditions (other than an award of expenses to the party prevailing on 
the motion) as are just, order that any party comply with disclosure 
obligations or provide or permit discovery.
    (g) Sanctions. (1) If a party fails to participate in the required 
discovery conference, or if a party fails to comply with an order of 
the Trademark Trial and Appeal Board relating to disclosure or 
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. A motion for sanctions to be imposed against 
a party for its failure to participate in the required discovery 
conference must be filed prior to the deadline for any party to make 
initial disclosures.
    (2) If a party fails to make required disclosures, and such party 
or the party's attorney or other authorized representative informs the 
party or parties entitled to receive disclosures that required 
disclosures will not be made, the Board may make any appropriate order, 
as specified in paragraph (g)(1) of this section. If a party, or an 
officer, director, or managing agent of a party, or a person designated 
under Rule 30(b)(6) or 31(a)

[[Page 2507]]

of the Federal Rules of Civil Procedure to testify on behalf of a 
party, fails to attend the party's or person's discovery deposition, 
after being served with proper notice, or fails to provide any response 
to a set of interrogatories or to a set of requests for production of 
documents and things, and such party or the party's attorney or other 
authorized representative informs the party seeking discovery that no 
response will be made thereto, the Board may make any appropriate 
order, as specified in paragraph (g)(1) of this section.
    (h) * * *
    (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 party to comply with any 
disclosure requirement or to respond to any outstanding discovery 
requests or to appear for any noticed discovery deposition.
    (i) Telephone and pre-trial conferences. (1) Whenever it appears to 
the Trademark Trial and Appeal Board that a stipulation or motion filed 
in an inter partes proceeding is of such nature that its approval or 
resolution by correspondence is not practical, the Board may, upon its 
own initiative or upon request made by one or both of the parties, 
address the stipulation or resolve the motion by telephone conference.
    (2) Whenever it appears to the Trademark Trial and Appeal Board 
that questions or issues arising during the interlocutory phase of an 
inter partes proceeding have become so complex that their resolution by 
correspondence or telephone conference is not practical and that 
resolution would likely be facilitated by a conference in person of the 
parties or their attorneys with an Administrative Trademark Judge or an 
Interlocutory Attorney of the Board, the Board may, upon its own 
initiative or upon motion made by one or both of the parties, request 
that the parties or their attorneys, under circumstances which will not 
result in undue hardship for any party, meet with the Board at its 
offices for a disclosure, discovery or pre-trial conference.
    (j) * * *
    (3)(i) Disclosures but not disclosed documents, a discovery 
deposition, an answer to an interrogatory, or an admission to a request 
for admission, which may be offered in evidence under the provisions of 
paragraph (j) of this section may be made of record in the case by 
filing the deposition or any part thereof with any exhibit to the part 
that is filed, or a copy of the written disclosure, or a copy of the 
interrogatory and answer thereto with any exhibit made part of the 
answer, or a copy of the request for admission and any exhibit thereto 
and the admission (or a statement that the party from which an 
admission was requested failed to respond thereto), together with a 
notice of reliance. The notice of reliance and the material submitted 
thereunder should be filed during the testimony period of the party 
which files the notice of reliance. An objection made at a discovery 
deposition by a party answering a question subject to the objection 
will be considered at final hearing.
    (ii) A party which has obtained documents from another party 
through disclosure or under Rule 34 of the Federal Rules of Civil 
Procedure may not make the documents of record by notice of reliance 
alone, except to the extent that they are admissible by notice of 
reliance under the provisions of Sec.  2.122(e).
* * * * *
    (5) Disclosures, an answer to an interrogatory, or an admission to 
a request for admission, may be submitted and made part of the record 
by only the receiving or inquiring party except that, if fewer than all 
of the disclosures, answers to interrogatories, or fewer than all of 
the admissions, are offered in evidence by the receiving or inquiring 
party, the disclosing or responding party may introduce under a notice 
of reliance any other disclosures, answers to interrogatories, or any 
other admissions, which should in fairness be considered so as to make 
not misleading what was offered by the receiving or inquiring party. 
The notice of reliance filed by the disclosing or responding party must 
be supported by a written statement explaining why the disclosing or 
responding party needs to rely upon each of the additional disclosures 
or discovery responses listed in the disclosing or responding party's 
notice, failing which the Board, in its discretion, may refuse to 
consider the additional disclosures or responses.
    (6) Paragraph (j) of this section will not be interpreted to 
preclude the reading or the use of disclosures or documents, a 
discovery deposition, or answer to an interrogatory, or admission as 
part of the examination or cross-examination of any witness during the 
testimony period of any party.
    (7) When a disclosure, a discovery deposition, or a part thereof, 
or an answer to an interrogatory, or an admission, has been made of 
record by one party in accordance with the provisions of paragraph 
(j)(3) of this section, it may be referred to by any party for any 
purpose permitted by the Federal Rules of Evidence.
    (8) Disclosures or disclosed documents, requests for discovery, 
responses thereto, and materials or depositions obtained through the 
disclosure or discovery process should not be filed with the Board, 
except when submitted with a motion relating to disclosure or 
discovery, or in support of or in response to a motion for summary 
judgment, or under a notice of reliance, when permitted, during a 
party's testimony period.
    11. Revise paragraphs (a) and (d), and add paragraph (e), to read 
as follows:


Sec.  2.121  Assignment of times for taking testimony.

    (a) The Trademark Trial and Appeal Board will issue a trial order 
setting a deadline for required pre-trial disclosures and 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. The 
deadline for pre-trial disclosures and the 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 the pre-trial disclosure deadline and testimony periods 
is denied, the deadline and testimony periods may remain as set. The 
resetting of the closing date for discovery will result in the 
rescheduling of the pre-trial disclosure deadline and testimony periods 
without action by any party.
* * * * *
    (d) When parties stipulate to the rescheduling of the deadline for 
pre-trial disclosures and testimony periods or to the rescheduling of 
the closing date for discovery and the rescheduling of the deadline for 
pre-trial disclosures and 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, shall be submitted to the Board.
    (e) A party need not disclose, prior to its testimony period, any 
notices of reliance it intends to file during its testimony period. 
Each party must

[[Page 2508]]

disclose the name and address of each witness from whom it intends to 
take testimony, or may take testimony if the need arises, general 
information about the witness, a summary of subjects on which the 
witness is expected to testify, and a general summary of the types of 
documents and things which may be introduced as exhibits during the 
testimony of the witness. Pre-trial disclosure of a witness under this 
subsection does not substitute for issuance of a proper notice of 
examination under Sec.  2.123(c) or Sec.  2.124(b). If a party does not 
plan to take testimony from any witnesses, it must so state in its pre-
trial disclosure. When a party fails to make required pre-trial 
disclosures, any adverse party or parties may have remedy by way of a 
motion to the Trademark Trial and Appeal Board to delay or reset 
testimony periods.
    12. Revise Sec.  2.122(d)(1) to read as follows:


Sec.  2.122  Matters in evidence.

* * * * *
    (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 an 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. For the cost of a copy 
of a registration showing status and title, see Sec.  2.6(b)(4).
* * * * *
    13. Revise Sec.  2.123(e)(3) to read as follows:


Sec.  2.123  Trial testimony in inter partes cases.

* * * * *
    (e) * * *
    (3) Every adverse party shall have full opportunity to cross-
examine each witness. If pre-trial disclosures or the notice of 
examination of witnesses which is served pursuant to paragraph (c) of 
this section are improper or inadequate with respect to any witness, an 
adverse party may cross-examine that witness under protest while 
reserving the right to object to the receipt of the testimony in 
evidence. Promptly after the testimony is completed, the adverse party, 
if he wishes to preserve the objection, shall move to strike the 
testimony from the record, which motion will be decided on the basis of 
all the relevant circumstances. A motion to strike the testimony of a 
witness for lack of proper pre-trial disclosure or proper or adequate 
notice of examination must request the exclusion of the entire 
testimony of that witness and not only a part of that testimony.
* * * * *
    14. Remove Sec.  2.126(b) and redesignate paragraphs (c) and (d) as 
paragraphs (b) and (c), respectively, and revise paragraph (a)(6) to 
read as follows:


Sec.  2.126  Form of submissions to the Trademark Trial and Appeal 
Board.

    (a) * * *
    (6) Exhibits pertaining to a paper submission must be filed on 
paper and comply with the requirements for a paper submission.
* * * * *
    15. Revise Sec.  2.127(a), (c), and (e) to read as follows:


Sec.  2.127  Motions.

    (a) Every motion must be submitted in written form and must meet 
the requirements prescribed in Sec.  2.126. It 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 remains as 
specified under this section, unless otherwise ordered. Except as 
provided in paragraph (e)(1) of this section, a reply brief, if filed, 
shall be filed within fifteen 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. Neither the brief in support of 
a motion nor the brief in response to a motion shall exceed twenty-five 
pages in length in its entirety, including table of contents, index of 
cases, description of the record, statement of the issues, recitation 
of the facts, argument, and summary. A reply brief shall not exceed ten 
pages in length in its entirety. Exhibits submitted in support of or in 
opposition to a motion are not considered 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.
* * * * *
    (c) Interlocutory motions, requests, and other matters not actually 
or potentially dispositive of a proceeding may be acted upon by a 
single Administrative Trademark Judge of the Trademark Trial and Appeal 
Board or by an Interlocutory Attorney of the Board to whom authority so 
to act has been delegated.
* * * * *
    (e)(1) A party may not file a motion for summary judgment until the 
party has made its initial disclosures. 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. 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.
    (2) For purposes of summary judgment only, disclosures or disclosed 
documents, a discovery deposition, or an answer to an interrogatory, or 
a document or thing produced in response to a request for production, 
or an admission to a request for admission, will be considered by the 
Trademark Trial and Appeal Board if any party files, with the party's 
brief on the summary judgment motion, the written disclosures or 
disclosed documents, deposition or any part thereof with any exhibit to 
the part that is filed, or a copy of the interrogatory and answer 
thereto with any exhibit made part of the answer, or a copy of the 
request for production and the documents or things produced in response 
thereto, or a copy of the request for admission and any exhibit thereto 
and the admission (or a statement that the party from which an

[[Page 2509]]

admission was requested failed to respond thereto).
* * * * *
    16. Revise Sec.  2.129(a) to read as follows:


Sec.  2.129  Oral argument; reconsideration.

    (a) If a party desires to have an oral argument at final hearing, 
the party shall request such argument by a separate notice filed not 
later than ten days after the due date for the filing of the last reply 
brief in the proceeding. Oral arguments will be heard by at least three 
Administrative Trademark Judges of the Trademark Trial and Appeal Board 
at the time specified in the notice of hearing. If any party appears at 
the specified time, that party will be heard. If the Board is prevented 
from hearing the case at the specified time, a new hearing date will be 
set. Unless otherwise permitted, oral arguments in an inter partes case 
will be limited to thirty minutes for each party. A party in the 
position of plaintiff may reserve part of the time allowed for oral 
argument to present a rebuttal argument.
* * * * *
    17. Revise Sec.  2.133 (a) and (b) to read as follows:


Sec.  2.133  Amendment of application or registration during 
proceedings.

    (a) An application subject to an opposition may not be amended in 
substance nor may a registration subject to a cancellation be amended 
or disclaimed in part, except with the consent of the other party or 
parties and the approval of the Trademark Trial and Appeal Board, or 
upon motion approved by the Board.
    (b) If, in an inter partes proceeding, the Trademark Trial and 
Appeal Board finds that a party whose application or registration is 
the subject of the proceeding is not entitled to registration in the 
absence of a specified restriction to the application or registration, 
the Trademark Trial and Appeal Board will allow the party time in which 
to file a motion that the application or registration be amended to 
conform to the findings of the Trademark Trial and Appeal Board, 
failing which judgment will be entered against the party.
* * * * *
    18. Revise Sec.  2.142(e)(1) to read as follows:


Sec.  2.142  Time and manner of ex parte appeals.

* * * * *
    (e)(1) If the appellant desires an oral hearing, a request therefor 
should be made by a separate notice filed not later than ten days after 
the due date for a reply brief. Oral argument will be heard by at least 
three Administrative Trademark Judges of the Trademark Trial and Appeal 
Board at the time specified in the notice of hearing, which may be 
reset if the Board is prevented from hearing the argument at the 
specified time or, so far as is convenient and proper, to meet the wish 
of the appellant or the appellant's attorney or other authorized 
representative.
* * * * *
    19. Revise Sec.  2.173(a) to read as follows:


Sec.  2.173  Amendment of registration

    (a) A registrant may apply to amend a registration or to disclaim 
part of the mark in the registration. The registrant must submit a 
written request specifying the amendment or disclaimer and, if the 
registration is involved in an inter partes proceeding before the 
Trademark Trial and Appeal Board, the request must be filed by 
appropriate motion. This request must be signed by the registrant and 
verified or supported by a declaration under Sec.  2.20, and 
accompanied by the required fee. If the amendment involves a change in 
the mark, the registrant must submit a new specimen showing the mark as 
used on or in connection with the goods or services, and a new drawing 
of the amended mark. The registration as amended must still contain 
registrable matter, and the mark as amended must be registrable as a 
whole. An amendment or disclaimer must not materially alter the 
character of the mark.
* * * * *
    20. Revise Sec.  2.176 to read as follows:


Sec.  2.176  Consideration of above matters.

    The matters in Sec. Sec.  2.171 to 2.175 will be considered in the 
first instance by the Post Registration Examiners, except for requests 
to amend registrations involved in inter partes proceedings before the 
Trademark Trial and Appeal Board, as specified in Sec.  2.173(a), which 
shall be considered by the Board. If an action of the Post Registration 
Examiner is adverse, registrant may petition the Director to review the 
action under Sec.  2.146. If the registrant does not respond to an 
adverse action of the Examiner within six months of the mailing date, 
the matter will be considered abandoned.

    Dated: January 4, 2006.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 06-197 Filed 1-13-06; 8:45 am]
BILLING CODE 3510-16-U