[Federal Register Volume 72, Number 147 (Wednesday, August 1, 2007)]
[Rules and Regulations]
[Pages 42242-42264]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E7-14702]



[[Page 42241]]

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Part III





Department of Commerce





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Patent and Trademark Office



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37 CFR Part 2



 Miscellaneous Changes to Trademark Trial and Appeal Board Rules; Final 
Rule

  Federal Register / Vol. 72, No. 147 / Wednesday, August 1, 2007 / 
Rules and Regulations  

[[Page 42242]]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 2

[Docket No.: PTO-T-2005-014]
RIN 0651-AB56


Miscellaneous Changes to Trademark Trial and Appeal Board Rules

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The United States Patent and Trademark Office (Office) is 
amending the Trademark Rules of Practice (trademark 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 are being made to clarify rules, 
conform the rules to current practice, and correct typographical errors 
or deviations from standard terminology.

DATES: Effective Date: This rule is effective November 1, 2007 except 
the amendments for the following rules are effective August 31, 2007: 
2.105(a); 2.113(a), and removal of (e); 2.116(g); 2.118; 2.119(b)(6); 
2.120(d)(1); 2.122(d)(1); 2.126(a)(6), removal of (b) and redesignation 
of (c) and (d) as (b) and (c); 2.127(a) and (c); 2.129(a); 2.133(a) and 
(b); 2.142(e)(1); 2.173(a); and 2.176.
    Applicability to pending cases: The amendment to rule 2.116(g), 
which makes the Board standard protective order applicable in all inter 
partes cases applies to all cases pending before the Board as of the 
effective date of that amendment, except for cases in which the Board's 
standard protective order, or some other protective order, has already 
been applied or approved by the Board. The following amendments also 
apply to all cases pending before the Board as of their effective date: 
2.105(a); 2.113(a), and removal of (e); 2.118; 2.119(b)(6); 
2.120(d)(1); 2.126(a)(6), removal of (b) and redesignation of (c) and 
(d) as (b) and (c); 2.127(a) and (c); 2.133(a) and (b); 2.173(a); and 
2.176. All other amendments to the rules apply in cases commenced on or 
after the effective dates of the respective amendments.

FOR FURTHER INFORMATION CONTACT: Gerard F. Rogers, Trademark Trial and 
Appeal Board, by telephone at (571) 272-4299, by mail addressed to 
Trademark Trial and Appeal Board, P.O. Box 1451, Alexandria, VA, 22313-
1451, attention Gerard F. Rogers, or by facsimile to (571) 273-0059, 
marked to the attention of Gerard F. Rogers.
    Information may also be obtained via the Federal eRulemaking 
Portal. See the Federal eRulemaking Portal Web site (http://www.regulations.gov) for the full text of the notice of proposed rule 
making that preceded this final rule, and the full text of comments 
received in response to the notice of proposed rule making.

SUPPLEMENTARY INFORMATION: The amended rules will increase the 
efficiency of the processes for commencing inter partes cases, and take 
account of the Board's deployment in recent years of electronic filing 
options and the increased availability and use of facsimile and e-mail 
as methods of communication between parties involved in inter partes 
cases. Also, the amended rules will increase the efficiency by which 
discovery and pretrial 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. The amendments also include 
minor modifications necessary to make corrections or updates to certain 
rules and conform those rules to current practice.
    As of November 1, 2007, the following notice originally published 
in the USPTO Official Gazette on January 15, 1994, at 1159 TMOG 14, 
will no longer have effect: ``Notice Regarding Inapplicability of 
December 1, 1993 Changes in Federal Rules of Civil Procedure to TTAB 
Cases.''

I. Commencement of Proceedings

    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. The former process by which a plaintiff in a Board 
proceeding filed notice of its complaint (or claim of right to a 
concurrent use registration) required the plaintiff to prepare as many 
copies of its complaint (or claim of right, i.e., concurrent use 
application) as there would be defendants in the action. The plaintiff 
would then file the requisite copies with the original, for subsequent 
forwarding by the Board to the defendant or defendants. Occasionally, 
before the Board could forward the copies to the defendant or 
defendants, the plaintiff would engage in additional correspondence 
with the Board, to provide the Board with updated correspondence 
address information the plaintiff had uncovered in its investigation of 
the adverse applications, registrations or marks, particularly in 
cancellation and concurrent use proceedings.
    Under the amended trademark rules, the initiation of a Board 
proceeding will be more efficient, because a plaintiff will serve 
copies directly on defendants. Use of a direct service approach 
recognizes that plaintiffs and defendants often are in contact before 
the plaintiff files its complaint or claim, and also recognizes that 
continuation of 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.
    In recent years, the Board has deployed its ESTTA system, the 
Electronic System for Trademark Trials and Appeals, so that virtually 
all filings 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 amended trademark rules, an opposer or petitioner will 
file its complaint with the Board and is 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 designated in the 
defending application or registration, or in assignment records 
regarding the application or registration. A concurrent use applicant, 
however, will 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 is issued 
by the Board, as discussed below.
    A plaintiff filing a notice of opposition must serve the owner of 
the application, according to Office records,

[[Page 42243]]

or the attorney or domestic representative of the owner, if Office 
records designate that an attorney or domestic representative should 
receive correspondence for the owner of the application. A plaintiff 
filing a petition for cancellation must serve the owner of the 
registration, according to Office records, or the domestic 
representative of the owner, if Office records designate that a 
domestic representative should receive correspondence for the owner of 
the registration. A plaintiff filing a petition for cancellation is not 
expected to serve any attorney who may have represented the registrant 
before the Office in the prosecution of the application that resulted 
in issuance of the registration. (It is noted, however, that an 
attorney who was designated as a domestic representative during 
prosecution of an application is considered by the Office to continue 
in such role unless the appointment as domestic representative was 
revoked or a different domestic representative was subsequently 
appointed.) Whether a plaintiff should serve the owner directly, an 
attorney, or a domestic representative depends on what Office records 
provide as the correspondence address.
    To determine the correspondence address of record for an applicant 
or registrant, the plaintiff must check the Trademark Applications and 
Registrations Retrieval (TARR) system at the following web address: 
http://tarr.uspto.gov. (This system also is accessible via links from 
the Office's main Web site.) A plaintiff in an opposition or 
cancellation proceeding need only serve a copy of its notice of 
opposition or petition for cancellation to the correspondence address 
of record. The TARR display of information about a particular 
application or registration also includes an active link to assignment 
(including changes of name) information, if any exists in the Office's 
assignments database. For questions about correspondence address 
information in TARR, or about assignment records and determining the 
current owner of an application or registration, plaintiffs may contact 
the Board's customer service representatives at the main telephone 
number for the Board, listed on the Web site http://www.uspto.gov/main/contacts.htm.
    A plaintiff in an opposition or cancellation is not required to 
serve a copy of its notice of opposition or petition for cancellation 
to any address other than the address listed in the TARR system. A 
plaintiff may wish to serve a courtesy copy on any party at any address 
the plaintiff may have reason to believe is more current than the 
address for that party listed in Office records. A plaintiff may wish 
to serve a courtesy copy on any party the plaintiff believes has an 
ownership interest in the relevant application or registration (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. It is generally in a 
plaintiff's interest to have the real party in interest apprised of the 
existence of the Board opposition or cancellation proceeding, so that 
any judgment eventually obtained will be binding on the correct party.
    As for service obligations of a concurrent use applicant (i.e., the 
plaintiff in a concurrent use proceeding), 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 (i.e., excepted parties, the 
defendants in the concurrent use proceeding). Existing practice 
requires the concurrent use applicant to provide correspondence address 
information for excepted parties, even if the excepted parties do not 
own applications or registrations for marks listed in the TARR system. 
The amended trademark rules continue the requirement that the 
concurrent use applicant provide correspondence address information for 
excepted parties. The new rules dispense with the requirement that the 
concurrent use applicant file copies of its claim of right to a 
concurrent use registration, i.e., copies of its concurrent use 
application, for service by the Board on each excepted party. Under the 
amended trademark rules, the concurrent use applicant must promptly 
serve a copy of its application on each of the excepted parties 
following its receipt of a notice from the Board that the concurrent 
use proceeding has been instituted.
    All plaintiffs, including concurrent use applicants, bear the same 
service obligations. Specifically, they must serve copies by one of the 
methods provided in Trademark Rule 2.119, 37 CFR 2.119. Plaintiffs are 
neither required nor expected to follow the provisions of Rules 4, 4.1 
or 5 of the Federal Rules of Civil Procedure or, for defendants located 
outside the United States, any international convention regarding 
service of process. The parties may agree to use e-mail to communicate 
with each other and for forwarding of service copies. A plaintiff, 
however, 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.
    If a service copy is returned to plaintiff as undeliverable, 
plaintiff must notify the Board within ten (10) days of receipt of the 
returned service copy, or of any notice indicating that the service 
copy could not be delivered. Notification to the Board of failure of 
service may be provided by any means available for filing pleadings, 
motions, etc., keeping in mind that business with the Office is 
generally to be conducted in writing. Therefore, notice of failure of 
service may be provided, for example, by written notice mailed to the 
Board, or by appropriate filing through ESTTA. A plaintiff is under no 
obligation to search for current correspondence address information 
for, or investigate the whereabouts of, any defendant the plaintiff is 
unable to serve. However, notice to the Board of failure of service 
must include, if known, any new address information for the defendant 
whose service copy was returned to the plaintiff or reported to be 
undeliverable. For example, if a service copy returned by the United 
States Postal Service because of an expired forwarding order 
nonetheless lists the addressee's new address, then that must be 
reported to the Board. Similarly, if the plaintiff whose attempt at 
service has been unsuccessful discovers a new address for a defendant 
through independent means or voluntary investigation, then it must 
report the results of its investigation in its notice to the Board of 
the failure of service. In any case in which a plaintiff notifies the 
Board that a service copy sent to a defendant was returned or not 
delivered, including any case in which the notification includes a new 
address for the defendant discovered by or reported to the plaintiff, 
the Board will effect service.
    The Board will, after a notice of opposition or petition for 
cancellation is filed, or after a concurrent use application is 
published for opposition and found 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. The notice will set 
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. A party providing an e-mail address 
includes a plaintiff providing an e-mail address when filing any paper 
by ESTTA or with a complaint delivered by other means, an applicant 
that

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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. In any proceeding, an 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).

II. Adoption of a Disclosure Model

    In 1993, significant amendments to the Federal Rules of Civil 
Procedure (federal rules) implemented a system requiring parties 
litigating in the federal courts to, among other things, disclose 
certain information and/or documents and things without waiting for 
discovery requests, and to meet and confer to discuss settlement 
options and plans for disclosure and discovery if settlement were not 
possible (disclosure regime). Individual district courts were permitted 
to opt out of this disclosure regime.
    In 2000, the federal rules were further amended, eliminating the 
option for individual courts to opt out of the most significant changes 
of the disclosure regime.
    By notice issued January 15, 1994 (and published in the Official 
Gazette at 1159 TMOG 14), the Office announced the Board would not 
follow many of the 1993 changes to the federal rules, including the 
disclosure regime established by the amended rules. This notice 
specifically stated, ``the Office's Public Advisory Committee for 
Trademark Affairs has recommended that incorporation of the [1993] 
amendments [related to conferencing and disclosure] in Board practice 
be deferred until the Office can evaluate the effects of the amendments 
on civil actions.''
    The Office subsequently amended the Trademark Rules of Practice in 
1998. The original notice of amendment 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 the Office did not 
adopt a disclosure regime for Board inter partes cases as an element of 
these amendments, the Office noted that the Board would continue to 
monitor recurring procedural issues in Board cases and that in the 
future the Office might propose and adopt additional changes to 
practice.
    In accordance with the recommendation of the Public Advisory 
Committee for Trademark Affairs, and to evaluate the effects of the 
1993 and 2000 amendments on civil actions, the Office reviewed an 
empirical study and numerous other available articles and reports on 
the subject of the disclosure regime followed in the courts. The 
empirical study reported that the new disclosure regime 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 concluded from its review of the empirical study and 
other materials that use of a modified disclosure regime in Board 
proceedings, will increase the possibility of parties settling a Board 
proceeding and doing so sooner. In addition, even if parties do not 
settle the case, disclosure will 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 will serve as a substitute for a certain amount of 
traditional discovery and will provide a more efficient means for 
exchange of information that otherwise would require the parties to 
serve traditional discovery requests and responses thereto.
    Following many consultations with the Trademark Public Advisory 
Committee (successor to the Public Advisory Committee for Trademark 
Affairs) or subcommittees thereof, the Office proposed adoption of a 
disclosure regime for Board inter partes proceedings, in a Notice of 
Proposed Rule Making (NPRM) at 71 Fed. Reg. 2498 (January 17, 2006). 
The NPRM and comments received in response thereto are available for 
viewing at the http://www.regulations.gov web portal.
    One subject related to the adoption of a disclosure regime and 
covered in the NPRM is the applicability of the Board's standard order 
for protecting confidential or otherwise sensitive information and 
documents. By notice published in the Office's Official Gazette (O.G.) 
on June 20, 2000 (1235 TMOG 70), the Office noted the Board's adoption 
of that standard order. The O.G. notice explained that the standard 
order was promulgated in response to many public requests for such an 
order and explained that the standard order could be adopted by parties 
as published or with modifications. The O.G. notice also noted that the 
Board could impose the order in appropriate cases. In fact, since 
publication of the O.G. notice, it has become quite routine for the 
Board to impose the order in any inter partes proceeding in which the 
efficient conduct of discovery is hampered by the parties' inability to 
agree on a protective order.
    In the disclosure regime established by this final rule, the 
Board's standard protective order is applicable in all cases. The 
Board's notice of the institution of a proceeding will advise parties 
that the standard protective order applies and that it is available on 
the Office's Web site or, by request made to the Board, in hard copy 
form. The applicability of this standard protective order does not make 
all submissions confidential. Parties must utilize its provisions to 
protect confidential information. Neither does the applicability of the 
standard order preclude a party, when appropriate, from moving for a 
protective order under applicable trademark or federal rules, when the 
standard order does not cover the extant circumstances or is viewed by 
the moving party as providing insufficient protection. As under current 
practice, parties are free to agree to modify the standard protective 
order. It should be routine for parties to discuss possible 
modification in the disclosure/discovery/settlement conference 
(discovery conference) that is a part of the disclosure regime 
established by this final rule. Absent a stipulation to vary the terms 
of the standard protective order, approved by the Board, or an order by 
the Board granting a party's motion to use an alternative order, the 
parties must abide by the standard order.

A. The Schedule for Cases Under the Disclosure Model

    The Board's notice of the commencement of the proceeding (commonly 
referred to as the institution order) will set forth disclosure, 
discovery and trial-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

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measured from that date, until each deadline:
    Due date for an answer--40 days from the date of the institution 
order.
    (Institution date plus 40 days.)
    Deadline for a disclosure/discovery/settlement 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.)
    Deadline for disclosure of expert testimony--30 days prior to close 
of discovery.
    (Institution date plus 220 days.)
    Discovery closes--180 days from the opening date of the discovery 
period.
    (Institution date plus 250 days.)
    Deadline for plaintiff's pretrial disclosures--15 days prior to the 
opening of plaintiff's testimony period.
    (Institution date plus 295 days.)
    Plaintiff's 30-day testimony period--closes 90 days after the close 
of discovery.
    (Institution date plus 340 days.)
    Deadline for defendant's pretrial disclosures--15 days prior to the 
opening of defendant's testimony period.
    (Institution date plus 355 days.)
    Defendant's 30-day testimony period--closes 60 days after the close 
of plaintiff's testimony period.
    (Institution date plus 400 days.)
    Deadline for plaintiff's rebuttal pretrial disclosures--15 days 
prior to the opening of plaintiff's rebuttal testimony period.
    (Institution date plus 415 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 typically will open after the 
discovery conference, unless the parties defer their discovery 
conference to the deadline date, in which case discovery will 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. Because the Board approach measures the due date for 
disclosures from the opening of discovery, which typically will occur 
after the discovery conference, the Board approach typically will 
provide a longer period for making disclosures than is provided under 
the federal rule. This will accommodate the possibility of motions to 
suspend for settlement talks, which are quite common in Board 
proceedings. The Board anticipates that such motions may frequently 
result from settlement discussions begun during the required 
disclosure/discovery/settlement conference.
    The length of the discovery period is the same as under current 
Board practice, i.e., 180 days. Disclosures will be made no later than 
thirty (30) days into that period, and the parties will have another 
150 days for any necessary additional discovery. The trial schedule, 
with its sixty-day break between discovery and trial and thirty-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 will effectively stay the parties' obligations to 
conference and, subsequently, 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, be 
able to discuss the extent of their initial disclosure obligations, 
plans for discovery, and the possibility of settlement.
    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 answer is filed, 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 if 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. If the parties propose to meet in person, 
participation by a Board professional will be by telephone, and be 
arranged by the parties. A request for the participation of a Board 
professional may only be made with or after the answer is filed but in 
no event later than ten (10) days prior to the deadline for conducting 
the discovery conference. The request may be made by phone or via 
ESTTA. If neither party requests participation of a Board professional 
in the discovery conference, the parties must meet on their own, in 
person or by other means, no later than the prescribed deadline, and 
the Board will operate on the assumption that the conference was held 
by the deadline. The parties do not have to file a disclosure/discovery 
plan with the Board, following their discovery conference, unless they 
are seeking leave by motion or stipulation to alter standard deadlines/
obligations, or unless they were directed to make a particular filing 
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. Because dates may remain as 
set if the Board denies a stipulation or motion to alter dates, it is 
in the interests of the parties to file stipulations or motions 
promptly after the conference.

B. The Interplay of Disclosure and Discovery

    A party may not seek discovery through traditional devices until 
after it has made its initial disclosures. A party may not move for 
summary judgment until after it has made its initial disclosures, 
except on grounds of claim or issue preclusion or lack of jurisdiction 
by the Board.
    Initial disclosure obligations should be easier to meet in Board 
cases than in civil actions. One reason is that the Board's 
jurisdiction is limited to determining the right of a party to obtain, 
or retain, a registration. Moreover, 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 impact of other issues 
relatively unique to Board proceedings. For example, 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 the

[[Page 42246]]

mark as registered or applied-for, irrespective of many actual 
marketplace issues.
    Federal Rule 26(a)(1) requires initial disclosures to obviate the 
need to use traditional discovery to obtain ``basic information'' about 
a party's claims or defenses. (``A major purpose of the [1993] revision 
is to accelerate the exchange of basic information about the case and 
to eliminate the paper work involved in requesting such information, 
and the rule should be applied in a manner to achieve those 
objectives.'' Fed. R. Civ. P. 26(a)(1) advisory committee's note, 1993 
amendments.) However, in Board cases, subsections (C) and (D) of 
Federal Rule 26(a)(1) are not relevant and will not apply. Further, in 
complying with subsections (A) and (B), the range of individuals with 
discoverable information that the disclosing party may use to support a 
claim or defense, and the number of documents, data compilations, and 
tangible things that a party may use to support a claim or defense, 
will be more limited than in district court cases, because of the more 
limited claims and defenses available in Board cases.
    Under Federal Rule 26(a)(1), a party is not obligated to disclose 
the name of every witness, document or thing that may have or contain 
discoverable information about its claim or defense, but merely the 
witnesses, documents and things having or containing discoverable 
``information that the disclosing party may use to support its claims 
or defenses.'' Further, initial disclosures focus on exchange of 
``basic information'' about witnesses and documents and do not 
substitute for taking comprehensive discovery, when necessary. (For 
reasons already noted in relation to initial disclosures, discovery 
also should be more limited in scope in Board proceedings than in 
district court cases.)
    The specificity of information parties will provide to comply with 
initial disclosure obligations is one of the issues that must be 
anticipated and discussed by the parties during their discovery 
conference. Further, although this final rule requires fewer, and less 
extensive, initial disclosures than those proposed by the NPRM, the 
parties are free to discuss the option of making more extensive 
disclosure than is required by the rule. For example, parties could 
choose to rely on specified, reciprocal disclosures in lieu of formal 
discovery, if they find such an approach more efficient and less 
costly. Similarly, parties could choose to forgo disclosures and agree 
to utilize only traditional discovery devices. (Either approach, as a 
deviation from the regime prescribed by this final rule, would be 
subject to Board approval.)
    To emphasize, initial disclosures are not intended to substitute 
for all discovery but, rather, to prompt routine disclosure of names of 
potential witnesses and basic information about documents and things 
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 initial disclosures of facts known by witnesses, if 
provided by a party, for example, pursuant to an approved agreement to 
utilize more extensive disclosure than required by this final rule, 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, if provided in lieu of descriptions of documents, may also 
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 written disclosures 
and initial disclosures of documents will be treated like responses to 
written discovery requests.

C. Expert Disclosure and Pretrial Disclosure

    A party's planned use of expert witnesses is largely governed by 
Federal Rule 26(a)(2). This rule governs testifying witnesses, not 
consulting experts who are not expected to testify.
    A plaintiff's plan to use any expert at trial must be disclosed no 
later than thirty (30) days prior to the close of discovery (i.e., 
ninety (90) days prior to the opening of plaintiff's testimony period). 
In any case in which a defendant plans to use an expert at trial 
irrespective of whether the plaintiff plans to do so, the defendant 
must also make its disclosure no later than thirty (30) days prior to 
the close of discovery. A party planning to use an expert solely to 
contradict or rebut an adverse party's expert must disclose such plans 
within thirty (30) days of the adverse party's prior disclosure (i.e., 
no later than close of discovery). Federal Rule 26(a)(2) also details 
what information and materials must be provided for a party to satisfy 
its disclosure obligation with respect to experts.
    Federal Rule 26(a)(2) allows the Board by order, or the parties by 
stipulation approved by the Board, to alter the sequence and timing of 
expert disclosures and the extent of the information or material that 
must be disclosed to satisfy the disclosure obligation. The parties are 
expected to engage in at least preliminary discussions on these 
subjects in their discovery conference. If any party retains an expert 
earlier in the Board proceeding than the applicable disclosure 
deadline, and any adverse party has inquired about experts through 
traditional discovery requests, the party retaining the expert may not 
rely on the disclosure deadline to delay revealing the expert to such 
adverse party.
    Any party disclosing plans to use an expert must notify the Board 
that it has made the required disclosure. The Board may then suspend 
proceedings to allow for discovery limited to experts. The suspension 
order may anticipate and also provide for discovery regarding any 
expert that may subsequently be retained for rebuttal purposes.
    The Office recognizes that there may be cases in which a party may 
not decide that it needs to present an expert witness at trial until 
after the deadline for expert disclosure. In such cases, disclosure 
must be made promptly when the expert is retained and a motion for 
leave to present testimony by the expert must be filed. Prompt 
disclosure after the deadline, however, does not necessarily ensure 
that the expert's testimony or evidence will be allowed into the record 
at trial. The Board will decide on a case-by-case basis how to handle a 
party's late identification of experts.
    Pretrial disclosures are governed by Federal Rule 26(a)(3), but the 
Board does not require pretrial disclosure of each document or other 
exhibit that a party plans to introduce at trial under Rule 
26(a)(3)(C). Further, because the trial schedule in a Board proceeding 
employs alternating testimony periods with gaps between them, the due 
dates for pretrial disclosure of witnesses expected to testify, or who 
may testify if the need arises, will be different for each party and 
will be specified in the Board's institution order. In essence, each 
party will make its pretrial disclosures under Federal Rules 
26(a)(3)(A) and 26(a)(3)(B) fifteen (15) days prior to its testimony 
period. Witnesses who are expected to or may testify by affidavit, in 
accordance with a written stipulation of the parties under Trademark 
Rule 2.123(b), 37 CFR 2.123(b), must be disclosed under Federal Rule 
26(a)(3)(A) along with disclosure of witnesses who are expected to or 
may testify by giving oral testimony.
    A party may object to improper or inadequate pretrial disclosures 
and may move to strike the testimony of a witness for lack of proper 
pretrial disclosure.

[[Page 42247]]

    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 by notice of reliance, 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, 
printed publications in general circulation, or government documents 
generally available to all parties. A party planning to introduce an 
adverse party's discovery deposition, or part thereof, need not 
disclose such plans in order to comply with Federal Rule 26(a)(3)(B), 
which covers introduction of depositions in lieu of testimony under 
Federal Rule 32(a).

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

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

IV. Clarification of Rule on Briefing of Motions

    The Office has amended 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 all count against the limit of twenty-five (25) pages for a 
brief in support of a motion or in response to a motion and the limit 
of ten (10) pages for a reply brief.

Discussion of Specific Rules

    Title 37 of the Code of Federal Regulations, Part 2, is amended as 
follows:
[2.99(b) to (d)]
    Sections 2.99(b) to (d) currently set forth certain procedures for 
processing an application for registration as a lawful concurrent user, 
and for institution of a concurrent use proceeding at the Board. 
Sections 2.99(b), (c) and (d)(1) are amended to shift 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)]
    Section 2.101(a) currently sets forth that an opposition proceeding 
is commenced by filing a timely opposition, together with the required 
fee, in the Office. Section 2.101(a) is amended to specify that proof 
of service on applicant or its attorney or domestic representative of 
record in the USPTO, at the correspondence address of record in the 
USPTO, must be included with the notice of opposition.
    Section 2.101(b) currently sets forth who may file a notice of 
opposition and how the notice must be signed. Section 2.101(b) is 
amended to reflect the new requirement in Sec.  2.101(a) that an 
opposer include proof of service on the applicant with its notice of 
opposition. It also explains who must be served, specifies that the 
correspondence address of record in the USPTO is to be used, and 
specifies the steps opposer must take if the service copy of the notice 
of opposition is returned to opposer as undeliverable.
    Section 2.101(d)(4) currently sets forth that the filing date of an 
opposition is the date of its receipt in the Office with the required 
fee. Section 2.101(d)(4) is amended to add proof of service on 
applicant or its attorney or domestic representative of record in the 
USPTO, at the correspondence address of record in the USPTO, to the 
requirements for receiving a filing date for the notice of opposition; 
and to include a clarifying reference to filing by ``Express Mail'' 
under Sec.  2.198.
[2.105(a) and (c)]
    Section 2.105(a) currently sets forth that the Board will prepare a 
notification of the filing of a notice of opposition. Section 2.105(a) 
is amended to cross-reference Sec. Sec.  2.101 and 2.104 regarding 
proper form for and proper service of a notice of opposition, and to 
indicate that the Board may transmit the notification of proceedings 
via e-mail to any party that has provided an e-mail address.
    Section 2.105(c) currently sets forth that the Board will forward 
copies of the notice of opposition, exhibits and notification of the 
proceeding to an applicant. Section 2.105(c), in its introductory text, 
is amended to delete the reference to forwarding of copies of the 
notice of opposition and exhibits by the Board, and to reflect the 
amendments to Sec.  2.101 that now require the opposer to serve the 
notice of opposition and exhibits directly on the applicant, attorney 
or domestic representative.
 [2.111(a) to (c)]
    Section 2.111(a) currently sets forth that a cancellation 
proceeding is commenced by the filing of a timely petition for 
cancellation, together with the required fee, in the Office. Section 
2.111(a) is amended to specify that proof of service on the owner of 
the registration, or the owner's domestic representative of record in 
the USPTO, at the correspondence address of record in the USPTO, must 
be included with the petition for cancellation and fee.
    Section 2.111(b) currently sets forth who may file a petition for 
cancellation, how the petition must be signed and certain provisions 
regarding when a petition may be filed. Section 2.111(b) is amended to 
reflect the new requirement in Sec.  2.111(a) that the petitioner must 
include with its petition for cancellation proof of service on the 
owner of the registration, or domestic representative of the owner of 
record in the USPTO, to specify that the correspondence address of 
record in the USPTO is to be used, and to specify the steps petitioner 
must take if the service copy of the petition for cancellation is 
returned to petitioner as undeliverable.
    Section 2.111(c)(4) currently sets forth that the filing date of a 
petition for cancellation is the date of its receipt in the Office with 
the required fee. Section 2.111(c)(4) is amended to add proof of 
service on the owner of the registration, or domestic representative of 
record in the USPTO, at the correspondence address of record in the 
USPTO, to the requirements for receiving a filing date for the petition 
for cancellation; and to include a clarifying reference to filing by 
``Express Mail'' under Sec.  2.198.
[2.113(a) and (c)]
    Section 2.113(a) currently sets forth that the Board will prepare a 
notification of the filing of a petition for cancellation. Section 
2.113(a) is amended to cross-reference Sec. Sec.  2.111 and 2.112 
regarding proper form for and proper service of a petition for 
cancellation, and to indicate that the Board may transmit the 
notification of proceedings via e-mail to any party that has provided 
an e-mail address.
    Section 2.113(c) currently sets forth that the Board will forward 
copies of the petition for cancellation, exhibits and notification of 
the proceeding to the respondent (owner of the registration). Section 
2.113(c) is amended to delete the reference to forwarding of copies of 
the petition for cancellation and exhibits by the Board, and to reflect 
the amendments to Sec.  2.111 that now require the petitioner to serve 
the petition for cancellation and exhibits directly on the

[[Page 42248]]

owner of the registration, attorney or domestic representative.
[2.113(e)] [remove and reserve]
    Section 2.113(e) currently sets forth that the Board may allow a 
petitioner time to correct an informality in a defective petition for 
cancellation. Section 2.113 is amended to remove and reserve paragraph 
(e) to conform the rule to the existing practice whereby the Board no 
longer advises petitioners of defects in petitions for cancellation.
[2.116(g)] [add]
    Section 2.116 currently sets forth an explanation of the 
applicability of the Federal Rules of Civil Procedure in Board inter 
partes trademark proceedings, and equates particular terms used in the 
Federal Rules to terms used in inter partes trademark proceedings. 
Section 2.116 is amended to add new paragraph (g). Section 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 trademark 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]
    Section 2.118 currently sets forth that the Office may provide 
notice of a proceeding by publication in the Official Gazette, when a 
notice of a proceeding mailed to a registrant is returned to the Office 
as undeliverable. Section 2.118 is amended to also allow for notice by 
publication when a notice mailed to an applicant is returned as 
undeliverable.
[2.119(a) and (b)]
    Section 2.119(a) currently sets forth provisions regarding proof of 
service requirements for papers filed in Board inter partes trademark 
proceedings, but specifies that proof of service is not required for 
certain papers that the Office serves. Section 2.119(a) is amended by 
striking out the list of exceptions to reflect amendments to other 
sections that now require opposers, petitioners and concurrent use 
applicants to serve papers previously served by the Office. Section 
2.119(a) also is amended to change ``Patent and Trademark Office'' to 
``United States Patent and Trademark Office,'' and to make the singular 
``notice of appeal'' the plural ``notices of appeal.''
    Section 2.119(b) currently sets forth the permissible means for a 
party to serve a paper on an adverse party. Section 2.119(b) is amended 
to add paragraph (6), which will allow parties by agreement to meet 
their service obligations by utilizing fax or e-mail.
[2.120(a), (d) through (j)]
    Section 2.120(a) currently sets forth various general provisions 
regarding discovery in Board inter partes trademark proceedings, 
including the extent to which the Federal Rules of Civil Procedure are 
applicable, and the timing and sequence of the discovery period and 
various discovery activities. Section 2.120(a) is amended to separate 
it into three paragraphs. Paragraph (1) discusses the applicability of 
the federal rules provisions relating to a conference of the parties to 
discuss disclosures, discovery and possible settlement, and the 
requirements for automatic disclosures. Paragraph (1) also explains 
that the Board will, by order, specify the dates for conferencing, 
disclosures and discovery. Paragraph (2) provides more specific 
information regarding the deadlines or due dates for conferencing, 
disclosures, and discovery; and explains that the parties by 
stipulation approved by the Board, or a party by motion granted by the 
Board, may seek to reset various deadlines or due dates or to alter 
their disclosure obligations. Paragraph (3) provides that a party must 
make its initial disclosures prior to seeking discovery, provides a 
deadline for taking discovery depositions and for serving various types 
of discovery requests, and for serving responses to discovery requests, 
and provides that the parties by stipulation approved by the Board, or 
a party by motion granted by the Board, may seek to alter the 
obligation to make initial disclosures prior to seeking discovery or to 
reset the deadlines relating to discovery.
    Section 2.120(d)(1) currently sets forth the limit on the number of 
interrogatories a party may serve, means by which the parties or a 
party may seek leave to exceed the limit, and procedures for either 
objecting to interrogatories alleged to be in excess of the limit or 
seeking to compel responses. Section 2.120(d)(1) is amended to clarify 
that a motion or stipulation of the parties to allow interrogatories in 
excess of the limit requires approval of the Board.
    Section 2.120(e) currently sets forth various provisions regarding 
filing and required support for motions to compel. Section 2.120(e) is 
amended to make provisions regarding a motion to compel applicable to 
discovery and initial and expert disclosures.
    Section 2.120(f) currently sets forth various provisions by which a 
party from whom discovery is sought may seek a protective order from 
the Board. Section 2.120(f) is amended to make provisions regarding a 
motion for a protective order applicable to discovery requests and 
required initial disclosures.
    Section 2.120(g) currently sets forth provisions regarding how and 
when a party may move for entry of sanctions for failure of an adverse 
party to provide discovery or comply with an order of the Board 
relating to discovery. Section 2.120(g), in paragraph (1) is amended to 
make its provisions applicable to Board orders relating to disclosures 
and to provide a deadline for filing a motion for sanctions for a 
party's failure to participate in a discovery conference.
    Section 2.120(h)(2) currently sets forth provisions regarding 
motions to test the sufficiency of responses to requests for 
admissions. Section 2.120(h)(2) is amended to state that filing 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.
    Section 2.120(i) currently sets forth provisions regarding the 
availability and use of telephone conferences and the possibility that 
parties may have to meet at the Board for a pretrial conference. 
Section 2.120(i) is amended to clarify language used 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.
    Section 2.120(j) currently sets forth provisions governing the use 
of discovery depositions and discovery responses by the deposing or 
inquiring party. Section 2.120(j), in paragraphs (3) and (5) through 
(8), is amended to provide that written 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 past Board practice whereby filings related to 
discovery that should not have been filed with the Board were returned 
to the parties.
[2.121(a) and (d)]
    Section 2.121(a) currently sets forth the process by which the 
Board issues a trial order setting various deadlines, and provisions 
for resetting deadlines by stipulation or motion. Section 2.121(a) is 
amended to state that deadlines for pretrial disclosures will be

[[Page 42249]]

included in the Board's trial order, that provisions for resetting 
dates apply to pretrial disclosures and testimony period dates, and to 
delete (and reserve) paragraph 2.
    Section 2.121(d) currently sets forth how parties should file 
stipulations resetting testimony periods. Section 2.121(d) is amended 
to account for stipulations resetting pretrial disclosure deadlines and 
testimony periods.
[2.121(e)] [add]
    Section 2.121(e) is added to explain what is required of a party 
when it makes its pretrial disclosures.
[2.122(d)]
    Section 2.122(d), in paragraph (1), currently sets forth provisions 
whereby a party in position of opposer or petitioner may make its 
registration(s) of record with its pleading. Section 2.122(d), in 
paragraph (1), is amended to conform to existing practice by removing 
the requirement for a party in position of opposer or petitioner to 
file two copies when making a pleaded registration of record with its 
pleading, and to allow the party to rely on printouts from Office 
electronic database records establishing status and title of a 
registration.
[2.123(e)]
    Section 2.123(e) currently sets forth provisions regarding the 
examination of witnesses.
    Section 2.123(e), in paragraph (3), is amended to provide that a 
party may object to improper or inadequate pretrial disclosures and may 
move to strike the testimony of a witness for lack of proper pretrial 
disclosure.
[2.126(a)]
    Section 2.126(a) currently sets forth provisions regarding the 
filing of submissions on paper, and their related exhibits. Section 
2.126(a), in paragraph (6), is amended to reflect the removal of Sec.  
2.126(b).
[2.126(b)] [remove and reserve]
    Section 2.126(b) currently allows a party to make submissions on 
CD-ROM. This section is deleted and reserved.
[2.127(a), (c) and (e)]
    Section 2.127(a) currently sets forth provisions regarding the 
briefing of motions.
    Section 2.127(a) is amended to clarify certain provisions relating 
to briefing of motions and to conform them to existing practice.
    Section 2.127(c) is amended to conform titles used in the section 
to current titles and to correct a typographical error.
    Section 2.127(e) currently sets forth provisions regarding filing 
and briefing motions for summary judgment. Section 2.127(e) is amended 
to provide that a party generally may not file a motion for summary 
judgment before it has made its initial disclosures; and to provide 
that a party may submit written disclosures and disclosed documents 
when briefing a motion for summary judgment.
[2.129(a)]
    Section 2.129(a) is amended to conform titles used in the section 
to current titles.
[2.133(a) and (b)]
    Sections 2.133(a) and (b) currently set forth provisions regarding 
the amendment of an application or registration involved in an inter 
partes trademark proceeding. Sections 2.133(a) and (b) are amended to 
conform the sections to current Office practice.
[2.142(e)]
    Section 2.142(e) is amended to conform titles used in the section 
to current titles.
[2.173(a)]
    Section 2.173(a) currently sets forth provisions regarding 
amendment of a registration involved in an inter partes trademark 
proceeding. Section 2.173(a) is amended to conform the provisions in 
the section to current Office practice.
[2.176]
    Section 2.176 currently sets forth provisions regarding amendment 
of a registration involved in an inter partes trademark proceeding. 
Section 2.176 is amended to conform the provisions in the section to 
current Office practice.
    Response to comments: The Office published a Notice of Proposed 
Rule Making (NPRM or proposed rule) in the Federal Register at 71 FR 
2498 (Jan. 17, 2006), in the Official Gazette at 1303 TMOG 58 (February 
14, 2006), and posted the notice on the Office's Web site (http://www.uspto.gov) and at http://www.regulations.gov. The comment period 
was originally set to close on March 20, 2006. Six comments requested 
only an extension of the comment period and/or a public hearing. 
Numerous others included specific comments but also requested an 
extended comment period and/or a public hearing. As a result of the 
many requests for an extension and/or hearing, the USPTO published a 
notice reopening the comment period until May 4, 2006, i.e., forty-five 
(45) days beyond the original deadline, in the Federal Register at 71 
FR 15097 (March 27, 2006), and posted that notice on the Office's Web 
site and at http://www.regulations.gov. All told, the Office received 
comments from the American Bar Association Section of Intellectual 
Property Law (ABA-IPL), American Intellectual Property Law Association 
(AIPLA), the Intellectual Property Owners Association (IPO), the 
International Trademark Association (INTA), the New York State Bar 
Association Intellectual Property Law Section (NYSBA-IPL), three 
businesses, eleven attorneys in their individual capacities, and eight 
law firms. In addition, ABA-IPL, AIPLA, IPO and INTA, while maintaining 
their separate comments, also submitted consensus views on some 
subjects of the proposed rules. A number of rule amendments suggested 
in the comments, though meritorious, cannot be adopted at this time 
because they are outside the scope of the present rule making. 
Virtually every proposal received at least some support. Many 
proposals, however, prompted either criticism or requests for 
clarification. Finally, many who provided comments also offered 
alternatives to promote the stated goals of the proposed rules. The 
comments and the Office's responses to the comments follow:
    Comments subject 1 (Service by Plaintiffs): Many comments addressed 
the Office's proposal to have plaintiffs serve on defendants copies of 
complaints or, in the case of a concurrent use applicant, its claim of 
right to a registration. Many comments stated no objection in principle 
to a service requirement, but sought clarification of the type of 
service that would be sufficient and argued that personal service 
should not be required. Most comments addressing service also sought 
clarification of whether a plaintiff would have any duty to investigate 
ownership of a mark, application, or registration, and argued that 
there should be no such duty beyond reference to Office records. Many 
also sought clarification of what was meant by the phrase 
``correspondence address of record.''
    Response: The Office is, in this final rule, proceeding with a 
requirement that plaintiffs in inter partes proceedings serve on 
defendants copies of complaints or claims of right to a concurrent use 
registration on defendants. In the affected rules and in the 
Supplementary Information portion of this notice, the Office has 
clarified the meaning of correspondence address of record. It further 
clarifies that a plaintiff has no duty to investigate other than to 
refer to Office records, that

[[Page 42250]]

personal service is not required, and that all that is required is 
service and proof of service pursuant to Sec.  2.119.
    Comments subject 2 (Service of Additional Copies by Plaintiffs): 
Many comments argued against the requirement in the proposed rules that 
a plaintiff serve additional copies of its complaint or claim of right 
to a concurrent use registration on parties the plaintiff might have 
reason to believe had an ownership interest in a mark, application, or 
registration, even if not shown by Office records to have such an 
interest. One comment suggested that a petitioner should serve a copy 
of its petition for cancellation on the attorney, if any, that 
prosecuted the application resulting in issuance of a registration; but 
most comments argued against such a practice as a burden on the 
attorney, who may no longer represent the client.
    Response: The Office recognizes that a plaintiff may conduct 
independent investigations prior to commencing a proceeding and may 
thereby discover an ownership interest in a party not reflected in 
Office records, or a more current address for a prospective defendant. 
The Office did not propose to require any investigation prior to 
commencement of a proceeding, but only recognized that such 
investigations do occur. The Office intended by this proposal only to 
enhance the prospects of having any real party in interest joined as a 
defendant and any subsequent judgment be binding on the real party in 
interest. The Office has withdrawn this proposal and retained only a 
requirement that the plaintiff serve the defendant or defendants 
revealed by reference to Office records, at the correspondence 
address(es) of record.
    Comments subject 3 (Informing the Board of Returned Service 
Copies): Several comments sought clarification of the proposed 
requirement that a plaintiff inform the Board of any return to the 
plaintiff of an undeliverable service copy of its complaint or claim of 
right to a concurrent use registration. In particular, these comments 
sought clarification of the plaintiff's obligations when the service 
copy is returned. One comment, focusing on the proposed requirement 
that the Board be notified ``within 10 days'' of a returned service 
copy, sought clarification as to the event that would start the count 
and also sought five additional days.
    Response: The Office is proceeding with the requirement and is 
providing the requested clarifications in the Supplementary Information 
section of this notice. There is no obligation on a plaintiff to 
investigate the failure of service; but if the returned service copy 
includes a new address for the defendant or if the plaintiff 
voluntarily investigates and uncovers a new address, then this 
information must be included in the report of the failure of service. 
There is no obligation on the plaintiff to serve a defendant at any new 
address. There are no specific obligations regarding how the plaintiff 
informs the Board that a service copy has been returned. The plaintiff 
can inform the Board in any manner that it might otherwise use to 
communicate with the Board, as specified in Sec. Sec.  2.126 and 2.191. 
The ten (10) days within which a party receiving a returned service 
copy should notify the Board of the return is measured from the date of 
delivery to the serving party of the returned service copy. The Office 
has decided not to extend that time period to fifteen (15) days. The 
Board will effect service on the defendant whose service copy was 
returned, utilizing the newer correspondence address information the 
plaintiff has obtained, if any, or information the Board may obtain 
through its own investigation. In the Board order effecting service, 
the Board will clarify what address is to be used for service 
thereafter, and amend, if necessary, any deadlines or dates that were 
set in the institution order. If a current correspondence address for 
the defendant cannot be obtained, then the Board may effect service by 
publication in the Official Gazette. Service by publication will 
include a web address that will allow the defendant to view the 
complaint or concurrent use application through the Office's Web site.
    Comments subject 4 (Correspondence by e-mail): One comment 
discussed the prospective expanded use of e-mail by the Board when 
issuing notices that proceedings have been instituted. Specifically, 
the comment proposed that the rules explaining that the Board may use 
e-mail to notify parties of the commencement of a proceeding be amended 
to allow for forwarding of notices to multiple e-mail addresses for a 
party. Another comment focused on use of e-mail by parties when 
forwarding service copies, and sought confirmation that service by e-
mail does not result in an additional five (5) days to respond to the 
served paper, as is the case with other means of service, pursuant to 
Sec.  2.119(c).
    Response: The proposed rules specifying that the Board may use e-
mail to notify a party of a proceeding can be read to allow the Board 
to utilize more than one e-mail address without need of further 
amendment. Whether the Board will use more than one e-mail address, 
however, is a discretionary matter to be decided on a case-by-case 
basis. As for agreed use by parties of e-mail or fax for forwarding of 
service copies, the Office confirms that Sec.  2.119(c) would not apply 
to service by electronic transmission (e-mail or fax) under Sec.  
2.119(b)(6).
    Comments subject 5 (Universal applicability of the Board's Standard 
Protective Order): Numerous comments addressed the proposal to make the 
Board's Standard Protective Order applicable in all inter partes 
proceedings. Many of these comments argued that the standard order does 
not provide necessary protections in all possible circumstances. Some 
comments noted that the standard order might not provide necessary 
protection when dealing with a pro se party, or after the conclusion of 
the proceeding. One comment noted that the Board has no ability to 
issue injunctions or contempt rulings and argued that possible entry of 
a sanction in a Board proceeding or a disciplinary action against an 
attorney would not provide immediate protection or remedy economic 
harm. Some of the comments concerned with post-proceeding issues argued 
that the Board should make the standard protective order applicable 
during and after the proceeding, or should require the parties to sign 
the protective order, so as to create a contract that may provide a 
cause of action after the conclusion of the proceeding if protected 
information was revealed by a party after conclusion of a proceeding.
    Numerous comments argued that the Board should allow parties time 
to negotiate a protective order of their own before imposing the 
standard order. Some comments indicated that if the Board was to 
require fewer initial disclosures and more closely follow what is 
required under Federal Rule 26(a)(1), then the asserted deficiencies in 
the standard protective order would be less problematic for parties. 
One comment among this latter group suggested that the standard order 
would not need to be universally applied if initial disclosures were 
lessened, apparently on the theory that limited disclosures would not 
likely involve any information in need of protection.
    Response: The standard protective order was created ``in response 
to requests from parties involved in [Board] cases'' and was first 
published in the Official Gazette on June 20, 2000, at 1235 TMOG 70. 
The announcement explained that parties could agree to use the standard 
order or could use it as a template or starting point for crafting an 
order more to their liking. The

[[Page 42251]]

announcement also explained that the Board may make orders designed to 
facilitate discovery and trial and that the Board therefore could 
impose the standard order in any case in which it would be appropriate 
to do so. The standard order is also discussed in the Board's manual of 
procedure, the TBMP, and the order itself is contained in the appendix 
of forms included in the manual.
    The Board's interlocutory attorneys have routinely applied the 
standard order when parties are unable to agree on terms for a 
protective order and progress in discovery is being thwarted by the 
absence of a protective order. The Board's authority to impose the 
order has been upheld despite a challenge raised in a petition to the 
Commissioner. See Petition Decision Nos. 01-515 (July 2, 2002) and 01-
515(r) (August 7, 2003), arising out of Opposition No. 91112956 (the 
latter petition decision viewable in the TTABVUE electronic proceeding 
file for the opposition). While the matter has not been empirically 
studied, it is believed that in the vast majority of cases in which the 
Board has imposed the order, the parties have complied with it without 
further modification. Nonetheless, the standard protective order has 
always been subject to supplementation or modification by the parties, 
upon agreement approved by the Board or upon motion of any party 
granted by the Board. This practice does not change under this final 
rule.
    While many of the comments received in response to the proposed 
rule implicitly assume that the universal application of the standard 
order to inter partes cases was proposed only because of the initial 
disclosures required in the proposed rule, the reason for the rule 
change is broader. Universal application of the standard protective 
order should reduce some existing motion practice relating to 
discovery, regardless of the extent of initial disclosures required by 
rule. Accordingly, although this final rule, in response to many 
comments, scales back the extent of required initial disclosures, 
universal application of the standard protective order remains a part 
of this final rule. As noted above, the parties in any inter partes 
case are free to negotiate supplementary terms or to substitute an 
alternative order to which they may agree; and any party is free to 
move for addition of supplementary terms or substitution of a different 
order.
    As for the comment that addressed possible breach of the protective 
order during a proceeding, it is noted that access to a party's 
confidential information is not provided as a matter of course in Board 
proceedings and confidential information need only be provided in 
response to a proper and relevant discovery request or when the party 
chooses to use such information in support of its case at trial. The 
imposition of the standard protective order provides assurances to a 
party that may need to reveal confidential information in response to a 
discovery request, so as to avoid adverse consequences that may result 
from failure to respond, or in support of its case at trial. Further, 
the attorney or party or any other individual receiving confidential 
information in response to a discovery request or during trial, may 
only obtain the information if it abides by the standard protective 
order's provisions. The standard protective order covers parties and 
their attorneys during a proceeding, defining the individuals that are 
encompassed by each designation. In addition, each independent expert 
or consultant, non-party witness, or individual not falling within the 
definition of party or attorney must sign an acknowledgment form 
agreeing to be bound by the standard protective order during and after 
the proceeding, as a condition for gaining access to protected 
information through a party or attorney. Thus, an attorney, party or 
non-party individual receiving confidential information does so 
voluntarily and, in return for access to the confidential information, 
is obligated to the disclosing party and the Board to abide by the 
provisions of the protective order, thereby providing the disclosing 
party with legal protection for harm it may suffer by any breach. 
Allegations of such a breach are very rare or nonexistent in Board 
proceedings, and no comment pointed to a reported incident involving 
breach. The Board's power to order sanctions for breach during a 
proceeding, and the Office's powers to discipline attorneys or sanction 
attorneys and parties are viewed as effective deterrents to breach.
    As for the comments noting that the standard order does not account 
for all circumstances that may be presented by all inter partes cases, 
the Office acknowledges the accuracy of these observations. However, 
the Office also notes the standard order was never intended to account 
for all situations, and the parties are free to seek additional 
protections by agreement or motion. Further, the Board's interlocutory 
attorneys have experience dealing with situations in which a party's 
access to information may have to be restricted or precluded, including 
situations involving pro se parties.
    As for the comments noting that universal application of the 
standard order does not assist parties if protected information is 
revealed after the conclusion of a proceeding, it is not at all clear 
that parties can be compelled to enter contracts that will govern their 
actions after the Board proceeding has concluded. While the Board 
encourages parties to consider creating a contract, the parties are 
responsible for the protection of their confidential information 
outside of a Board proceeding. See Fort Howard Paper Co. v. G.V. 
Gambina Inc., 4 USPQ2d 1552 n. 3 (TTAB 1987) (``it is the function of 
counsel to decide what is in the best interest of the party''). On the 
other hand, because a party receiving confidential information in a 
Board proceeding voluntarily takes on obligations that benefit the 
disclosing party and the Board, a disclosing party may well have remedy 
at law if a breach were to occur after a Board proceeding concluded. In 
fact, the TBMP refers to one case in which a claim brought in a federal 
district court, alleging breach after conclusion of the Board 
proceeding, survived a motion to dismiss. See Alltrade Inc. v. Uniweld 
Products Inc., 946 F.2d 622, 20 USPQ2d 1698 n.11 (9th Cir. 1991). In 
addition, the standard protective order provides that information or 
material disclosed in accordance with the terms of the order is for use 
solely in connection with the Board proceeding and must be returned to 
the disclosing party at the conclusion of the proceeding. The 
obligation to return protected material includes memoranda, briefs, 
summaries and the like that discuss or ``in any way refer to'' 
protected information or material. Therefore, opportunities for breach 
after a proceeding are very limited. As with the posited situations 
involving breach during a proceeding, allegations of breach after 
conclusion of a proceeding are extremely rare.
    Comments subject 6 (Discovery Conference): Most comments did not 
specifically address the discovery conference requirement. One comment 
``generally supports'' the conference requirement but did not add any 
suggestions or recommendations. One comment suggested that the final 
rule specify the subjects to be discussed during the conference. The 
same comment recommended that any Board Interlocutory Attorney or judge 
that is involved in a conference not be involved in the management or 
decision of the case, to ensure impartiality. Finally, this comment 
also recommended that the final rule be clarified to specify that the 
provision of

[[Page 42252]]

the federal rules that requires parties, when in court, to file a 
written report on their conference is not applicable in Board 
proceedings and that a written report would be necessary in a Board 
case only when directed by a participating Board attorney or judge. One 
comment supportive of the conference requirement suggested mediation 
training for Board professionals designated to conduct conferences. One 
comment critical of the conference requirement noted that the proposed 
rule is silent on the extent of involvement by a participating Board 
professional and views the conference as an unnecessary formality 
because of the existing flexibility parties have to manage discovery. 
One comment argued that counsel experienced in Board practice will bear 
a burden of educating pro se parties, foreign individuals or entities, 
or even U.S. attorneys that are not well versed in Board practice. One 
comment suggested that the availability of Board professionals to 
participate in the conferences might create a burden on the Board. One 
comment argued that conferences will be more successful if ``a member 
of the Board were actively involved,'' and is taken as a recommendation 
that an Administrative Trademark Judge participate, rather than a Board 
Interlocutory Attorney.
    Response: The final rule retains the requirement for a conference 
to discuss the nature and basis of the involved claims and defenses, 
the possibility of settlement of the case or modification of the 
pleadings, and plans for disclosures and discovery. The final rule has 
been amended to clarify that the parties shall discuss the subjects 
outlined in Federal Rule 26(f) and any other subjects that the Board 
may, in an institution order, require to be discussed. Subjects the 
Board may require the parties to discuss could include, for example, 
plans to supplement or modify the Board's standard protective order, or 
to substitute a different order, whether the parties want to seek 
mediation, arbitration or to proceed under the Board's Accelerated Case 
Resolution option, and whether the parties want to enter into any 
stipulations of fact or stipulations as to the manner in which evidence 
may be presented at trial. In a conference, parties are free to discuss 
any additional topics that could promote settlement or efficient 
adjudication of the Board proceeding. Neither Federal Rule 26(f) nor 
any listing of subjects for discussion that the Board may include in an 
institution order should be read as limiting what the parties may 
discuss. This final rule also clarifies that the parties are not 
required to file a written report on their discussions except under 
certain circumstances.
    The Office has chosen not to provide that only Board judges, rather 
than Board attorneys, will participate in discovery conferences. It is 
anticipated that the Board will provide training to its Interlocutory 
Attorneys and Administrative Trademark Judges, so that a Board 
professional occupying either position will be able to provide 
effective assistance to the parties during a conference. In addition, 
while it is anticipated that Board attorneys will participate in 
conferences far more often than Board judges, the final rule allows the 
Board to draw from both groups of professionals to provide the Board 
flexibility in scheduling and deployment of personnel. In this regard, 
it is noted that the Board cannot predict the percentage of inter 
partes cases in which a party will request involvement of a Board 
attorney or judge. In informal discussions with members of the bar, 
predictions of the extent to which parties will request involvement of 
a Board professional have varied widely, with some suggesting that 
there will be many requests for Board participation and others 
suggesting that if Board professionals do not plan to directly and 
substantially involve themselves in detailed settlement discussions, 
then requests for Board involvement in conferences may be limited.
    The Office anticipates that Board professionals involved in 
conferences will fill the educator's role that one comment suggested 
would have to be filled by experienced counsel. Any experienced counsel 
who fears being forced into the role of educator for a pro se adversary 
or less experienced adverse counsel can request the participation of a 
Board professional. The extent of involvement of a Board professional 
in a conference will necessarily vary depending on the relative 
expertise and needs of the parties and/or their counsel.
    The Office anticipates that involvement of a participating Board 
professional in the settlement aspect of a conference will be rather 
limited, in comparison to the involvement of a district court judge. 
The Board professional may ascertain whether the parties have had 
settlement talks and whether they have made progress, may ensure that 
the parties know about mediation, arbitration and the Board's 
Accelerated Case Resolution option, and may inquire whether the parties 
desire additional time after the conference to discuss settlement. The 
Office does not anticipate, though it cannot rule out, participation of 
a Board professional in discussions concerning assignments, licenses, 
restrictions on use, conditions of phase-out agreements, terms of 
consent agreements or the like. Similarly, in discussing claims and 
defenses and possible amendment of pleadings, it is anticipated that 
involved Board professionals will limit their observations to whether 
claims or defenses are within the Board's jurisdiction and the relative 
difficulty of proving a particular claim or defense, given the 
applicable law. It is unlikely a Board professional will be directly 
involved in discussions about what evidence a party believes it will be 
able to use to support a claim or defense, the good faith or bad faith 
of a party, or the relative equities of the parties' respective 
positions. Because the Office does not anticipate that Board 
professionals typically will be intimately involved in discussing 
possible terms of settlement, or providing evaluations of a particular 
party's chances of success on a particular claim or defense, it is not 
anticipated that a Board professional's involvement in these aspects of 
the discovery conference will present a risk that the Board 
professional will become partial to one party or another. The other 
aspect of conferences, i.e., discussing plans for disclosure and 
discovery will involve a more mechanical exercise. Involved Board 
professionals will participate as needed to confirm for the parties how 
Board rules and applicable federal rules operate, answer questions the 
parties may have about deviating from those rules, and to aid the 
parties in crafting a plan that will ensure efficient compliance with 
obligations.
    Comments subject 7 (Initial Disclosures): Perhaps the greatest 
source of concern and most frequently addressed subject was the 
proposal for initial disclosures that would obviate the need for a 
party to seek certain information through service of discovery 
requests. The proposed rule did not specify what should be disclosed, 
as does Federal Rule 26(a)(1), but the ``Background'' section of the 
notice of proposed rule making noted that a party generally would be 
found to have met its initial disclosure obligations if the party 
provided information to adverse parties on any of a number of 
particular subjects, ``as applicable in any particular case.'' Many 
comments reflected an assumption that every party, in every case, would 
be required to make initial disclosures on the subjects listed in the 
Background section of the NPRM, and argued that such a requirement 
would be more

[[Page 42253]]

onerous than the subjects covered by Federal Rule 26(a)(1). Numerous 
comments argued that disclosure would burden larger plaintiffs and 
foreign parties more than pro se or small entity defendants or 
applicants whose applications are based on intent to use. However, one 
comment argued that a small entity or pro se party would suffer the 
greater burden. One comment suggested that much information about a 
party, especially a large party, can be obtained from the internet and 
disclosures or discovery then become merely a tool for harassment of 
the large party.
    Numerous comments argued that disclosures should not be required 
until it is clear that a defendant intends to defend the action, which 
would be shown by the filing of an answer. Many comments noted that 
most Board cases settle and therefore initial disclosures will be 
unnecessary in most cases. Other comments asserted that traditional 
discovery devices work well enough and that initial disclosure is not 
necessary. One comment asserted that disclosure would require a party 
to disclose information helpful to its adversary and that the Board 
proposal to allow introduction of disclosures in the same way that 
discovery responses may be introduced in a Board proceeding would put 
the disclosing party in the position of aiding its adversary. Some 
comments asserted that once a party has made significant disclosures it 
will be less likely to settle. Some comments argued that initial 
disclosures would lead to increased motion practice regarding the 
sufficiency of disclosures and/or whether sanctions should be entered 
for failure to make sufficient disclosures.
    Some comments supported the use of initial disclosures in principle 
but concluded the proposed rule requires further clarification. These 
comments suggested that disclosure obligations be articulated in the 
trademark rules themselves and not in the Background or Supplementary 
Information section of a notice of rule making or on the Board Web 
site. Among those who offered alternatives to the proposed rule, some 
proposed that the Board follow Federal Rule 26(a)(1)(A) & (B), or 
include in a trademark rule language roughly akin to the federal rule. 
Others suggested the federal rule as a starting point, with some 
additional disclosures reflective of what is generally at issue when a 
particular claim or defense is pleaded. Some comments distinguished 
between reasonable disclosure of ``objective'' or ``fact neutral'' 
matters and disclosure of subjective, overbroad or irrelevant 
information. Many comments argued for clarification that disclosures 
may be amended or supplemented.
    Response: This final rule adopts the oft-suggested alternative of 
requiring only those initial disclosures set forth in Federal Rule 
26(a)(1) (one comment stated ``the resources involved in producing this 
information are relatively minimal''). Thus, the Office has not adopted 
suggested alternatives that would require any additional disclosures, 
even if such matters might be considered ``objective'' or ``fact 
neutral.'' In fact, though the Board in its January 1994 Official 
Gazette announcement stated that it would not follow many of the 
Federal Rules of Civil Procedure as amended in December 1993, much of 
this final rule constitutes an effective retraction of that 
announcement. Much more Board practice will now follow the federal 
rules. Thus, the Office has decided that disclosure practice will be 
more predictable if only those initial disclosures contemplated by the 
federal rule are required in Board proceedings.
    Many of the arguments against initial disclosures may have been 
rooted in the perception that every party in every case would have to 
disclose information regarding the list of subjects contained in the 
Background section of the proposed rule. Accordingly, since the initial 
disclosures required by this final rule will be much more limited, 
numerous comments no longer require a response. However, it is 
understood that numerous comments may also have been intended to apply 
to any form of required initial disclosures and are addressed as 
follows.
    The Office has concluded that the relative burden for parties 
making initial disclosures is not a function of Federal Rule 26(a)(1) 
or the application of Federal Rule 26 to Board proceedings by Trademark 
Rules 2.116 and 2.120 but, rather, reflects the position the party 
occupies in the case and the claims or defenses the party chooses to 
assert. No comments asserted that Federal Rule 26(a)(1) creates unequal 
burdens and no comments asserted that utilization of initial 
disclosures in the district courts routinely creates unequal or unfair 
burdens. There is no effective means for ensuring that every party to 
every case will have to exert the same effort to comply with the 
requirement for initial disclosures. Information gleaned from the 
internet about an adverse party, and initial disclosures or discovery 
responses from that party, are not of equal evidentiary value. In fact, 
in cases before the Board, it is not unusual for motions to compel to 
result from discovery responses that do not provide information or 
documents and instead refer the inquiring party to a Web site. 
Therefore, the potential that disclosure or discovery rules could be 
used to harass an adversary is not seen as sufficient reason to rely on 
the availability of the internet as a sufficient substitute for 
disclosure and discovery procedures. A motion for a protective order is 
available to any party, large or small, that believes it is the subject 
of harassment by an adversary.
    The argument that disclosure should not be necessary if a defendant 
defaults and that initial disclosures will not be necessary in the 
large percentage of Board cases that settle is dealt with infra in the 
discussion regarding the disclosure, discovery and trial schedule for a 
case proceeding under this final rule. Comments that predict increases 
in motion practice, or seek clarification regarding certain motions 
related to disclosures, are dealt with below, but also are addressed 
infra in the discussion of the comments regarding particular types of 
motions relating to disclosures.
    It is not the Board's experience that traditional discovery 
requests always work so well as a mechanism for the exchange of routine 
information that initial disclosures would be of limited utility. As 
utilized in the district courts, and as it is expected they will be 
utilized in Board inter partes cases, initial disclosures eliminate the 
cost and time associated with seeking core information regarding the 
existence of and location of witnesses and documents. While the 
introduction of the use of initial disclosures in the courts prompted 
criticism that undue satellite litigation would result, the empirical 
study referenced in the Supplementary Information section did not find 
that to be a significant problem. Because the Board is adopting the 
same initial disclosure approach utilized in the district courts, it is 
likewise expected that there will not be significant problems with 
satellite litigation in Board cases. Moreover, the argument that 
initial disclosures unfairly require a party to aid its adversary was 
raised in connection with disclosure in the district courts under the 
federal rules. However, this has not been the case. Further, it appears 
that this concern may have been rooted in the perceived need to 
disclose more information under the proposed rule than is required by 
this final rule.
    While some comments contended that parties to Board proceedings 
should not be able to introduce written disclosures or disclosed 
documents as affirmative evidence, the limited initial disclosures 
contemplated by this final rule are not

[[Page 42254]]

expected to provide many opportunities to utilize the disclosures as 
evidence. For example, the identification of witnesses and identifying 
information is itself of little evidentiary value. On the other hand, 
the Office notes that a party making initial disclosures has the option 
to produce copies of documents instead of disclosing information about 
the existence and location of documents. If copies of documents are 
produced in lieu of providing descriptions of documents and their 
locations, then these documents may have evidentiary value and the 
final rule merely proposes that they be treated in the same way as 
documents produced in response to discovery requests. In addition, if 
parties agree in a discovery conference to make greater use of 
reciprocal written disclosures of facts, as a less expensive mechanism 
for exchanging information than traditional discovery, then the written 
disclosures should be treated the same as discovery responses.
    The provision of Federal Rule 26(e) regarding supplementation of 
disclosures and discovery responses will be applicable to Board inter 
partes proceedings.
    Comments subject 8 (Interrogatory Limit): As with other subjects, 
comments on the proposed limit on the number of interrogatories varied. 
Some comments supported either the proposed limit of twenty-five (25) 
or something lower than the existing limit of seventy-five (75). Other 
comments, however, argued that reduction of the limit on the number of 
interrogatories would have adverse consequences. Among this latter 
group of comments, some noted that a reduction in interrogatories may 
lead to an increase in discovery depositions, which are more costly; 
others suggested that more motion practice may result, whether from 
parties seeking leave to exceed the limit or from parties objecting to 
interrogatories alleged to be in excess of the limit. One comment 
observed that if the Office was responsive to comments calling for less 
extensive mandatory initial disclosures, then the need for more 
interrogatories would remain. Some comments noted that although the 
federal courts have a limit of twenty-five (25) interrogatories, the 
courts generally do not count subparts, while the Board does, so a 
reduction in the limit without a change in the practice of counting 
subparts would represent a drastic reduction.
    Response: A number of the comments against reducing the limit on 
interrogatories make a persuasive case why the limit should remain 
unchanged. Because the Board's practice of counting subparts is 
different from the practice in many courts, those familiar with Board 
practice have developed an understanding of the counting methodology. 
In addition, interrogatories are more cost-effective than depositions 
and have more utility when dealing with certain parties or in more 
complicated cases with numerous issues. Accordingly, the Office 
retracts the proposal to further limit interrogatories. The methodology 
for counting interrogatories shall remain unchanged.
    Comments subject 9 (Expert Disclosures): Several comments observed 
that a distinction needed to be drawn between consulting/non-testifying 
experts, who should not be covered by disclosure rules, and testifying 
experts, who could be covered by disclosure rules. Other comments noted 
that the proposed rule did not specify, as does Federal Rule 26(a)(2), 
the extent of the disclosures to be made about expert witnesses, their 
qualifications, bases for their testimony and the like. A common 
concern was that the proposed rule called for disclosure of experts too 
early in discovery, because most parties will not decide whether to use 
experts until late in discovery or after discovery but prior to trial. 
Numerous comments suggested that expert disclosure not occur until 
after fact discovery was completed. Several related comments suggested 
that disclosure of experts be staggered, with plaintiff's disclosure 
followed by defendant's, followed by plaintiff's rebuttal. Some 
comments suggested tracking the Federal Rule 26(a)(2) provisions on 
when expert disclosure should occur. One comment suggested that the 
Office make clear that a resetting of the closing date for discovery 
would result in a resetting of the deadline for expert disclosure(s). 
While the proposed rule recognized that in some instances a party may 
not decide to use an expert witness at trial until after discovery had 
closed, and required prompt disclosure when the expert was retained 
after the close of discovery, one comment suggests that this provision 
may lead to abuse. Another comment requested further clarification on 
the availability of motions to strike or exclude expert testimony for 
untimely or insufficient disclosure. Almost universally, comments 
acknowledged that retention of an expert witness is likely to be quite 
expensive and is not frequently done in Board proceedings.
    Response: The Office acknowledges the need to clarify aspects of 
the proposed rule as noted in various comments. The final rule provides 
for disclosure of expert testimony. This clarifies that disclosure of 
consulting experts is not required. In addition, the final rule 
specifies that disclosure of expert testimony shall occur in the manner 
and sequence of Federal Rule 26(a)(2), unless the Board provides 
alternate instructions in an institution order or subsequent order. 
This clarifies that the information to be disclosed is that provided 
for in the federal rule. As in the federal rule, this final rule allows 
the Board to specify staggered disclosure schedules, when necessary or 
appropriate, but specifies that in the absence of such direction by the 
Board, disclosure will occur in accordance with the federal rule. 
Because the federal rule requires disclosure ninety (90) days prior to 
trial, as applied in Board proceedings that will mean expert 
disclosures will occur with thirty (30) days remaining in the discovery 
period. The federal rule also allows for disclosure of a testifying 
expert retained solely to contradict or rebut the anticipated testimony 
of another party's expert thirty (30) days after the disclosure by the 
other party. This provision will likewise apply to Board practice.
    As many of the comments noted, expert testimony is expensive and 
typically not utilized in Board proceedings. Accordingly, detailed 
information in the final rule setting forth deadlines for staggered 
expert disclosures after discovery and prior to trial is not included. 
Such provisions would delay trial in the vast majority of cases that do 
not involve use of expert testimony. Instead, the final rule provides 
the Board with flexibility to make any orders necessary to accommodate 
disclosure of experts and discovery regarding experts in the rare cases 
when expert testimony may be used. Following Federal Rule 26(a)(2) and 
allowing the Board flexibility to manage the disclosure and discovery 
process makes it unnecessary to include in the final rule a specific 
statement that expert disclosure deadlines will be reset when the close 
of the discovery period is reset. As noted, because of the potential 
for abuse when an expert is retained after the disclosure deadline set 
forth in the federal rule, or any deadline that may be specified by the 
Board in any order it may issue, the final rule also specifies that a 
party retaining a testifying expert after the deadline for disclosure 
will have to seek leave from the Board to utilize the expert. The Board 
anticipates deciding any such motion promptly or suspending proceedings 
until the motion can be decided, and the

[[Page 42255]]

amended rule allows the Board flexibility to choose either option.
    Comments subject 10 (Pretrial Disclosures): Some comments suggested 
that pretrial disclosures are not necessary and there is little in the 
way of unfair surprise testimony in Board proceedings. One comment 
suggested that a pretrial disclosure deadline fifteen (15) days prior 
to trial, instead of the proposed thirty (30) days prior to trial, 
should be sufficient. A related comment suggested that disclosure 
deadlines be staggered, as are the testimony periods in Board cases. 
Two comments argued for clarification of certain terms or phrases in 
the proposed rule and one of these offered suggested alternate 
language. Some comments addressed the ramifications of inadequate or 
improper disclosure and/or the availability of motions directed to 
asserted inadequate or improper disclosure.
    Response: For the Board cases that go through trial, motions to 
quash testimony depositions or to strike testimony after it has been 
taken are not frequent but, when filed, are particularly disruptive. 
Claims of unfair surprise due to asserted inadequate discovery 
responses and claims of improper or insufficient notice although not 
frequent are not unusual. While one comment suggested that the 30-day 
intervals between the parties' respective testimony periods provide 
opportunities to ameliorate the ill effects of unfair surprise, the 
Board's experience is to the contrary. Because trial is conducted 
without a Board professional present, there is little opportunity for 
swift rulings on motions alleging unfair surprise and when such motions 
arise, testimony periods often need to be adjusted or reset. The 
requirement for limited pretrial disclosures of the witnesses a party 
expects to present or may present if needed is maintained in this final 
rule. The suggestions to stagger pretrial disclosures and to schedule 
the first such disclosure closer to the time of trial have been adopted 
and are included in the final rule. The final rule also includes 
clarifying language on what is necessary to identify a witness and the 
expected topics of the planned testimony of the witness. The subject of 
motions addressing asserted improper or inadequate disclosure is 
covered below in the discussion of comments on motions relating to all 
required disclosures and the obligation to supplement required 
disclosures.
    Comments subject 11 (Scheduling Issues; Accommodating Settlement 
Talks): Some comments argued for clarification that initial disclosures 
would not be required of a plaintiff if a defendant did not file an 
answer. One of these suggested that the de facto stay of initial 
disclosure obligations when there is a default or a motion under 
Federal Rule 12 be codified in any final rule. Some comments argued 
that the Board should be willing to suspend cases for settlement talks 
in the period after answer is filed but prior to a discovery 
conference. One comment posited that the 180-day (approximately six-
month) discovery period is effectively shortened by thirty (30) days 
under the proposed rule, because a party may not seek discovery until 
it has made its initial disclosures and they are not due until thirty 
(30) days into the discovery period. One comment argued that 
proceedings in a case should not be suspended when a motion to compel 
disclosure or discovery is filed. The same comment sought clarification 
that a party should not be able to serve discovery after a motion to 
compel is filed but prior to issuance of a suspension order by the 
Board. A different comment sought clarification as to whether discovery 
requests can be served after issuance of a Board order suspending 
proceedings because a discovery motion has been filed. Two comments 
sought inclusion of entire proceeding schedules in the rules, i.e., all 
pleading, disclosure, discovery, and trial deadlines in a proceeding, 
rather than having the proceeding schedule set in an institution order.
    Response: The proposed rule, and this final rule, provides that 
initial disclosures are not due until 30 days after discovery opens. 
Discovery itself does not open until 30 days after an answer is filed 
by a defendant. Thus, in any case of default or in any case in which a 
defendant files a motion under Federal Rule of Civil Procedure 12 
directed to plaintiff's pleading, the Board will reset discovery, 
disclosure and trial dates. Similarly, when a defendant includes a 
counterclaim with its answer, the Board must reset these dates to 
account for the addition of the counterclaim. In short, there are many 
potential triggers that will prompt the Board to reset discovery, 
disclosure and trial dates and any attempt to codify them all in Sec.  
2.120 would be cumbersome. The final rule states that disclosure 
obligations may be reset by order of the Board and the Supplementary 
Information section of this final rule addresses the ways in which the 
Board may exercise this authority.
    The Board has traditionally been very liberal in its willingness to 
suspend cases to accommodate settlement negotiations between parties. 
This practice is not codified in the trademark rules and will remain a 
discretionary practice that the Board may alter as necessary without 
need for any change in the rules. However, the Office clarifies that 
this final rule does not alter that traditional liberal approach except 
in one instance, namely, the Board is unlikely to suspend cases for 
settlement talks between the time an answer is filed and the deadline 
for a discovery conference. One point of the conference is for the 
parties to either discuss settlement or at least discuss whether, in 
light of the answer and the close of the pleadings, they may have a 
basis to begin settlement talks. In essence, comments calling for the 
Board to allow for suspension after answer but before the discovery 
conference do not address a proposed change in a rule but, rather, only 
address Supplementary Information included in the proposed rule. 
Accordingly, no change has been made in the final rule to codify 
discretionary practices relating to suspension to accommodate 
settlement talks.
    A party's initial disclosures are due within thirty (30) days after 
discovery opens but may be served as soon as the party wishes. Given 
that both parties, once the pleadings are closed, should be able to 
start preparing their disclosures, and given the scaled back number and 
extent of disclosures required by this final rule, the parties may be 
able to exchange disclosures at their discovery conference or soon 
thereafter. In short, the parties can effectively use the entire 180-
day period for discovery if they are prompt with service of their 
initial disclosures.
    When the Office amended certain trademark rules governing Board 
practice in 1998, it included provisions providing for suspension of 
cases until discovery motions are decided. It may be possible for 
parties to continue with discovery activities while other discovery 
matters involved in discovery motions are decided, especially when the 
case is in the early part of the discovery period. However, the Board 
receives many motions relating to discovery late in the discovery 
period or after the discovery period has closed but prior to trial. In 
these cases in particular, it is more efficient to suspend proceedings 
and stay trial until discovery matters have been resolved. It would be 
cumbersome to have different rules governing suspension for discovery 
motions, depending on when such motions are filed. Accordingly, the 
Office retains the rule providing for suspension as a matter of course. 
The final rule has, however, been amended in response to some comments 
to

[[Page 42256]]

prevent service of additional discovery requests after filing and 
service of a motion relating to discovery, even prior to the Board's 
issuance of a suspension order.
    The entire discovery and trial schedule, including disclosure 
deadlines, has not been included in the final rule. Dates must be reset 
when a defendant files a counterclaim, and often are reset once issues 
relating to a defendant's default or a defendant's motions under 
Federal Rule 12 are decided. Accordingly, it would be cumbersome and 
unwieldy to craft a rule that would account for all possible 
circumstances and permutations of dates.
    Comments subject 12 (Motions relating to Disclosures): One comment 
argued that ``all-encompassing'' initial disclosures would lead to 
motions to compel such disclosures, motions challenging the sufficiency 
of such disclosures and motions to preclude introduction of testimony, 
documents or other evidence because of inadequate disclosures. Numerous 
other comments also asserted that such satellite litigation would 
result from the proposed required disclosures. Some of these comments 
suggested that such problems could be limited by adopting the 
disclosures of Federal Rule 26. One comment asserted that the Board 
lacks adequate sanctioning authority to stem evasive and incomplete 
discovery responses and may face the same problem with disclosures. 
Some comments sought clarification that supplementation of disclosures 
will be permitted and implied that this may ameliorate some motion 
practice relating to disclosures. One comment sought clarification that 
a party may move to strike or preclude expert testimony for improper or 
untimely disclosure. One comment suggested that a final rule permit 
motions to strike portions of testimony for inadequate or improper 
pretrial disclosure. One comment sought an explanation why a motion for 
sanctions for a party's failure to participate in a discovery 
conference must be filed prior to the due date for initial disclosures 
and also argued that if such a motion is filed proceedings should be 
suspended. Two comments argued that a party should be permitted to file 
a motion for summary judgment prior to making its initial disclosures 
if the ground for the motion for summary judgment is unrelated to the 
disclosures. One comment argued for, on the one hand, specification of 
the consequences for a party's failure to meet the deadline for 
pretrial disclosures and, on the other hand, procedures available to a 
party attempting to remedy its failure to make pretrial disclosures. 
This comment also sought clarification whether a party would have to 
respond to a motion for summary judgment if it believed the moving 
party had not made adequate initial disclosures, the process for 
determining whether an initial disclosure was adequate, clarification 
of the penalties for inadequate initial disclosures and clarification 
whether a party seeking imposition of such penalties would have to file 
a motion to compel. Another comment also sought addition of a rule 
specifying the consequences for failing to disclose facts as of the 
initial disclosure deadline.
    Response: When the Federal Rules of Civil Procedure were amended to 
require disclosures, many commentators suggested that significant 
satellite litigation would result. The actual result was not nearly as 
severe as feared. Further, most of the comments advancing similar 
arguments in response to the proposed rule appear to be based on the 
extent and number of initial disclosures perceived to be a part of the 
proposed rule, which are significantly scaled back in this final rule. 
Specific consequences for failure of a party to make timely, proper or 
adequate disclosures have not been set out in the final rule. The Board 
must retain the discretion to tailor sanctions to the particular 
circumstances of each case. However, the final rules have been 
clarified in certain respects. A party may seek to strike any testimony 
or portions of testimony, whether or not from an expert, when related 
disclosures were untimely, improper or inadequate. The rule has been 
clarified to state that a motion to strike testimony of a witness for 
inadequate pretrial disclosure may seek to strike that portion of the 
testimony that was not adequately covered by the disclosure.
    A motion for sanctions for a party's failure to participate in the 
discovery conference must be filed prior to the deadline for initial 
disclosures because one subject for discussion in such a conference is 
disclosure. Further, if the motion seeks a sanction that is potentially 
dispositive of the case, a suspension order is issued under the 
existing rules and no further amendment is needed to so specify. A 
motion to compel is the available remedy when an adversary has failed 
to make, or has made inadequate, initial disclosures or disclosures of 
expert testimony. Both of these types of disclosures are made during 
discovery, and a motion to compel must precede a motion for sanctions. 
A motion for sanctions is only appropriate if a motion to compel these 
respective disclosures has already been granted. In contrast, pretrial 
disclosures are not a discovery activity, and a motion to compel is not 
available. Accordingly, the approach varies when an adversary does not 
make pretrial disclosures, or provides inadequate pretrial disclosures. 
The possibilities include a motion for sanctions, a motion to quash a 
notice of testimony deposition, or a motion to strike testimony, 
depending on the circumstances.
    The requirement that a party make its initial disclosures before 
filing a motion for summary judgment, except for motions based on claim 
or issue preclusion or asserted lack of jurisdiction of the Board, is 
retained in the final rules. Given the scaled back nature of initial 
disclosures, making the required disclosures should not prove a 
significant obstacle to a party that decides to seek summary judgment 
on any other ground.
    Comments subject 13 (Briefing of Motions): One comment argued that 
the proposed rule results in a de facto reduction in the page limit for 
briefs on motions.
    Response: The proposed rule only reflects current practice and does 
not reduce the stated page limit for motions on briefs. This final rule 
adopts the clarifying language presented by the proposed rule.
    Comments subject 14 (Removal of option to file materials on CD-
ROM): One comment noted that restrictions on CD-ROM submissions may not 
be imposed by the courts and stated the assumption that the Office 
might reconsider permitting such submissions if improvements in 
technology make them more suitable for the Board to handle. One comment 
supported the proposal.
    Response: The Office is willing to reconsider allowing submissions 
by CD-ROM in inter partes trademark proceedings if technology 
eventually will allow such submissions to be efficiently incorporated 
in the Board's electronic proceeding files. The removal of the option 
to file materials on CD-ROM is adopted in this final rule.

Rule Making Considerations

    Regulatory Flexibility Act: For the reasons set forth herein, the 
Deputy General Counsel for General Law of the United States Patent and 
Trademark Office has certified to the Chief Counsel for Advocacy of the 
Small Business Administration that the changes in this final rule will 
not have a significant economic impact on a substantial number of small 
entities. See 5 U.S.C. 605(b).
    The United States Patent and Trademark Office (Office) is amending

[[Page 42257]]

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 final rules.
    The changes in this final 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 were not required for the changes in the proposed rule, a 
Regulatory Flexibility Act analysis was also not required. See 5 U.S.C. 
603. Nevertheless, the Office published a notice of proposed rule 
making 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, on a 
reciprocal basis, identify individuals with knowledge that could be 
used to support their claims or defenses and identify the existence and 
location of documents which could support their claims or defenses, 
will disclose, as part of the discovery phase, expert witnesses to be 
used during the trial phase of Board proceedings, and will, during a 
pretrial phase, disclose the identify of witnesses the party expects to 
call during trial.
    These 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 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.
    One comment received in response to the notice of proposed rule 
making specifically addressed the Regulatory Flexibility Act, making 
two points: First, the requirement that a plaintiff serve a copy of its 
complaint on the defendant will create a burden. Second, the 
requirement that any party must, under certain circumstances, make 
particular disclosures will be a burden. The Office does not find the 
arguments persuasive, for reasons that follow:
    (1) In regard to the service requirement, the final rule has been 
clarified in response to many comments and has been scaled back from 
the proposed rule. Under existing practice, every plaintiff, including 
a small business, must serve a copy of every paper the plaintiff files 
during a proceeding on the defendant. See 37 CFR 2.119. During the 
course of a proceeding, this could amount to many filings. The sole 
exception is the plaintiff's initial pleading or complaint. Id. The 
final rule merely requires that the single filing (the pleading or 
complaint) that does not currently carry a service requirement will now 
be treated the same as all other filings and carry such a requirement. 
Thus, this is not a significant economic burden on any plaintiff. In 
addition, while parties could not previously meet the service 
requirement by using electronic transmissions (e-mail or fax), the 
final rule allows for such forwarding of service copies, when the 
parties agree to use of that form of communication. Since many parties 
now routinely use e-mail or fax to communicate, the Board expects that 
the vast majority of parties will agree to use of e-mail or fax and 
this will facilitate compliance with the requirement for service of the 
complaint. For this reason, too, the amended service requirement will 
not create a significant economic burden on any plaintiff.
    (2) In regard to the disclosure requirements, there are three types 
of disclosures called for under the final rule. There are initial 
disclosures, disclosures of expert witnesses expected to testify, and 
pretrial disclosures. Because ninety-five percent or more of Board 
cases settle, and most of these settle or can be settled at a point in 
the process where none of the disclosure obligations will have arisen, 
the requirements for disclosures should not create a significant 
economic burden for most parties. Even in cases that do not settle, 
parties are free to agree to greater or lesser use of disclosures, 
subject to approval of their agreement by the Board, and can therefore 
modify their reciprocal responsibilities in whatever manner they 
believe will promote an efficient and fair procedure.
    For the small percentage of cases that proceed far enough that 
initial disclosures will be necessary and where the parties have not by 
agreement modified their obligations, the number and breadth of initial 
disclosures have been scaled back significantly from the proposed rule. 
The final rule essentially requires a party only to identify 
individuals who are knowledgeable about matters for which the party 
bears the burden of proof, and to identify the existence and location 
of documents that would help the party bear its burden of proof. These 
types of information must currently be provided anyway, if a party's 
adversary asks, and most parties that do not settle prior to discovery 
do ask not only for these items of information but for much more. Thus, 
initial disclosures merely require a party to provide, without being 
asked, a small portion of that which it would routinely be asked to 
provide in any case that proceeds into the discovery phase. While the 
party must make limited disclosures, it also receives the benefit of 
disclosures from its adversary without having to employ costly 
discovery requests or motions related thereto, so the requirement for 
initial disclosures creates no net adverse economic effect.
    Disclosure of expert testimony will not create a significant 
economic burden on any business, including a small business, because 
expert witnesses are so expensive to employ that even large entities 
utilize experts in only the rarest of cases. Under current practice, 
plans to use experts must be revealed if the party is asked; so, again, 
the rule only requires a minimal disclosure without the need for an 
adverse party to serve discovery requests. For any party that does 
retain an expert, any additional expense associated with disclosures 
would be minimal, compared to the expense of retaining the expert.
    Finally, pretrial disclosures only require that a party, in advance 
of the presentation of its testimony, inform its adversary of the names 
of, and certain minimal identifying information about, the individuals 
who are expected to testify at trial. The benefits to all parties of 
knowing in advance what witnesses

[[Page 42258]]

will be presented, so parties can prepare for trial and avoid surprise 
witnesses, far outweigh the negligible expense associated with 
informing adverse parties of witnesses who will be presented at trial.
    For these reasons, the Office has concluded that none of the three 
types of required disclosures will have a significant net adverse 
economic effect on any parties, including small businesses.
    Executive Order 13132: This rule making does not contain policies 
with federalism implications sufficient to warrant preparation of a 
Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).
    Executive Order 12866: This rule making has been determined to be 
not significant for purposes of Executive Order 12866 (Sept. 30, 1993).
    Paperwork Reduction Act: The proposed amendments to the Trademark 
Trial and Appeal Board Rules did 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 did 
not apply to the proposed amendments. This final rule also does not 
impose any such requirements.
    Interested persons are requested to send comments to the Office of 
Information and Regulatory Affairs, Office of Management and Budget, 
New Executive Office Building, Room 10202, 725 17th Street, NW., 
Washington, DC 20503, Attention: Desk Officer for the Patent and 
Trademark Office; and (2) Gerard F. Rogers, Trademark Trial and Appeal 
Board, P.O. Box 1451, Alexandria, VA 22313-1451.
    Notwithstanding any other provision of law, no person is required 
to respond to nor shall a person be subject to a penalty for failure to 
comply with a collection of information subject to the requirements of 
the Paperwork Reduction Act unless that collection of information 
displays a currently valid OMB control number.

List of Subjects in 37 CFR Part 2

    Administrative practice and procedure, Trademarks.

0
For the reasons set forth in the preamble, and under the authority 
contained in 35 U.S.C. 2 and 15 U.S.C. 1123, as amended, 37 CFR Part 2 
is amended as follows:

PART 2--RULES OF PRACTICE IN TRADEMARK CASES

0
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.


0
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 (defendants). 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) Within ten days from the date of the Board's notification, 
the applicant for concurrent use registration must serve copies of its 
application, specimens and drawing on each applicant, registrant or 
user specified as a concurrent user in the application for 
registration, as directed by the Board. If any service copy is returned 
to the concurrent use applicant as undeliverable, the concurrent use 
applicant must notify the Board within ten days of receipt of the 
returned copy.
* * * * *


0
3. Revise Sec.  2.101(a), (b) introductory text 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 notice of opposition with the required fee. The notice must 
include proof of service on the applicant, or its attorney or domestic 
representative of record, at the correspondence address of record in 
the Office, as detailed in Sec. Sec.  2.101(b) and 2.119.
    (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 
of record for the applicant or, if there is no attorney, on the 
applicant or on the applicant's domestic representative, if one has 
been appointed, at the correspondence address of record in the Office. 
The opposer must include with the opposition proof of service pursuant 
to Sec.  2.119 at the correspondence address of record in the Office. 
If any service copy of the opposition is returned to the opposer as 
undeliverable, the opposer must notify the Board within ten days of 
receipt of the returned copy. 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.  2.193(c)(1)(iii) are required for oppositions filed 
through ESTTA 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 notice of opposition, with proof of service on the 
applicant, or its attorney or domestic representative of record, if one 
has been appointed, at the correspondence address of record in the 
Office, and the required fee, unless the notice is filed in accordance 
with Sec.  2.198.
0
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.
* * * * *
    (c) The Board shall forward a copy of the notification to 
applicant, as follows:
* * * * *
0
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 in the

[[Page 42259]]

Office, as detailed in Sec. Sec.  2.111(b) and 2.119.
    (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, if one has been 
appointed, at the correspondence address of record in the Office. 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, if one has been appointed, 
at the correspondence address of record in the Office. If any service 
copy of the petition for cancellation is returned to the petitioner as 
undeliverable, the petitioner must notify the Board within ten days of 
receipt of the returned copy. The petition for cancellation need not be 
verified, but must be signed by the petitioner or the petitioner'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.  2.193(c)(1)(iii) are 
required for petitions submitted electronically via ESTTA. The petition 
for cancellation may be filed at any time in the case of registrations 
on the Supplemental Register or under the Act of 1920, or registrations 
under the Act of 1881 or the Act of 1905 which have not been published 
under section 12(c) of the Act, or on any ground specified in section 
14(3) or (5) of the Act. In all other cases, the petition for 
cancellation and the required fee must be filed within five years from 
the date of registration of the mark under the Act or from the date of 
publication under section 12(c) of the Act.
    (c) * * *
    (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, if one has been appointed, at the correspondence 
address of record in the Office, and with the required fee, unless the 
petition is filed in accordance with Sec.  2.198.

0
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 in proper form (see Sec. Sec.  
2.111 and 2.112), with proof of service in accordance with Sec.  
2.111(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 
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. 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).
* * * * *

0
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, or a motion by a party to use an 
alternative order is granted by the Board. 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.

0
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.

0
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.
* * * * *

0
10. Revise Sec.  2.120, paragraphs (a), (d)(1), (e), (f), (g), (h)(2), 
(i), (j) introductory text, (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 Federal Rule of Civil Procedure 26 relating 
to required disclosures, the conference of the parties to discuss 
settlement and to develop a disclosure and discovery plan, the scope, 
timing and sequence of discovery, protective orders, signing of 
disclosures and discovery responses, and supplementation of disclosures 
and discovery responses, are applicable to Board proceedings in 
modified form, as noted in these rules and as may be detailed in any 
order instituting an inter partes proceeding or subsequent scheduling 
order. The 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, and the parties must discuss the subjects set 
forth in Federal Rule of Civil Procedure 26(f) and any subjects set 
forth in the Board's institution order. 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 ten days 
prior

[[Page 42260]]

to the deadline for the conference. The participating attorney or judge 
may expand or reduce the number or nature of subjects to be discussed 
in the conference as may be deemed appropriate. The discovery period 
will be set for a period of 180 days. Initial disclosures must be made 
no later than thirty days after the opening of the discovery period. 
Disclosure of expert testimony must occur in the manner and sequence 
provided in Federal Rule of Civil Procedure 26(a)(2), unless alternate 
directions have been provided by the Board in an institution order or 
any subsequent order resetting disclosure, discovery or trial dates. If 
the expert is retained after the deadline for disclosure of expert 
testimony, the party must promptly file a motion for leave to use 
expert testimony. Upon disclosure by any party of plans to use expert 
testimony, whether before or after the deadline for disclosing expert 
testimony, the Board may issue an order regarding expert discovery and/
or set a deadline for any other party to disclose plans to use a 
rebuttal 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 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. The 
parties are not required to prepare or transmit to the Board a written 
report outlining their discovery conference discussions, unless the 
parties have agreed to alter disclosure or discovery obligations set 
forth by these rules or applicable Federal Rules of Civil Procedure, or 
unless directed to file such a report by a participating Board 
Interlocutory Attorney or Administrative Trademark Judge.
    (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 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 thirty 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) * * * (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 seventy-
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 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 testimony 
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 
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 initial disclosures or expert testimony 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 initial disclosures, expert testimony 
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 initial 
disclosures, expert testimony disclosure, or discovery, the case will 
be suspended by the Board with respect to all matters not germane to 
the motion. After the motion is filed and served, no party should file 
any paper that is not germane to the motion, except as otherwise 
specified in the Board's suspension order. Nor may any party serve any 
additional discovery until the period of suspension is lifted or 
expires by or under order of the Board. The filing of a motion to 
compel any 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

[[Page 42261]]

initial disclosures or expert testimony disclosure 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 those 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 expenses to any party. The Board may 
impose against a party any of the sanctions provided in Rule 37(b)(2) 
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 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 initial disclosures or expert 
testimony disclosure, 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) 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 for an admission, the case will be 
suspended by the Board with respect to all matters not germane to the 
motion. After filing and service of the motion, no party should file 
any paper that is not germane to the motion, except as otherwise 
specified in the Board's suspension order. Nor may any party thereafter 
serve any additional discovery until the period of suspension is lifted 
or expires by or under order of the Board. 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 pretrial 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 pretrial conference.
    (j) Use of discovery deposition, answer to interrogatory, admission 
or written disclosure.
* * * * *
    (3)(i) A discovery deposition, an answer to an interrogatory, an 
admission to a request for admission, or a written disclosure (but not 
a disclosed document), 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 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), or a copy of the written disclosure, 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 
that 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 that 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) Written disclosures, an answer to an interrogatory, or an 
admission to a request for admission, may be submitted and made part of 
the record only by the receiving or inquiring party except that, if 
fewer than all of the written 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 written 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 written disclosures or discovery responses 
listed in the disclosing or responding party's notice, and absent such 
statement the Board, in its discretion, may refuse to consider the 
additional written disclosures or responses.
    (6) Paragraph (j) of this section will not be interpreted to 
preclude reading or use of written 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 written disclosure, a discovery deposition, or a part 
thereof,

[[Page 42262]]

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) Written 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.

0
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 each party's required pretrial disclosures and 
assigning to each party its 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 granted by the 
Board, or by order of the Board. The deadlines for pretrial 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 any pretrial 
disclosure deadline and/or testimony period is denied, the pretrial 
disclosure deadline or testimony period and any subsequent remaining 
periods may remain as set. The resetting of the closing date for 
discovery will result in the rescheduling of pretrial disclosure 
deadlines and testimony periods without action by any party.
* * * * *
    (d) When parties stipulate to the rescheduling of a deadline for 
pretrial disclosures and subsequent testimony periods or to the 
rescheduling of the closing date for discovery and the rescheduling of 
subsequent deadlines for pretrial 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. 
However, no later than fifteen days prior to the opening of each 
testimony period, or on such alternate schedule as may be provided by 
order of the Board, the party scheduled to present evidence must 
disclose the name and, if not previously provided, the telephone number 
and address of each witness from whom it intends to take testimony, or 
may take testimony if the need arises, general identifying information 
about the witness, such as relationship to any party, including job 
title if employed by a party, or, if neither a party nor related to a 
party, occupation and job title, a general summary or list of subjects 
on which the witness is expected to testify, and a general summary or 
list of the types of documents and things which may be introduced as 
exhibits during the testimony of the witness. Pretrial 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 pretrial disclosure. When a party fails to make required 
pretrial disclosures, any adverse party or parties may have remedy by 
way of a motion to the Board to delay or reset any subsequent pretrial 
disclosure deadlines and/or testimony periods.

0
12. Revise Sec.  2.122(d)(1) to read as follows:


Sec.  2.122  Matters in evidence.

* * * * *
    (d) * * *
    (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 
United States Patent and Trademark Office showing both the current 
status of and current title to the registration, or by a current 
printout of information from the electronic database records of the 
USPTO showing the current status and title of the registration. For the 
cost of a copy of a registration showing status and title, see Sec.  
2.6(b)(4).
* * * * *

0
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 pretrial disclosures or the notice of 
examination of witnesses 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, 
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 or adequate pretrial disclosure may seek exclusion of the 
entire testimony, when there was no pretrial disclosure, or may seek 
exclusion of that portion of the testimony that was not adequately 
disclosed in accordance with Sec.  2.121(e). A motion to strike the 
testimony of a witness for lack of 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.
* * * * *

0
14. Amend Sec.  2.126 as follows:
0
A. Revise paragraph (a)(6).
0
B. Remove paragraph (b).
0
C. Redesignate paragraphs (c) and (d) as paragraphs (b) and (c), 
respectively.


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.
* * * * *

0
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

[[Page 42263]]

extended. The Board will consider no further papers in support of or in 
opposition to a motion. 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, except for a motion asserting 
claim or issue preclusion or lack of jurisdiction by the Trademark 
Trial and Appeal Board. A motion for summary judgment, if filed, should 
be filed prior to the commencement of the first testimony period, as 
originally set or as reset, and the Board, in its discretion, may deny 
as untimely any motion for summary judgment filed thereafter. A motion 
under Rule 56(f) of the Federal Rules of Civil Procedure, if filed in 
response to a motion for summary judgment, shall be filed within thirty 
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 thirty 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 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. 
The Board will consider no further papers in support of or in 
opposition to a motion for summary judgment.
    (2) For purposes of summary judgment only, the Board will consider 
any of the following, if a copy is provided with the party's brief on 
the summary judgment motion: written disclosures or disclosed 
documents, a discovery deposition or any part thereof with any exhibit 
to the part that is filed, an interrogatory and answer thereto with any 
exhibit made part of the answer, a request for production and the 
documents or things produced in response thereto, or a 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).
* * * * *

0
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.
* * * * *

0
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 granted 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 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 Board, failing which judgment will be entered against the party.
* * * * *

0
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 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.
* * * * *

0
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 to the Board. 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.
* * * * *

0
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

[[Page 42264]]

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: July 19, 2007.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
 [FR Doc. E7-14702 Filed 7-31-07; 8:45 am]
BILLING CODE 3510-16-P