[Federal Register Volume 81, Number 64 (Monday, April 4, 2016)]
[Proposed Rules]
[Pages 19295-19324]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2016-06672]



[[Page 19295]]

Vol. 81

Monday,

No. 64

April 4, 2016

Part II





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 of 
Practice; Proposed Rules

Federal Register / Vol. 81 , No. 64 / Monday, April 4, 2016 / 
Proposed Rules

[[Page 19296]]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 2

[Docket No. PTO-T-2009-0030]
RIN 0651-AC35


Miscellaneous Changes to Trademark Trial and Appeal Board Rules 
of Practice

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of Proposed Rulemaking.

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SUMMARY: The United States Patent and Trademark Office (``USPTO'' or 
``Office'') proposes to amend the Trademark Rules of Practice 
(``Trademark Rules'' or ``Rules''), in particular the rules pertinent 
to practice before the Trademark Trial and Appeal Board (``Board''), to 
benefit the public by providing for more efficiency and clarity in 
inter partes and ex parte proceedings. Certain amendments are being 
proposed to reduce the burden on the parties, to conform the rules to 
current practice, to update references that have changed, to reflect 
technologic changes, and to ensure the usage of standard, current 
terminology. The proposed rules will also further strategic objectives 
of the Office to increase the end-to-end electronic processing.

DATES: Comments must be received by June 3, 2016 to ensure 
consideration.

ADDRESSES: The Office prefers that comments be submitted via electronic 
mail message to TTABFRNotices@uspto.gov. Written comments also may be 
submitted by mail to Trademark Trial and Appeal Board, P.O. Box 1451, 
Alexandria, VA 22313-1451, attention Cheryl Butler; by hand delivery to 
the Trademark Assistance Center, Concourse Level, James Madison 
Building-East Wing, 600 Dulany Street, Alexandria, Virginia, attention 
Cheryl Butler; or by electronic mail message via the Federal 
eRulemaking Portal. See the Federal eRulemaking Portal Web site, http://www.regulations.gov, for additional instructions on providing comments 
via the Federal eRulemaking Portal. Written comments will be available 
for public inspection on the Office's Web site at http://www.uspto.gov, 
on the Federal eRulemaking Portal, and at the Trademark Assistance 
Center, Concourse Level, James Madison Building-East Wing, 600 Dulany 
Street, Alexandria, Virginia.

FOR FURTHER INFORMATION CONTACT: Cheryl Butler, Trademark Trial and 
Appeal Board, by email at TTABFRNotices@uspto.gov, or by telephone at 
(571) 272-4259.

SUPPLEMENTARY INFORMATION:
    Executive Summary: Purpose: The proposed amendments to the rules 
emphasize the efficiency of electronic filing, which is already 
utilized by most parties in Board proceedings. In particular, it is 
proposed that all submissions will be filed through the Board's online 
filing system, the Electronic System for Trademark Trials and Appeals 
(``ESTTA'') (available at http://www.uspto.gov), except in certain 
limited circumstances.
    To simplify proceedings, the Office proposes to resume service 
requirements for notices of opposition, petitions for cancellation, and 
concurrent use proceedings, and proposes to require parties to serve 
all other submissions and papers by email. The proposed amended rules 
promote other efficiencies in proceedings, such as imposing discovery 
limitations, and allowing parties to take testimony by affidavit or 
declaration, with the option for oral cross-examination. It is being 
proposed that the proportionality requirement implemented in the 2015 
amendments to the Federal Rules of Civil Procedure be expressly 
incorporated into the Board's proposed amended rules, which in-part 
adapt to recent changes to the Federal Rules of Civil Procedure, while 
taking into account the administrative nature of Board proceedings.
    Other proposed amended rules address the Board's standard 
protective order and codify recent case law, including the submission 
of internet materials. Recognition of remote attendance at oral 
hearings is proposed to be codified, and new requirements for 
notification to the Office and the Board when review by way of civil 
action is taken are proposed in order to avoid premature termination of 
a Board proceeding. The proposed amendments also make minor changes to 
correct or update certain rules so that they clearly reflect current 
Board practice and terminology.
    Costs and Benefits: This rulemaking is not economically significant 
under Executive Order 12866 (Sept. 30, 1993).
    References below to ``the Act,'' ``the Trademark Act,'' or ``the 
statute'' refer to the Trademark Act of 1946, 15 U.S.C. 1051 et seq., 
as amended. References to ``TBMP'' refer to the June 2015 edition of 
the Trademark Trial and Appeal Board Manual of Procedure.

Background

Reasons for Proposed Rule Changes

    The last major set of rule changes at the Board took effect in 
2007; the time is ripe for changes that will assist stakeholders in 
achieving more efficient practice before the Board. In the years since 
2007, technology changes have allowed Board operations to move much 
closer toward the goal of realizing a fully integrated paperless filing 
and docketing system. In addition, many stakeholders have embraced use 
of the Board's Accelerated Case Resolution (``ACR'') procedures, which 
has provided the Board with insight as to the effectiveness of the 
various procedures to which users of ACR have agreed, and which can be 
leveraged to benefit all parties involved in Board proceedings. The 
Federal Rules of Civil Procedure have changed in ways that are 
appropriate for codification into Board rules at this time, and the 
Board rules must be updated to reflect precedential decisions of the 
Board and the courts.
    The revised rules would apply to every pending case and every new 
case commenced on or after the effective date of the rulemaking. Any 
issues that may arise concerning the transition to the revised rules 
for cases pending as of the effective date of the rules would be 
addressed by the Board and the parties on a case-by-case basis, 
allowing for flexibility to respond to the unique needs in each case, 
particularly with respect to scheduling matters.

Electronic Filing

    The Board's electronic filing system, ESTTA, came online in 2002. 
Since that time electronic filings with the Board have steadily 
increased. Today well over 95 percent of filings are submitted via 
ESTTA. In addition, during this time, the Board has effectively 
communicated with parties through email for notices, orders, and 
decisions when the party has provided an email address, and since 2006, 
the Board institution order has included a link to the case file in 
TTABVUE, the Board's database of electronic case files. In view of this 
trend, and to further streamline proceedings, the proposed rules 
require that all filings be made through ESTTA and provide that the 
Board will send its notices, orders, and decisions via email. Eastern 
Time continues to control the timeliness of filing dates.
    ESTTA already requires plaintiffs commencing a trial proceeding to 
select relevant grounds for opposition and cancellation, enhancing the 
accuracy of notice pleading, and under the proposed rules defendants 
would be required to

[[Page 19297]]

inform the Board of any other related proceeding that serves as, or in 
essence could be viewed as, a counterclaim. In addition, under the 
proposed rules plaintiffs in a cancellation proceeding would have to 
include the name and address, including an email address, of any 
attorney reasonably believed by the plaintiff to be a possible 
representative of the owner in matters regarding the registration. 
Cancellation plaintiffs often are privy to such information and have 
traditionally provided it to the Board. The proposed rules codify this 
practice; the goal of this requirement is simply to assist in locating 
current owners of registrations, so that each cancellation case will 
involve the real parties in interest. To be clear, any attorney so 
identified is not considered counsel of record for the defendant until 
and unless either a power of attorney is filed or an appearance is made 
by the attorney in the proceeding.
    The proposed rules codify that any notification of non-delivery of 
the Board's electronic notice of institution may also prompt additional 
notice of commencement of the case by publication in the USPTO Official 
Gazette. The Board would continue its practice of using other 
appropriate and available means to contact a party to ensure the real 
party in interest is notified of the proceeding. These changes 
recognize and embrace the shift by stakeholders from paper filing to 
electronic filing.
    The Board would continue to accept paper filing of a notice of 
opposition or petition for cancellation in the rare circumstances when 
filing through ESTTA is not possible; however, parties attempting to 
commence a proceeding through a paper filing would have to concurrently 
file, to the attention of the Board, a petition to the Director with a 
showing that either ESTTA was unavailable due to technical problems or 
extraordinary circumstances are present. This procedure for paper 
filing would be required for all filings (e.g., motions, testimony, and 
notices of reliance) with the Board.
    In the event of more serious circumstances that could affect the 
Office's filing systems, such as the disruption of Office systems in 
December 2015, the Board will be flexible in making accommodation for 
such an event.

Service and Electronic Communication

    In 2007, the USPTO amended the rules to require each plaintiff to 
serve the complaint on the defendant. This was a change from long-
standing practice where the Board served the complaint on the defendant 
with the notice of institution. The proposed rules now shift the 
responsibility for serving the complaint back to the Board. However, in 
keeping with the progress toward complete use of electronic 
communication, the Board would not forward a paper copy of the 
complaint but rather would serve the complaint in the form of a link to 
TTABVUE in the notice of institution. In addition, recognizing that the 
correspondence address for a registered extension of protection under 
the Madrid Protocol, 15 U.S.C. 1141i, is the international registration 
holder's designated representative, the Board would forward the notice 
of institution to the registrant's designated representative.
    Under the 2007 rules, parties are allowed (and encouraged) to 
stipulate to electronic service between the parties for all filings 
with the Board. Over the last few years, this has become the common 
practice, and the USPTO proposes to codify that practice by requiring 
service between parties by email for all filings with the Board and any 
other papers served on a party not required to be filed with the Board 
(e.g., disclosures, discovery, etc.). The proposed rules nonetheless 
allow for parties to stipulate otherwise, to accommodate other methods 
of communication that may promote convenience and expediency (for 
example, a file hosting service that provides cloud storage, delivery 
of a USB drive, etc.). In addition, in the event service by email is 
not possible due to technical problems or extraordinary circumstances, 
and there is no stipulation to other methods, the party would have to 
include a statement with its submission or paper explaining why service 
by email was not possible, and the certificate of service would have to 
reflect the manner in which service was made. The statement is meant to 
assist the Board in ascertaining whether a repeating problem exists 
that may be alleviated with Board guidance. The statement is not 
intended to provide fertile ground for motion practice. In any event, 
methods of service of discovery requests and responses and document 
production remain subject to the parties' duty to cooperate under the 
Federal Rules of Civil Procedure and the Trademark Rules and are to be 
discussed during the settlement and discovery planning conference. 
Parties may avail themselves of Board participation in these 
conferences to ensure the most expeditious manner of service is 
achieved.
    In view of service by email, the additional five days previously 
added to a prescribed period for response, to account for mail delays, 
would be removed. The response period for a motion would be initiated 
by its service date and would run for 20 days, except that the response 
period for summary judgment motions would remain 30 days. Similarly, no 
additional time would be available for the service of discovery 
responses.

Streamlining Discovery and Pretrial Procedure

    The proposed rules adopt amendments to the Federal Rules of Civil 
Procedure by codifying the concept of ``proportionality'' in discovery. 
In addition, the proposed rules codify the ability of parties to 
stipulate to limit discovery by shortening the period, limiting 
requests, using reciprocal disclosures in lieu of discovery, or 
eliminating discovery altogether. To align further with the Federal 
Rules, the proposed rules explicitly include reference to 
electronically stored information (``ESI'') and tangible things as 
subject matter for discovery. The Board continues to view the universe 
of ESI within the context of its narrower scope of jurisdiction, as 
compared to that of the federal district courts. The burden and expense 
of e-discovery will weigh heavily in any consideration. See Frito-Lay 
North America Inc. v. Princeton Vanguard LLC, 100 USPQ2d 1904, 1909 
(TTAB 2011). The inclusion of ESI in the rule simply recognizes that 
many relevant documents are now kept in electronic form.
    Under the proposed amendments, motions to compel initial 
disclosures must be filed within 30 days after the deadline for initial 
disclosures.
    The proposed rules limit the number of requests for production of 
documents and requests for admissions to 75, the same as the current 
limitation on interrogatories, and remove the option to request 
additional interrogatories. In addition, the proposed rules allow for 
each party that has received produced documents to serve one 
comprehensive request for admission on the producing party, whereby the 
producing party would authenticate all produced documents or specify 
which documents cannot be authenticated. These proposed limitations on 
discovery simply recognize general practice and are meant to curtail 
abuse and restrain litigation expense for stakeholders. In view of the 
Board's narrow jurisdiction, the need to move for additional requests 
would be unlikely; however, the Office can revisit this issue based on 
comments from stakeholders.
    Many commenced trial cases are quickly settled, withdrawn, or 
decided by default, and many others involve

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cooperative parties who engage in useful settlement and discovery 
planning conferences. For more contentious cases, involvement of a 
Board Interlocutory Attorney in the conference is encouraged, and the 
proposed rules codify the ability of the Interlocutory Attorneys to sua 
sponte participate in a discovery conference when they consider it 
useful. In addition, the circumstances under which telephone 
conferences with Interlocutory Attorneys can be sought by a party or 
initiated by the Interlocutory Attorney would be broadened to encompass 
any circumstances in which they ``would be beneficial.''
    Under the proposed rule changes, discovery must be served early 
enough in the discovery period that responses will be provided and all 
discovery will be complete by the close of discovery. This includes 
production of documents, which would have to be produced or inspected 
by the close of discovery.
    Under the proposed rules, discovery disputes would have to be 
resolved promptly following the close of discovery. The current 
deadline for filing motions to compel is merely prior to the 
commencement of the first trial period. Under the proposed revisions, 
however, motions to compel discovery or to determine the sufficiency of 
responses to requests for admissions must be filed prior to the 
deadline for the plaintiff's pretrial disclosures for the first 
testimony period. These revisions are intended to avoid the expense and 
uncertainty that arise when discovery disputes erupt on the eve of 
trial. These changes would also ensure that pretrial disclosures would 
be made and trial preparation would be engaged in only after all 
discovery issues have been resolved. In addition, the Board would be 
able to reset the pretrial disclosure deadline and testimony periods 
after resolving any motions relating to discovery and allowing time for 
compliance with any orders requiring additional responses or 
production.
    Parties would also be subject to a requirement to inform adverse 
parties when prospective witnesses located outside the United States 
are expected to be present in the United States. This obligation would 
continue through discovery (as well as during trial if the witness 
could be called to testify), subject to the Board's determination of 
whether the party has been reasonable in meeting this obligation.
    In 2007, the rules were amended to make the Board's standard 
protective order applicable in all proceedings, during disclosure, 
discovery, and trial, though parties have been able to agree to 
alternative orders, subject to Board approval. This has worked well, 
and the proposed rules clarify that the protective order is imposed in 
all inter partes proceedings. Parties would continue to have the 
flexibility to move forward under an alternative order by stipulation 
or motion approved by the Board. The proposed rules also codify 
practice and precedent that the Board may treat as not confidential 
material which cannot reasonably be considered confidential, 
notwithstanding party designations. See Edwards Lifesciences Corp. v. 
VigiLanz Corp., 94 USPQ2d 1399, 1402-03 (TTAB 2010).
    Since 2007, several types of consented motions for extensions and 
suspensions have been granted automatically by the Board's electronic 
filing system and the proposed rules codify this practice, while 
retaining the ability of Board personnel to require that certain 
conditions be met prior to approval. Thus, the practice by which some 
consented motions to extend or suspend are not automatically approved 
and would be reviewed and processed by a Board paralegal or attorney 
would continue. In addition, non-dispositive matters could be acted on 
by paralegals, and the proposed rules clarify that orders on motions 
under the designation, ``By the Trademark Trial and Appeal Board,'' 
have the same legal effect as orders by a panel of three judges.
    To clarify the obligations of the parties and render the status and 
timeline for a case more predictable, the proposed rules provide that a 
trial proceeding is suspended upon filing of a timely potentially-
dispositive motion.
    As with the timing of motions relating to discovery disputes that 
remain unresolved by the parties at the close of discovery, referenced 
above, motions for summary judgment also would have to be filed prior 
to the deadline for plaintiff's pretrial disclosures for the first 
testimony period. This would avoid disruption of trial planning and 
preparation through the filing, as late as on the eve of trial, of 
motions for summary judgment.
    The existing rule for convening a pretrial conference because of 
the complexity of issues is proposed to be limited to exercise only by 
the Board, upon the Board's initiative.

Efficient Trial Procedures

    For some time now parties have had the option to stipulate to ACR, 
which can be adopted in various forms. A common approach is for parties 
to stipulate that summary judgment cross motions will substitute for a 
trial record and traditional briefs at final hearing and the Board may 
resolve any issues of fact that otherwise might be considered subject 
to dispute. Other approaches adopted by parties utilizing the 
efficiencies of the ACR process have included agreements to limit 
discovery, agreements to shorten trial periods or the time between 
trial periods, stipulations to facts or to the admissibility of 
documents or other evidence, and stipulations to proffers of testimony 
by declaration or affidavit. These types of efficiencies would be 
codified by specifically providing for such stipulations and, most 
significantly, by allowing a unilateral option for trial testimony by 
affidavit or declaration subject to the right of oral cross examination 
by the adverse party or parties. Parties also would continue to be able 
to stipulate to rely on summary judgment materials as trial evidence.
    The proposed rules would codify two changes in recent years, 
effected by case law and practice, expanding the option to submit 
certain documents by notice of reliance. First, the proposed rules 
codify existing law that pleaded registrations and registrations owned 
by any party may be made of record via notice of reliance by submitting 
therewith a current printout of information from the USPTO electronic 
database records showing current status and title. The rules currently 
allow for such printouts to be attached to the notice of opposition or 
petition for cancellation; the proposed change specifically also allows 
for such printouts to be submitted under notice of reliance. Second, 
the proposed rules codify that internet materials also may be submitted 
under a notice of reliance, as provided by Safer, Inc. v. OMS 
Investments, Inc., 94 USPQ2d 1031 (TTAB 2010).
    To alleviate any uncertainty, the proposed rules add a subsection 
to the requirements for a notice of reliance, specifically, to require 
that the notice indicate generally the relevance of the evidence and 
associate it with one or more issues in the proceeding. In an effort to 
curtail motion practice on this point, the proposed rule explicitly 
states any failure of a notice of reliance to meet this requirement 
would be considered a curable procedural defect. This codifies the 
holding of FUJIFILM SonoSite, Inc. v. Sonoscape Co., 111 USPQ2d 1234, 
1237 (TTAB 2014).
    Under the proposed rule changes, a party must file any motion to 
use a discovery deposition at trial along with its pretrial 
disclosures. Also, an adverse party would be able to move to quash a 
notice of testimony deposition if the witness was not included in the 
pretrial

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disclosures, and an adverse party would be able to move to strike 
testimony presented by affidavit or declaration if the witness was not 
included in the pretrial disclosure.
    Similar to the above-referenced proposal in regard to taking 
discovery from witnesses otherwise located outside the United States 
but who may be present in the United States during discovery, the 
proposed rules also provide that a party will have to inform adverse 
parties when it knows a prospective trial witness otherwise located 
outside the United States will be within the jurisdiction of the United 
States during trial.
    In response to Cold War Museum Inc. v. Cold War Air Museum Inc., 
586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009), the proposed 
rules make clear that while the file history of the subject application 
or registration is of record, statements in affidavits or declarations 
in the file are not evidence.
    The Board has seen an increase in testimony deposition transcripts 
that do not include a word index, and the proposed rules would require 
a word index for all testimony transcripts. For ease of review, 
deposition transcripts also would have to be submitted in full-sized 
format, not condensed with multiple pages per sheet. More broadly, the 
proposed rules would make clear that it is the parties' responsibility 
to ensure that all exhibits pertaining to an electronic submission must 
be clear and legible.
    The proposed rules codify case law and Board practice under which 
the Board may sua sponte grant judgment for the defendant when the 
plaintiff has not submitted evidence, even where the plaintiff has 
responded to the Board's show cause order for failure to file a brief 
but has either not moved to reopen its trial period or not been 
successful in any such motion. Gaylord Entertainment Co. v. Calvin 
Gilmore Productions. Inc., 59 USPQ2d 1369, 1372 (TTAB 2000).
    To alleviate confusion and codify case law, the proposed rules 
clarify that evidentiary objections may be set out in a separate 
appendix that does not count against the page limit for a brief and 
that briefs exceeding the page limit may not be considered by the 
Board. Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 
1750, 1753-54 (TTAB 2013) (Appropriate evidentiary objections may be 
raised in appendix or separate paper rather than in text of brief.), 
aff'd, 565 F. App'x 900 (Fed. Cir. 2013) (mem.).

Remand Procedures/Appeal Procedures

    Certain aspects of ex parte appeals procedure are clarified in the 
proposed amendments. Under the proposed rules, evidence shall not be 
submitted after the filing of the notice of appeal and may only be 
added to the record when attached to a timely request for 
reconsideration or via a request for remand. This is not a change to 
the substance of the existing rule, but is designed to address a 
recurring error by applicants during ex parte appeal.
    Reply briefs in ex parte appeals would be limited to 10 pages. To 
facilitate consideration and discussion of record evidence, citation to 
evidence in all the briefs for the appeal, by the applicant and 
examining attorney, would be to the documents in the electronic 
application record by docket entry date and page number.
    The proposed rules provide that, if during an inter partes 
proceeding the examining attorney believes certain facts render an 
applied-for mark unregistrable, the examining attorney should formally 
request remand of the application to the Trademark Examining Operation 
rather than simply notify the Board.

Other Clarification of Board Practice and Codification of Case Law

    Correlative to electronic filing and communication, the Board also 
has made it possible for parties, examining attorneys, and members of 
the Board to attend hearings remotely through video conference. The 
proposed rules codify that option.
    In 2.106(a) and 2.114(a) the proposed rules codify case law and 
practice to make it clear that when no answer has been filed, all other 
deadlines are tolled. If the parties have continued to litigate after 
an answer is late-filed, it would generally be viewed as a waiver of 
the technical default.
    The proposed rules provide that a Notice of Opposition to an 
application under Trademark Act Sec.  66(a) must identify the goods and 
services opposed and the grounds for opposition on the ESTTA cover 
sheet and may not be amended to expand the opposition to cover goods or 
services beyond those referenced on the ESTTA cover sheet. These 
amendments codify the holding of Hunt Control Systems Inc. v. 
Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1561-62 (TTAB 
2011). In addition, the rules would clarify that after the close of the 
time period for filing a Notice of Opposition, the notice may not be 
amended to add a joint opposer.
    Requirements for filing appeals of Board decisions are restructured 
to align with the rules governing review of Patent Trial and Appeal 
Board decisions. Further, all notices of appeal to the United States 
Court of Appeals for the Federal Circuit must be filed with the USPTO's 
Office of General Counsel and a copy filed with the Board via ESTTA. 
When a party seeks review of a Board inter partes decision by 
commencing a civil action, the proposed amendments clarify that a 
notice of such commencement must be filed with the Board via ESTTA to 
avoid premature termination of the Board proceeding during pendency of 
the civil action. The proposed amendments further require that both a 
notice and a copy of the complaint for review of an ex parte decision 
by way of civil action are to be filed with the USPTO's Office of 
General Counsel with a copy to be filed with the Board via ESTTA.

Public Participation

    The Board began 2015 looking ahead to the implementation of changes 
in the Federal Rules of Civil Procedure then scheduled to take effect 
in December 2015. The Board also looked back on its multi-year campaign 
to promote the use of Accelerated Case Resolution, to determine lessons 
learned, and to identify ways to leverage the benefits of ACR into all 
Board trial cases. For these and other reasons, it became clear that 
the timing was right to consider updating the Board's rules. On January 
29, 2015, the Board held an ESTTA Users Forum, directed to issues and 
matters involving electronic filing. On February 19, 2015, the Board 
held a Stakeholder Roundtable concerning matters of practice and 
received comments and suggestions from various organizations 
representing intellectual property user groups, including inside 
counsel, outside counsel, and mark owners and applicants. That February 
roundtable involved discussion of many of the provisions that are now 
included in the proposed rule package. The Board also engaged in 
significant stakeholder outreach throughout 2015, alerting users in 
locations across the country about the issues that they could expect to 
be addressed in prospective rulemaking. Finally, the Board engaged the 
Trademark Public Advisory Committee on process and procedure changes 
under consideration, on multiple occasions during the year. All of 
these events have enriched the process through which the Board has 
developed proposed rule changes and served as a precursor to the 
continuing discussion with stakeholders that the Office seeks through 
this Notice of Proposed Rulemaking.

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Discussion of Proposed Rules Changes

    The Office proposes to make the following amendments:

Interferences and Concurrent Use Proceedings

Preliminary to Interference

    The Office proposes to amend Sec.  2.92 to incorporate a 
nomenclature change from ``Examiner of Trademarks'' to ``examining 
attorney.''

Adding Party to Interference

    The Office proposes to amend Sec.  2.98 to incorporate a 
nomenclature change from ``examiner'' to ``examining attorney.''

Application To Register as a Concurrent User

    The Office proposes to amend Sec.  2.99(c) and (d) to change 
``notification'' to ``notice of institution'' or ``notice,'' and to 
specify that the notice will be transmitted via email.
    The Office proposes to revise Sec.  2.99(d)(1) to remove the 
service requirement for applicants for concurrent use registration and 
to specify that the notice of institution will include a web link or 
web address for the concurrent use proceeding.
    The Office proposes to amend Sec.  2.99(d)(2) to clarify that an 
answer to the notice of institution is not required by an applicant or 
registrant whose application or registration is acknowledged in the 
concurrent use application.
    The Office proposes to amend Sec.  2.99(d)(3) to clarify that a 
user who does not file an answer when required is in default, but the 
burden of providing entitlement to registration(s) remains with the 
concurrent use applicant(s).
    The Office proposes to amend Sec.  2.99(f)(3) to incorporate a 
nomenclature change from ``examiner'' to ``examining attorney.''

Opposition

Filing an Opposition

    The Office proposes to amend Sec.  2.101(a) and (b) to remove the 
opposer's requirement to serve a copy of the notice of opposition on 
applicant.
    The Office proposes to amend Sec.  2.101(b)(1) to require that 
oppositions be filed through ESTTA. The proposed amendment continues 
the existing unconditional requirement that an opposition to an 
application based on Section 66(a) of the Trademark Act must be filed 
through ESTTA, but provides that an opposition against an application 
based on Section 1 or 44 of the Act may be filed in paper form in the 
event that ESTTA is unavailable due to technical problems or when 
extraordinary circumstances are present. The proposed amendment 
codifies the use of electronic filing.
    The Office proposes to amend Sec.  2.101(b)(2) to require that a 
paper opposition to an application must be accompanied by a Petition to 
the Director under Sec.  2.146(a)(5), with the required fees and 
showing, and to add that timeliness of the submission will be 
determined in accordance with Sec. Sec.  2.195 through 2.198.
    The Office proposes to amend Sec.  2.101(c) by moving the content 
of paragraph (d)(1) to the end of paragraph (c).
    The Office proposes to amend Sec.  2.101(d) by removing paragraphs 
(1), (3), and (4), but retaining the content in paragraph (d)(2) in an 
undesignated paragraph, and providing that an ESTTA opposition cannot 
be filed absent sufficient fees and a paper opposition accompanied by 
insufficient fees may not be instituted, but a potential opposer may 
resubmit the opposition with the required fee if time remains. The 
proposed revisions are intended to simplify the rules pertaining to 
insufficient fees.
    The Office proposes to amend Sec.  2.101(d)(4) to rename it as 
Sec.  2.101(e) and clarify that the filing date of an opposition is the 
date of electronic receipt in the Office of the notice of opposition 
and required fee and to add that the filing date for a paper filing, 
where permitted, will be determined in accordance with Sec. Sec.  2.195 
through 2.198.

Extension of Time for Filing an Opposition

    The Office proposes to amend Sec.  2.102 to omit references to 
``written'' requests for extensions of time, as it is unnecessary in 
view of the requirement in Sec.  2.191 that all business be conducted 
in writing.
    The Office proposes to amend Sec.  2.102(a)(1) to require that 
requests to extend the time for filing an opposition be filed through 
ESTTA. The proposed amendment continues the existing requirement that 
an opposition to an application based on Section 66(a) of the Act must 
be filed through ESTTA, but provides that an opposition against an 
application based on Section 1 or 44 of the Act may be filed in paper 
form in the event that ESTTA is unavailable due to technical problems 
or when extraordinary circumstances are present. The Office proposes to 
amend Sec.  2.102(a)(2) to require that a paper request to extend the 
opposition period must be accompanied by a Petition to the Director 
under Sec.  2.146(a)(5), with the required fees and showing, and to add 
that timeliness of the paper submission will be determined in 
accordance with Sec. Sec.  2.195 through 2.198.
    The Office proposes to amend Sec.  2.102(b) to clarify that an 
opposition filed during an extension of time must be in the name of the 
person to whom the extension was granted except in cases of 
misidentification through mistake or where there is privity.
    The Office proposes to amend Sec.  2.102(c)(1) to clarify that a 
sixty-day extension is not available as a first extension of time to 
oppose. The Office proposes to amend Sec.  2.102(c)(3) to clarify that 
only a sixty-day time period is allowed for a final extension of the 
opposition period.
    The Office proposes to add new Sec.  2.102(d), which clarifies that 
the filing date of a request to extend the time for filing an 
opposition is the date of electronic receipt in the Office of the 
notice of opposition and that the filing date for a paper filing, where 
permitted, will be determined in accordance with Sec. Sec.  2.195 
through 2.198.

Contents of Opposition

    The Office proposes to amend Sec.  2.104(a) to specify that ESTTA 
requires the opposer to select relevant grounds for opposition, and the 
accompanying required statement supports and explains the grounds. The 
proposed amendment codifies current Office practice.
    The Office proposes to add new Sec.  2.104(c) to clarify that with 
respect to an opposition to an application filed under Section 66(a) of 
the Trademark Act, both the ESTTA cover sheet and accompanying 
statement must identify the goods and/or services opposed and the 
grounds for opposition and such an opposition may not be amended to 
include goods, services, or grounds beyond those set forth in the cover 
sheet. The proposed amendment conforms with Section 68(c)(3) of the 
Act, is consistent with the proposed amendment to Sec.  2.107(b), and 
codifies current case law and practice.

Notification to Parties of Opposition Proceeding(s)

    The Office proposes to amend Sec.  2.105(a) to remove the service 
requirement for opposers and to specify that the notice of institution 
constitutes service and will include a web link or web address to 
access the electronic proceeding record.
    The Office proposes to amend Sec. Sec.  2.105(b) and (c) to provide 
that it will effect service of the notice of opposition at the email or 
correspondence address

[[Page 19301]]

of record for the parties, their attorneys, or their domestic 
representatives.

Answer

    The Office proposes to amend Sec.  2.106(a) to add that default may 
occur after the time to answer is reset and that failure to file a 
timely answer tolls all deadlines until the issue of default is 
resolved. The proposed amendment codifies current Office practice and 
is consistent with the Office's proposed amendment to Sec.  2.114(a).
    The Office proposes to amend Sec.  2.106(b)(1) to specify that a 
reply to an affirmative defense shall not be filed.
    The Office proposes to amend Sec.  2.106(b)(2)(i) to add a 
requirement that an applicant subject to an opposition proceeding must 
promptly inform the Board of the filing of another proceeding between 
the same parties or anyone in privity therewith.
    The Office proposes to amend Sec.  2.106(b)(2)(iv) to clarify that 
the Board may sua sponte reset the times for pleading, discovery, 
testimony, briefs, or oral argument.

Amendment of Pleadings in an Opposition Proceeding

    The Office proposes to amend Sec.  2.107(a) to add that an 
opposition proceeding may not be amended to add a joint opposer.
    The Office proposes to amend Sec.  2.107(b) to clarify that, with 
respect to an opposition to an application filed under Section 66(a) of 
the Trademark Act, pleadings may not be amended to add grounds for 
opposition or goods or services beyond those set forth in the cover 
sheet, or to add a joint opposer. The proposed amendment conforms with 
Section 68(c)(3) of the Act, is consistent with the proposed amendment 
to Sec.  2.104(c), and codifies current case law and practice.

Cancellation

Filing a Petition for Cancellation

    The Office proposes to amend Sec.  2.111(a) and (b) to remove the 
petitioner's requirement to serve a copy of the petition to cancel on 
registrant.
    The Office proposes to amend Sec.  2.111(c)(1) to require that a 
petition to cancel a registration be filed through ESTTA. The proposed 
amendment provides that a petition to cancel may be filed in paper form 
in the event that ESTTA is unavailable due to technical problems or 
when extraordinary circumstances are present. The Office proposes to 
amend Sec.  2.111(c)(2) to require that a paper petition to cancel a 
registration must be accompanied by a Petition to the Director under 
Sec.  2.146(a)(5), with the required fees and showing, and to add that 
timeliness of the submission, if relevant to a ground asserted in the 
petition to cancel, will be determined in accordance with Sec. Sec.  
2.195 through 2.198. The proposed amendments codify the use of 
electronic filing.
    The Office proposes to delete Sec.  2.111(c)(3) and add a new Sec.  
2.111(d), which provides that a petition for cancellation cannot be 
filed via ESTTA absent sufficient fees and a paper petition accompanied 
by insufficient fees may not be instituted. The proposed revisions are 
intended to simplify the rules pertaining to insufficient fees.
    The Office proposes to amend Sec.  2.111(c)(4) to renumber it as 
Sec.  2.111(e), which clarifies that the filing date of a petition for 
cancellation is the date of electronic receipt in the Office of the 
petition and required fee and adds that the filing date for a paper 
petition for cancellation, where permitted, is the date identified in 
Sec.  2.198.

Contents of Petition for Cancellation

    The Office proposes to amend Sec.  2.112(a) to add that the 
petition for cancellation must indicate, to the best of petitioner's 
knowledge, a current email address(es) of the current owner of the 
registration and of any attorney, as specified in Sec. Sec.  11.14(a) 
and (c) of this Chapter, reasonably believed by the petitioner to be a 
possible representative of the owner in matters regarding the 
registration.
    The Office proposes to further amend Sec.  2.112(a) to specify that 
ESTTA requires the petitioner to select relevant grounds for 
cancellation, and the required accompanying statement supports and 
explains the grounds. The proposed amendment codifies current Office 
practice.

Notification of Cancellation Proceeding

    The Office proposes to amend Sec.  2.113(a) to remove the service 
requirement for petitioners and to specify that the notice of 
institution constitutes service and will include a web link or web 
address to access the electronic proceeding record.
    The Office proposes to amend Sec. Sec.  2.113(b) and (c) to provide 
that it will effect service of the petition for cancellation at the 
email or correspondence address of record for the parties, their 
attorneys, or their domestic representatives. The Office further 
proposes to amend Sec.  2.113(c) to insert subheadings (1), (2), and 
(3) for clarity and to provide in newly designated paragraph (3) that, 
in the case of a registration issued under 15 U.S.C. 1141(i), notice 
will be sent to the international registration holder's designated 
representative and constitutes service.
    The Office proposes to amend Sec.  2.113(d) to remove ``petition 
for cancellation'' and to provide that the courtesy copy of the notice 
of institution that shall be forwarded to the alleged current owner of 
the registration will include a web link or web address to access the 
electronic proceeding record.

Answer

    The Office proposes to amend Sec.  2.114(a) to add that default may 
occur after the time to answer is reset and that failure to file a 
timely answer tolls all deadlines until the issue of default is 
resolved. The proposed revision codifies current Office practice and is 
consistent with the Office's proposed amendment to Sec.  2.106(a).
    The Office proposes to amend Sec.  2.114(b)(1) to add that a 
pleaded registration is a registration identified by number by the 
party in the position of plaintiff in an original or counterclaim 
petition for cancellation.
    The Office proposes to amend Sec.  2.114(b)(2)(i) to add a 
requirement that a party in the position of respondent and counterclaim 
plaintiff must promptly inform the Board of the filing of another 
proceeding between the same parties or anyone in privity therewith.
    The Office proposes to amend Sec.  2.114(b)(2)(iii) to clarify that 
the Board may sua sponte reset the period for filing an answer to a 
counterclaim. The Office proposes to amend Sec.  2.114(b)(2)(iv) to 
clarify that the Board may sua sponte reset the times for pleading, 
discovery, testimony, briefs, or oral argument.
    The Office proposes to amend Sec.  2.114(c) to add that 
counterclaim petitions for cancellation may be withdrawn without 
prejudice before an answer is filed.

Procedure in Inter Partes Proceedings

Federal Rules of Civil Procedure

    The Office proposes to amend Sec.  2.116(e) to add that the 
submission of notices of reliance, declarations, and affidavits, as 
well as the taking of depositions, during the testimony period 
corresponds to the trial in court proceedings. The proposed revision 
codifies current Office practice and is consistent with proposed 
amendments relating to declarations and affidavits.
    The Office proposes to amend Sec.  2.116(g) to clarify that the 
Board's standard protective order, which is available on the Office's 
Web site, is automatically imposed throughout all

[[Page 19302]]

inter partes proceedings. The Office proposes to further amend Sec.  
2.116(g) to add that the Board may treat as not confidential material 
which cannot reasonably be considered confidential, notwithstanding a 
party's designation. The proposed revisions codify current case law and 
Office practice.

Suspension of Proceedings

    The Office proposes to amend Sec.  2.117(c) to clarify that the 
Board may suspend proceedings sua sponte and retains discretion to 
condition approval of consented or stipulated motions to suspend on the 
provision by parties of necessary information about the status of 
settlement talks or discovery or trial activities.

Undelivered Office Notices

    The Office proposes to amend Sec.  2.118 to add notification of 
non-delivery in paper or electronic form of Board notices and to delete 
the time period prescribed by the Director.

Service and Signing

    The Office proposes to incorporate the word ``submissions'' 
throughout Sec.  2.119 to codify the use of electronic filing. The 
proposed amendment codifies the use of electronic filing.
    The Office proposes to amend Sec.  2.119(a) to remove the service 
requirements for notices of opposition and petitions to cancel, 
consistent with proposed amendments to Sec. Sec.  2.101(a) and (b) and 
2.111(a) and (b).
    The Office proposes to amend Sec.  2.119(b) to require that all 
submissions filed with the Board and any other papers served on a party 
be served by email, unless otherwise stipulated or service by email 
cannot be made due to technical problems or extraordinary 
circumstances.
    The Office proposes to amend Sec.  2.119(b)(3) to revise the manner 
of service on a person's residence by stating that a copy of a 
submission may be left with some person of suitable age and discretion 
who resides there. The proposed amendment is consistent with both the 
Patent Rules of Practice and the Federal Rules of Civil Procedure.
    The Office proposes to amend Sec.  2.119(b)(6) to remove the 
requirement for mutual agreement by the parties for service by other 
forms of electronic transmission and to remove service by notice 
published in the Official Gazette.
    The Office proposes to amend Sec.  2.119(c) to remove the provision 
adding five days to the prescribed period for action after service by 
the postal service or overnight courier. All fifteen-day response dates 
initiated by a service date would be amended to twenty days.
    The Office proposes to amend Sec.  2.119(d) to add that no party 
may serve submissions by means of the postal service if a party to an 
inter partes proceeding is not domiciled in the United States and is 
not represented by an attorney or other authorized representative 
located in the United States.

Discovery

    The Office proposes to amend Sec.  2.120(a)(1) to add the concept 
of proportionality in discovery, in conformance with the 2015 
amendments to the Federal Rules of Civil Procedure, and to reorganize 
portions of the text for clarity.
    The Office proposes to amend Sec.  2.120(a)(2) to add headings for 
subparts (i) through (v) and to reorganize portions of the text for 
clarity.
    The Office proposes to amend renumbered Sec.  2.120(a)(2)(i) to 
specify that a Board Interlocutory Attorney or Administrative Trademark 
Judge will participate in a discovery conference when the Board deems 
it useful. The proposed revision codifies current Office practice.
    The Office proposes to amend renumbered Sec.  2.120(a)(2)(iii) to 
add that the Board may issue an order regarding expert discovery either 
on its own initiative or on notice from a party of the disclosure of 
expert testimony.
    The Office proposes to amend renumbered Sec.  2.120(a)(2)(iv) to 
add that parties may stipulate that there will be no discovery, that 
the number of discovery requests or depositions be limited, or that 
reciprocal disclosures be used in place of discovery. The proposed 
amendment codifies some of the stipulations successfully used by 
parties in ACR procedures and other proceedings incorporating ACR-type 
efficiencies. The Office proposes to further amend Sec.  
2.120(a)(2)(iv) to clarify that extensions of the discovery period 
granted by the Board will be limited. The Office proposes to further 
amend Sec.  2.120(a)(2)(iv) to require that an expert disclosure 
deadline must always be scheduled prior to the close of discovery.
    The Office proposes to amend Sec.  2.120(a)(3) to require that 
discovery requests be served early enough in the discovery period that 
responses will be due no later than the close of discovery, and when 
the time to respond is extended, discovery responses may not be due 
later than the close of discovery. The proposed amendment is intended 
to alleviate motion practice prompted by responses to discovery 
requests served after discovery has closed.
    The Office proposes to amend Sec.  2.120(b) to require that any 
agreement by the parties as to the location of a discovery deposition 
shall be made in writing.
    The Office proposes to amend the title of Sec.  2.120(c) to clarify 
that it applies to foreign parties within the jurisdiction of the 
United States. The Office proposes to amend Sec.  2.120(c)(2) to 
require that a party must inform every adverse party whenever a foreign 
party has or will have, during a time set for discovery, an officer, 
director, managing agent, or other person who consents to testify on 
its behalf present within the United States.
    The Office proposes to amend Sec.  2.120(d) to remove motions for 
leave to serve additional interrogatories. The Office proposes to 
revise Sec.  2.120(d) such that it addresses only interrogatories, 
deleting subsections (1) and (2). Provisions relating to requests for 
production are moved to revised Sec.  2.120(e), and Sec. Sec.  2.120(f) 
through (k) are renumbered in conformance.
    The Office proposes to amend Sec.  2.120(e) to limit the total 
number of requests for production to seventy-five and to provide a 
mechanism for objecting to requests exceeding the limitation parallel 
to Sec.  2.120(d). The Office proposes to further amend Sec.  2.120(e) 
to clarify that the rule applies to electronically stored information 
as well as documents and tangible things; to provide that the time, 
place, and manner for production shall comport with the provisions of 
Rule 34 of the Federal Rules of Civil Procedure, or be made pursuant to 
agreement of the parties; and to delete that production will be made at 
the place where the documents and things are usually kept.
    The Office proposes to amend renumbered Sec.  2.120(f)(1) to 
clarify that the rule applies to electronically stored information as 
well as documents and tangible things. The Office proposes to further 
amend Sec.  2.120(f)(1) to require that a motion to compel initial 
disclosures must be filed within thirty days after the deadline 
therefor and include a copy of the disclosures. The Office proposes to 
further amend Sec.  2.120(f)(1) to require that a motion to compel 
discovery must be filed prior to the deadline for pretrial disclosures 
for the first testimony period, rather than the commencement of that 
period. The Office proposes to further amend Sec.  2.120(f)(1) to 
clarify that the request for designation pertains to a witness. The 
Office proposes to further amend Sec.  2.120(f)(1) to require a showing 
from the moving party that the party has

[[Page 19303]]

made a good faith effort to resolve the issues presented in the motion.
    The Office proposes to amend renumbered Sec.  2.120(f)(2) to 
clarify that when a motion to compel is filed after the close of 
discovery, the parties need not make pretrial disclosures until 
directed to do so by the Board.
    The Office proposes to amend renumbered Sec.  2.120(g) to conform 
to Federal Rule of Civil Procedure 26(c).
    The Office proposes to amend renumbered Sec.  2.120(i) to limit the 
total number of requests for admission to seventy-five and to provide a 
mechanism for objecting to requests exceeding the limitation parallel 
to Sec. Sec.  2.120(d) and (e). The Office proposes to further amend 
Sec.  2.120(i) to permit a party to make one comprehensive request for 
an admission authenticating documents produced by an adverse party.
    The Office proposes to amend renumbered Sec.  2.120(i)(1) to 
require that any motion to test the sufficiency of any objection, 
including a general objection on the ground of excessive number, must 
be filed prior to the deadline for pretrial disclosures for the first 
testimony period, rather than the commencement of that period. The 
Office proposes to further amend Sec.  2.120(i)(1) to require a showing 
from the moving party that the party has made a good faith effort to 
resolve the issues presented in the motion.
    The Office proposes to amend renumbered Sec.  2.120(i)(2) to 
clarify that when a motion to determine the sufficiency of an answer or 
objection to a request for admission is filed after the close of 
discovery, the parties need not make pretrial disclosures until 
directed to do so by the Board.
    The Office proposes to amend renumbered Sec.  2.120(j)(1) to state 
more generally that the Board may schedule a telephone conference 
whenever it appears that a stipulation or motion is of such nature that 
a telephone conference would be beneficial. The Office proposes to 
amend Sec.  2.120(j)(2) to remove provisions allowing parties to move 
for an in-person meeting with the Board during the interlocutory phase 
of an inter partes proceeding and the requirement that any such meeting 
directed by the Board be at its offices. The Board proposes to add new 
Sec.  2.120(j)(3) to codify existing practice that parties may not make 
a recording of the conferences referenced in Sec. Sec.  2.120(j)(1) and 
(2).
    The Office proposes to amend renumbered Sec.  2.120(k)(2) to change 
the time for a motion to use a discovery deposition to when the 
offering party makes its pretrial disclosures and to clarify that the 
exceptional circumstances standard applies when this deadline has 
passed.
    The Office proposes to amend renumbered Sec.  2.120(k)(3)(i) to 
clarify that the disclosures referenced are initial disclosures, to 
remove the exclusion of disclosed documents, and to incorporate a 
reference to new Sec.  2.122(g).
    The Office proposes to amend renumbered Sec.  2.120(k)(3)(ii) to 
add that a party may make documents produced by another party of record 
by notice of reliance alone if the party has obtained an admission or 
stipulation from the producing party that authenticates the documents. 
This amendment is consistent with the proposed amendment in renumbered 
Sec.  2.120(i) permitting a party to make one comprehensive request for 
an admission authenticating documents produced by an adverse party.
    The Office proposes to amend renumbered Sec.  2.120(k)(7) to add an 
authenticated produced document to the list of evidence that may be 
referred to by any party when it has been made of record.

Assignment of Times for Taking Testimony and Presenting Evidence

    The Office proposes to amend Sec.  2.121(a) to clarify that 
evidence must be presented during a party's testimony period. The 
Office proposes to further amend Sec.  2.121(a) to add that the 
resetting of a party's testimony period will result in the rescheduling 
of the remaining pretrial disclosure deadlines without action by any 
party. These amendments codify current Office practice.
    The Office proposes to amend Sec.  2.121(c) to add that testimony 
periods may be shortened by stipulation of the parties approved by the 
Board or may be extended on motion granted by the Board or order of the 
Board. The Office proposes to further amend Sec.  2.121(c) to add that 
the pretrial disclosure deadlines associated with testimony periods may 
remain as set if a motion for an extension is denied. These amendments 
codify current Office practice.
    The Office proposes to amend Sec.  2.121(d) to add that 
stipulations to reschedule the deadlines for the closing date of 
discovery, pretrial disclosures, and testimony periods must be 
submitted through ESTTA with the relevant dates set forth and an 
express statement that all parties agree to the new dates. The proposed 
amendment codifies the use of electronic filing.
    The Office proposes to amend Sec.  2.121(e) to add that the 
testimony of a witness may be either taken on oral examination and 
transcribed or presented in the form of an affidavit or declaration, as 
provided in proposed amendments to Sec.  2.123.
    The Office proposes to further amend Sec.  2.121(e) to add that a 
party may move to quash a noticed testimony deposition of a witness not 
identified or improperly identified in pretrial disclosures before the 
deposition. The proposed amendment codifies current Office practice.
    The Office proposes to further amend Sec.  2.121(e) to add that 
when testimony has been presented by affidavit or declaration, but was 
not covered by an earlier pretrial disclosure, the remedy for any 
adverse party is the prompt filing of a motion to strike, as provided 
in Sec. Sec.  2.123 and 2.124. The proposed amendment aligns the remedy 
for undisclosed testimony by affidavit or declaration with the remedy 
for undisclosed deposition testimony.

Matters in Evidence

    The Office proposes to amend Sec.  2.122(a) to clarify the title of 
the subsection and to specify that parties may stipulate to rules of 
evidence for proceedings before the Board. The Office proposes to 
further amend Sec.  2.122(a), consistent with Sec.  2.120(k)(7), to add 
that when evidence has been made of record by one party in accordance 
with these rules, it may be referred to by any party for any purpose 
permitted by the Federal Rules of Evidence. The proposed amendments 
codify current Office practice.
    The Office proposes to amend Sec.  2.122(b)(2) to clarify the title 
of the subsection and to clarify that statements made in an affidavit 
or declaration in the file of an application for registration or in the 
file of a registration are not evidence on behalf of the applicant or 
registrant and must be established by competent evidence.
    The Office proposes to amend Sec.  2.122(d)(2) to add a cross-
reference to new Sec.  2.122(g) and to specify that a registration 
owned by a party may be made of record via notice of reliance 
accompanied by a current printout of information from the electronic 
database records of the Office showing the current status and title of 
the registration. The proposed amendment codifies current case law and 
Office practice.
    The Office proposes to amend Sec.  2.122(e) to designate a new 
paragraph (e)(1), clarify that printed publications must be relevant to 
a particular proceeding, and add a cross-reference to new Sec.  
2.122(g).

[[Page 19304]]

    The Office proposes to add new Sec.  2.122(e)(2) permitting 
admission of internet materials into evidence by notice of reliance and 
providing requirements for their identification. The proposed amendment 
codifies current case law and Office practice.
    The Office proposes to add new Sec.  2.122(g) detailing the 
requirements for admission of evidence by notice of reliance. Section 
2.122(g) provides that a notice must indicate generally the relevance 
of the evidence offered and associate it with one or more issues in the 
proceeding, but failure to do so with sufficient specificity is a 
procedural defect that can be cured by the offering party within the 
time set by Board order. The proposed amendment codifies current case 
law and Office practice.

Trial Testimony in Inter Partes Cases

    The Office proposes to amend Sec.  2.123(a)(1) to permit submission 
of witness testimony by affidavit or declaration, subject to the right 
of any adverse party to take and bear the expense of oral cross-
examination of that witness, as provided in proposed amendments to 
Sec.  2.121(e), and to add that the offering party must make that 
witness available. The proposed amendment is intended to promote 
efficient trial procedure.
    The Office proposes to further amend Sec.  2.123(a)(1) to move to 
Sec.  2.123(a)(2) a provision permitting a motion for deposition on 
oral examination of a witness in the United States whose testimonial 
deposition on written questions has been noticed.
    The Office proposes to further amend Sec.  2.123(a)(2) to add that 
the party which has proffered a witness for testimonial deposition on 
written questions must inform every adverse party when it knows that 
such witness will be within the jurisdiction of the United States 
during such party's testimony period. The proposed amendment is 
consistent with the proposed amendment to Sec.  2.120(c)(2) and is 
intended to promote efficient trial procedure by facilitating the use 
of deposition on oral examination instead of written questions when 
permissible.
    The Office proposes to amend Sec.  2.123(b) to remove the 
requirement for written agreement of the parties to submit testimony in 
the form of an affidavit, as provided in proposed amendments to Sec.  
2.123(a)(1), and to clarify that parties may stipulate to any relevant 
facts.
    The Office proposes to amend Sec.  2.123(c) to remove the option of 
identifying a witness by description in a notice of examination and to 
clarify that such notice shall be given to adverse parties before oral 
depositions.
    The Office proposes to further amend Sec.  2.123(c) to add that, 
when a party elects to take oral cross-examination of an affiant or 
declarant, the notice of such election must be served on the adverse 
party and a copy filed with the Board within 10 days from the date of 
service of the affidavit or declaration and completed within 20 days 
from the date of service of the notice of election.
    The Office proposes to further amend Sec.  2.123(c) to add that the 
Board may extend the periods for electing and taking oral cross-
examination and, when necessary, shall suspend or reschedule 
proceedings in the matter to allow for the orderly completion of the 
oral cross-examination(s) that cannot be completed within a testimony 
period.
    The Office proposes to amend Sec.  2.123(e)(1) to specify that a 
witness must be sworn before providing oral testimony. The Office 
proposes to further amend Sec.  2.123(e)(1) to move from Sec.  
2.123(e)(3) the provision that cross-examination is available on oral 
depositions. The Office proposes to further amend Sec.  2.123(e)(1) to 
add that, where testimony is proffered by affidavit or declaration, 
cross-examination is available for any witness within the jurisdiction 
of the United States, as provided in proposed amendments to Sec.  
2.123(a)(1).
    The Office proposes to amend Sec.  2.123(e)(2) to remove provisions 
permitting depositions to be taken in longhand, by typewriting, or 
stenographically and to specify that testimony depositions shall be 
recorded.
    The Office proposes to amend Sec.  2.123(e)(3) to delete the 
provision that cross-examination is available on oral depositions, 
which the Office proposes to move to Sec.  2.123(e)(1), and to insert 
subheadings (i) and (ii) for clarity.
    The Office proposes to amend Sec.  2.123(e)(4) to specify that the 
rule regarding objections pertains to oral examination.
    The Office proposes to amend Sec.  2.123(e)(5) to clarify that the 
rule regarding witness signature relates to the transcript of an oral 
deposition.
    The Office proposes to amend Sec.  2.123(f)(2) to require that 
deposition transcripts and exhibits shall be filed in electronic form 
using ESTTA. If the weight or bulk of an exhibit prevents its uploading 
to ESTTA, it shall be transmitted in a separate package, including an 
explanation as to why it could not be submitted electronically. The 
proposed amendment codifies the use of electronic filing.
    The Office proposes to amend Sec.  2.123(g)(1) to add that 
deposition transcripts must be submitted in full-sized format (one page 
per sheet), not condensed (multiple pages per sheet). The Office 
proposes to amend Sec.  2.123(g)(3) to add that deposition transcripts 
must contain a word index, giving the pages where the words appear in 
the deposition.
    The Office proposes to remove Sec.  2.123(i), which permits 
inspection by parties and printing by the Office of depositions after 
they are filed in the Office. Subsections 2.123(j) through (l) are 
renumbered Sec. Sec.  2.123(i) through (k) in conformance.
    The Office proposes to amend renumbered Sec.  2.123(j) to add that 
objection may be made to receiving in evidence any declaration or 
affidavit. The Office proposes to further amend renumbered Sec.  
2.123(j) to provide that objections may not be considered until final 
hearing.

Depositions Upon Written Questions

    The Office proposes to add new Sec.  2.124(b)(3) to provide that a 
party desiring to take cross-examination by written questions of a 
witness who has provided testimony by affidavit or declaration shall 
serve notice on each adverse party and file a copy of the notice with 
the Board.
    The Office proposes to amend Sec.  2.124(d)(1) to clarify that the 
procedures for examination on written questions apply to both direct 
testimony and cross-examination. The Office proposes to further amend 
Sec.  2.124(d)(1) to specify procedure for cross-examination by written 
questions of a witness who has provided testimony by affidavit or 
declaration.
    The Office proposes to add new Sec.  2.124(d)(3) to provide that 
service of written questions, responses, and cross-examination 
questions shall be in accordance with Sec.  2.119(b).

Filing and Service of Testimony

    The Office proposes to amend Sec.  2.125 to renumber paragraphs (a) 
through (e) to (b) through (f) and to add new Sec.  2.125(a) to require 
that one copy of a declaration or affidavit prepared in accordance with 
Sec.  2.123, with exhibits, shall be served on each adverse party at 
the time the declaration or affidavit is submitted to the Board during 
the assigned testimony period.
    The Office proposes to amend renumbered Sec.  2.125(b) to add a 
cross-reference to Sec.  2.124 and to clarify that the subsection 
applies to testimony depositions, including depositions on written 
questions.
    The Office proposes to amend renumbered Sec.  2.125(f) to permit 
sealing of a part of an affidavit or declaration.

[[Page 19305]]

Form of Submissions to the Trademark Trial and Appeal Board

    The Office proposes to amend Sec.  2.126 to renumber paragraph (a) 
to (b) and to add new paragraph (a) to require that submissions to the 
Board shall be made via ESTTA. The proposed amendment codifies the use 
of electronic filing.
    The Office proposes to add new Sec.  2.126(a)(1) to require that 
text in an electronic submission must be filed in at least 12-point 
type and double-spaced. The proposed amendment is consistent with the 
proposed amendment to Sec.  2.126(b)(1).
    The Office proposes to add new Sec.  2.126(a)(2) to require that 
exhibits pertaining to an electronic submission must be made 
electronically as an attachment to the submission and must be clear and 
legible. The proposed amendment codifies the use of electronic filing.
    The Office proposes to amend renumbered Sec.  2.126(b) to permit 
submissions in paper form in the event that ESTTA is unavailable due to 
technical problems or when extraordinary circumstances are present. The 
Office proposes to further amend renumbered Sec.  2.126(b) to require 
that submissions in paper form must be accompanied by a Petition to the 
Director under Sec.  2.146(a)(5), with the required fees and showing.
    The Office proposes to amend renumbered Sec.  2.126(b)(1) to 
require that text in a paper submission must be filed in at least 12-
point type. The proposed amendment is consistent with the proposed 
amendment to Sec.  2.126(a)(1).
    The Office proposes to remove the subsection previously designated 
Sec.  2.126(b).
    The Office proposes to amend Sec.  2.126(c) to provide that 
submissions to the Board that are confidential in whole or part must be 
submitted using the ``Confidential'' selection available in ESTTA or, 
where appropriate, under a separate paper cover. The Office proposes to 
further amend Sec.  2.126(c) to clarify that a redacted copy must be 
submitted concurrently for public viewing.

Motions

    The Office proposes to amend Sec.  2.127(a) to reflect that all 
response dates initiated by a service date are twenty days. The Office 
proposes to further amend Sec.  2.127(a) to add that the time for 
filing a reply brief will not be reopened.
    The Office proposes to amend Sec.  2.127(b) to reflect that all 
response dates initiated by a service date are twenty days.
    The Office proposes to amend Sec.  2.127(c) to add that conceded 
matters and other matters not dispositive of a proceeding may be acted 
on by a Paralegal of the Board or by ESTTA and that motions disposed of 
by orders entitled ``By the Trademark Trial and Appeal Board'' have the 
same legal effect as orders by a panel of three Administrative 
Trademark Judges of the Board. The proposed amendments codify current 
Office practice.
    The Office proposes to amend Sec.  2.127(d) to clarify that a case 
is suspended when a party timely files any potentially dispositive 
motion.
    The Office proposes to amend Sec.  2.127(e)(1) to require that a 
motion for summary judgment must be filed prior to the deadline for 
pretrial disclosures for the first testimony period, rather than the 
commencement of that period. The Office proposes to further amend Sec.  
2.127(e)(1) to change references to Rule 56(f) to 56(d) in conformance 
with amendments to the Federal Rules of Civil Procedure. The Office 
proposes to further amend Sec.  2.127(e)(1) to reflect that the reply 
in support of a motion for summary judgment is due twenty days after 
service of the response. The Office proposes to further amend Sec.  
2.127(e)(1) to add that the time for filing a motion under Rule 56(d) 
and a reply brief will not be reopened.
    The Office proposes to amend Sec.  2.127(e)(2) to add that if a 
motion for summary judgment is denied, the parties may stipulate that 
the materials submitted with briefs on the motion shall be considered 
at trial as trial evidence, which may be supplemented by additional 
evidence during trial. The proposed revision codifies an approach used 
by parties in proceedings incorporating ACR-type efficiencies at trial.

Briefs at Final Hearing

    The Office proposes to amend Sec.  2.128(a)(3) to add that, when 
the Board issues a show cause order for failure to file a brief and 
there is no evidence of record, if the party responds to the order 
showing good cause why judgment should not be entered based on loss of 
interest but does not move to reopen its testimony period based on 
demonstrable excusable neglect, judgment may be entered against the 
plaintiff for failure to take testimony or submit evidence. The 
proposed amendment codifies current case law and practice and is 
consistent with TBMP Sec.  536 (2015).
    The Office proposes to amend Sec.  2.128(b) to add that evidentiary 
objections may be set out in a separate appendix that does not count 
against the briefing page limit. The proposed amendment codifies 
current case law and practice and is consistent with TBMP Sec.  801.03. 
The Office proposes to further amend Sec.  2.128(b) to add that briefs 
exceeding the page limits may not be considered by the Board, and this 
also codifies existing practice.

Oral Argument; Reconsideration

    The Office proposes to amend Sec.  2.129(a) to clarify that all 
statutory members of the Board may hear oral argument. The Office 
proposes to further amend Sec.  2.129(a) to add that parties and 
members of the Board may attend oral argument in person or, at the 
discretion of the Board, remotely. The proposed amendment codifies 
current Office practices and is consistent with the Office's proposed 
amendments to Sec.  2.142(e)(1).
    The Office proposes to amend Sec.  2.129(b) to add that the Board 
may deny a request to reset a hearing date for lack of good cause or if 
multiple requests for rescheduling have been filed.
    The Office proposes to amend Sec.  2.129(c) to reflect that all 
response dates initiated by a service date are twenty days.

New Matter Suggested by the Trademark Examining Attorney

    The Office proposes to amend Sec.  2.130 to add that if during an 
inter partes proceeding involving an application the examining attorney 
believes certain facts render the mark unregistrable the examining 
attorney should formally request remand of the application rather than 
simply notify the Board.

Involuntary Dismissal for Failure To Take Testimony

    The Office proposes to amend Sec.  2.132(a) to clarify that, if a 
plaintiff has not submitted evidence and its time for taking testimony 
has expired, the Board may grant judgment for the defendant sua sponte. 
The Office proposes to further amend Sec.  2.132(a) to reflect that all 
response dates initiated by a service date are twenty days. The Office 
proposes to amend further Sec.  2.132(a) to clarify the standard for 
the showing required not to render judgment dismissing the case is 
excusable neglect.
    The Office proposes to amend Sec.  2.132(b) to limit evidence to 
Office records showing the current status and title of a plaintiff's 
pleaded registrations. The Office proposes to further amend Sec.  
2.132(b) to reflect that all response dates initiated by a service date 
are twenty days. The Office proposes to further amend Sec.  2.132(b) to 
clarify that the Board may decline to render

[[Page 19306]]

judgment on a motion to dismiss until all testimony periods have 
passed.

Surrender or Voluntary Cancellation of Registration

    The Office proposes to amend Sec.  2.134(b) to clarify that the 
subsection is applicable to extensions of protection in accordance with 
the Madrid Protocol.

Status of Application on Termination of Proceeding

    The Office proposes to amend Sec.  2.136 to specify when a 
proceeding will be terminated by the Board and the status of an 
application on termination of an opposition or concurrent use 
proceeding.

Appeals

Time and Manner of Ex Parte Appeals

    The Office proposes to amend Sec.  2.142 to incorporate a 
nomenclature change from ``examiner'' to ``examining attorney.''
    The Office proposes to amend Sec.  2.142(b)(2) to add that a reply 
brief from an appellant shall not exceed ten pages in length and that 
no further briefs are permitted unless authorized by the Board.
    The Office proposes to add new Sec.  2.142(b)(3) to specify that 
citation to evidence in briefs should be to the documents in the 
electronic application record by date, the name of the paper under 
which the evidence was submitted, and the page number in the electronic 
record. The proposed amendment is intended to facilitate review of 
record evidence by the applicant, the examining attorney, the Board, 
and the public.
    The Office proposes to amend Sec.  2.142(c) to add that the 
statement of issues in a brief should note that the applicant has 
complied with all requirements made by the examining attorney and not 
the subject of appeal.
    The Office proposes to amend Sec.  2.142(d) to clarify that 
evidence shall not be submitted after a notice of appeal is filed. The 
proposed amendment more directly states the existing rule. The Office 
proposes to further amend Sec.  2.142(d) for clarity, including by 
specifying that an appellant or examining attorney who desires to 
introduce additional evidence after an appeal is filed must submit a 
request to the Board to suspend the appeal and remand the application 
for further examination.
    The Office proposes to amend Sec.  2.142(e)(1) to clarify that all 
statutory members of the Board may hear oral argument. The Office 
proposes to further amend Sec.  2.142(e)(1) to add that appellants, 
examining attorneys, and members of the Board may attend oral argument 
in person or, at the discretion of the Board, remotely. The proposed 
amendment codifies current Office practice and is consistent with the 
Office's proposed amendments to Sec.  2.129(a).
    The Office proposes to amend Sec.  2.142(e)(2) to add that a 
supervisory or managing attorney may designate an examining attorney to 
present oral argument and to delete the provision that the examining 
attorney designated must be from the same examining division.
    The Office proposes to amend Sec.  2.142(f)(1) to change the time 
for further examination of an application on remand from thirty days to 
the time set by the Board.

Appeal to Court and Civil Action

    The Office proposes to amend Sec.  2.145 by reorganizing the 
subjects covered and rewording some provisions to improve the clarity 
and structure of the rule and to align the provisions with the 
analogous rules governing judicial review of Patent Trial and Appeal 
Board decisions in 37 CFR part 90.
    From a restructuring standpoint, certain proposed amendments result 
in existing provisions being moved to a different subsection of the 
rule. Specifically, provisions regarding appeals to the U.S. Court of 
Appeals for the Federal Circuit, which currently appear in subparts (a) 
and (b), are proposed to be grouped together under subpart (a). 
Provisions regarding the process provided for in Section 21(a)(1) of 
the Act, whereby an adverse party to a Federal Circuit appeal of an 
inter partes Board decision may file notice of its election to have 
proceedings conducted by way of a civil action, are proposed to be 
moved from subpart (c), which concerns civil actions, to revised 
subpart (b), with the subheading ``For a notice of election under 
section 21(a)(1) to proceed under section 21(b) of the Act.''
    Substantively, throughout Sec.  2.145, the Office proposes to 
remove specific references to times for taking action or other 
requirements that are specified in the Act or another set of rules 
(e.g., Federal Rules of Appellate Procedure) and replace them with 
references to the applicable section of the Act or rules that set the 
time or requirements for the specified action. These changes will help 
ensure that parties consult the applicable statute or rule itself and 
avoid the need for the USPTO to amend its regulations if the applicable 
provision of the statute or rule changes.
    The Office also proposes to amend the provisions in Sec.  2.145 
that require copies of notices of appeal, notices of election, and 
notices of civil action to be filed with the Trademark Trial and Appeal 
Board to specify that such notices must be filed with the Board via 
ESTTA. These proposed amendments codify the use of electronic filing 
and enhance the Office's ability to handle properly applications, 
registrations, and proceedings while on review in federal court.
    Regarding amendments to the requirements for appeals to the Federal 
Circuit, the Office proposes to amend Sec.  2.145(a) to add subsections 
(1)-(3). The Office proposes to move the language currently in Sec.  
2.145 (a) to new (a)(1) and to amend it, in accordance with Section 
21(a) of the Act, to include that a registrant who has filed an 
affidavit or declaration under Section 71 of the Trademark Act and is 
dissatisfied with the decision of the Director may appeal. The Office 
proposes to further amend Sec.  2.145(a)(1) to add that it is 
unnecessary to request reconsideration before filing an appeal of a 
Board decision, but a party requesting reconsideration must do so 
before filing a notice of appeal. Proposed Sec. Sec.  2.145(a)(2) and 
(3) specify the requirements contained in current Sec. Sec.  2.145(a) 
and (b) for filing an appeal to the Federal Circuit.
    Regarding amendments to the requirements for filing a civil action 
in district court in Sec.  2.145(c), the Office proposes to add in 
Sec.  2.145(c)(1) an amendment corresponding to the amendment to Sec.  
2.145(a)(1) that it is unnecessary for a party to request 
reconsideration before filing a civil action seeking judicial review of 
a Board decision, but a party requesting reconsideration must do so 
before filing the civil action. The Office proposes to replace current 
Sec.  2.145(c)(2) with a provision that specifies the requirements for 
serving the Director with a complaint by an applicant or registrant in 
an ex parte case who seeks remedy by civil action under section 21(b) 
of the Act. The proposed amendment, which references Federal Rule of 
Civil Procedure 4(i) and Sec.  104.2, is intended to facilitate proper 
service of complaints in such actions on the Director. The Office 
proposes to replace current Sec.  2.145(c)(3) with a modified version 
of the provision currently in Sec.  2.145(c)(4), to specify that the 
party who commences a civil action for review of a Board decision in an 
inter partes case must file notice thereof with the Trademark Trial and 
Appeal Board via ESTTA no later than five business days after filing 
the complaint in district

[[Page 19307]]

court. The addition of a time frame for filing the notice of the civil 
action with the Board, and explicitly stating that the notice must 
identify the civil action with particularity, is necessary to ensure 
that the Board is timely notified when parties seek judicial review of 
its decisions and to avoid premature termination of a proceeding.
    The Office proposes to amend Sec.  2.145(d) regarding time for 
appeal or civil action by restructuring the subsections by the type of 
action (i.e., (1) for an appeal to the Federal Circuit, (2) for a 
notice of election, or (3) for a civil action) and to add a new 
subsection (d)(4)(i) regarding time computation if a request for 
reconsideration is filed. The Office proposes to move the time 
computation provision currently in (d)(2) regarding when the last day 
of time falls on a holiday to new subsection (d)(4)(ii) and to omit the 
addition of one day to any two-month time that includes February 28. 
The Office also proposes to change the times for filing a notice of 
appeal or commencing a civil action from two months to sixty-three days 
(i.e., nine weeks) from the date of the final decision of the Board. 
The proposed amendment aligns the times for appeal from Board action 
with those for the Patent Trial and Appeal Board in Part 90 of Title 37 
of the Code of Federal Regulations and is intended to simplify 
calculation of the deadlines for taking action.
    The Office proposes to amend Sec.  2.145(e) to specify that a 
request for extension of time to seek judicial review must be filed as 
provided in Sec.  104.2 and addressed to the attention of the Office of 
the Solicitor, to which the Director has delegated his or her authority 
to decide such requests, with a copy filed with the Board via ESTTA. 
The proposed amendment is intended to facilitate proper filing of and 
timely action upon extension requests and to avoid premature 
termination of a Board proceeding.

General Information and Correspondence in Trademark Cases

Addresses for Trademark Correspondence With the United States Patent 
and Trademark Office

    The Office proposes to amend Sec. Sec.  2.190(a) and (c) to reflect 
a nomenclature change from the Assignment Services Division to the 
Assignment Recordation Branch. The Office proposes to amend Sec.  
2.190(b) to direct that documents in proceedings before the Board be 
filed through ESTTA. The proposed amendment codifies the use of 
electronic filing.

Business To Be Transacted in Writing

    The Office proposes to amend Sec.  2.191 to direct that documents 
in proceedings before the Board be filed through ESTTA. The proposed 
amendment codifies the use of electronic filing.

Rulemaking Considerations

    Administrative Procedure Act: The changes in this rulemaking 
involve rules of agency practice and procedure and/or interpretive 
rules. See National Organization of Veterans' Advocates v. Secretary of 
Veterans Affairs, 260 F.3d 1365, 1375 (Fed. Cir. 2001) (Rule that 
clarifies interpretation of a statute is interpretive.); Bachow 
Communications Inc. v. FCC, 237 F.3d 683, 690 (D.C. Cir. 2001) (Rules 
governing an application process are procedural under the 
Administrative Procedure Act.); Inova Alexandria Hospital v. Shalala, 
244 F.3d 342, 350 (4th Cir. 2001) (Rules for handling appeals were 
procedural where they did not change the substantive standard for 
reviewing claims.).
    Accordingly, prior notice and opportunity for public comment for 
the rule changes are not required pursuant to 5 U.S.C. 553(b) or (c), 
or any other law. See Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336-
37 (Fed. Cir. 2008) (stating that 5 U.S.C. 553, and thus 35 U.S.C. 
2(b)(2), does not require notice and comment rulemaking for 
``interpretative rules, general statements of policy, or rules of 
agency organization, procedure, or practice'' (quoting 5 U.S.C. 
553(b)(A))). However, the Office chose to seek public comment before 
implementing the rule to benefit from the public's input.
    Regulatory Flexibility Act: Under the Regulatory Flexibility Act 
(RFA) (5 U.S.C. 601 et seq.), whenever an agency is required by 5 
U.S.C. 553 (or any other law) to publish a notice of proposed 
rulemaking (NPRM), the agency must prepare and make available for 
public comment an Initial Regulatory Flexibility Analysis, unless the 
agency certifies under 5 U.S.C. 605(b) that the proposed rule, if 
implemented, will not have a significant economic impact on a 
substantial number of small entities. 5 U.S.C. 603, 605.
    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 this rule will not have a significant economic 
impact on a substantial number of small entities. See 5 U.S.C. 605(b).
    The proposed rules involve changes to rules of agency practice and 
procedure in matters before the Trademark Trial and Appeal Board. The 
primary changes are to codify certain existing practices, increase 
efficiency and streamline proceedings, and provide greater clarity as 
to certain requirements in Board proceedings. The proposed rules do not 
alter any substantive criteria used to decide cases.
    The proposed rules will apply to all persons appearing before the 
Board. Applicants for a trademark are not industry specific and may 
consist of individuals, small businesses, non-profit organizations, and 
large corporations. The USPTO does not collect or maintain statistics 
in Board cases on small- versus large-entity applicants, and this 
information would be required in order to determine the number of small 
entities that would be affected by the proposed rules.
    The burdens, if any, to all entities, including small entities, 
imposed by these rule changes will be minor and consist of additional 
responsibilities and procedural requirements on parties appearing 
before the Board. Two possible sources of burden may come from the 
proposed requirement that all submissions will be filed through the 
Board's online filing system, the Electronic System for Trademark 
Trials and Appeals (``ESTTA''), except in certain limited 
circumstances, and the requirement that service between parties be 
conducted by email for all filings with the Board and any other papers. 
For impacted entities that do not have the necessary equipment and 
internet service, this may result in additional costs to obtain this 
ability or to petition to file on paper. However, the USPTO does not 
anticipate this requirement to impact a significant number of entities 
impacted by this rule as well over 95 percent of filings are already 
submitted electronically, and it is common practice among parties to 
use electronic service for all filings with the Board.
    In most instances the rule changes will lessen the burdens on 
parties, including small entities. For example, the Office proposes 
shifting away from the parties to itself the obligation to serve 
notices of opposition, petitions for cancellation, and concurrent use 
proceedings. Moreover, the proposed rules provide for the option of 
electronic service of other documents among the parties to a 
proceeding, thereby eliminating the existing need to arrange for the 
mailing or hand delivery of these documents. Also, the Office proposes 
making discovery less onerous for the parties by imposing limitations 
on the volume of discovery, incorporating a proportionality 
requirement, and allowing parties to present direct

[[Page 19308]]

testimony by affidavit or declaration. The proposed rules also keep 
burdens and costs lower for the parties by permitting remote attendance 
at oral hearings, thereby eliminating the need for travel to appear in 
person. Overall, the proposed rules will have a net benefit to the 
parties to proceedings by increasing convenience, providing efficiency 
and clarity in the process, and streamlining the procedures. Therefore, 
this action will not have a significant economic impact on a 
substantial number of small entities.
    Executive Order 12866: This rule has been determined not to be 
significant for purposes of Executive Order 12866.
    Executive Order 13563 (Improving Regulation and Regulatory Review): 
The Office has complied with Executive Order 13563 (Jan. 18, 2011). 
Specifically, the Office has, to the extent feasible and applicable: 
(1) Made a reasoned determination that the benefits justify the costs 
of the rule changes; (2) tailored the rule to impose the least burden 
on society consistent with obtaining the regulatory objectives; (3) 
selected a regulatory approach that maximizes net benefits; (4) 
specified performance objectives; (5) identified and assessed available 
alternatives; (6) provided the public with a meaningful opportunity to 
participate in the regulatory process, including soliciting the views 
of those likely affected prior to issuing a notice of proposed 
rulemaking, and provided online access to the rulemaking docket; (7) 
attempted to promote coordination, simplification, and harmonization 
across government agencies and identified goals designed to promote 
innovation; (8) considered approaches that reduce burdens and maintain 
flexibility and freedom of choice for the public; and (9) ensured the 
objectivity of scientific and technological information and processes, 
to the extent applicable.
    Executive Order 13132: This rule does not contain policies with 
federalism implications sufficient to warrant preparation of a 
Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).
    Congressional Review Act: Under the Congressional Review Act 
provisions of the Small Business Regulatory Enforcement Fairness Act of 
1996 (5 U.S.C. 801 et seq.), prior to issuing any final rule, the 
Office will submit a report containing the final rule and other 
required information to the U.S. Senate, the U.S. House of 
Representatives, and the Comptroller General of the Government 
Accountability Office. The changes in this rule are not expected to 
result in an annual effect on the economy of 100 million dollars or 
more, a major increase in costs or prices, or significant adverse 
effects on competition, employment, investment, productivity, 
innovation, or the ability of U.S.-based enterprises to compete with 
foreign-based enterprises in domestic and export markets. Therefore, 
this rule change is not expected to result in a ``major rule'' as 
defined in 5 U.S.C. 804(2).
    Unfunded Mandate Reform Act of 1995: The Unfunded Mandates Reform 
Act (2 U.S.C. 1501 et seq.) requires that agencies prepare an 
assessment of anticipated costs and benefits before issuing any rule 
that may result in expenditure by State, local, and tribal governments, 
in the aggregate, or by the private sector, of $100 million or more 
(adjusted annually for inflation) in any given year. This rule will 
have no such effect on State, local, and tribal governments or the 
private sector.
    Paperwork Reduction Act: The Paperwork Reduction Act of 1995 (44 
U.S.C. 3501-3549) requires that the Office consider the impact of 
paperwork and other information collection burdens imposed on the 
public. This proposed rule involves information collection requirements 
that are subject to review by the Office of Management and Budget (OMB) 
under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501-3549). The 
collections of information involved in this rulemaking have been 
reviewed and previously approved by OMB under control numbers 0651-
0054. This proposed rule, if adopted, would shift a greater portion of 
paper filings to electronic filings. However, this rulemaking would not 
add any additional information requirements or fees for parties before 
the Board, and therefore, it would not materially change the 
information collection burdens approved under the OMB control number 
0651-0054. If the proposed rule is adopted, the Office will submit a 
change worksheet to the information collection to recognize the greater 
shift of filings to an electronic format and enter any related 
adjustments. Notwithstanding any other provision of law, no person is 
required to respond to, nor shall any 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

37 CFR Part 2

    Administrative practice and procedure, Trademarks.

    For the reasons given in the preamble and under the authority 
contained in 15 U.S.C. 1113, 15 U.S.C. 1123, and 35 U.S.C. 2, as 
amended, the Office proposes to amend part 2 of title 37 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. 1113, 15 U.S.C. 1123, 35 U.S.C. 2, Section 
10(c) of Pub. L. 112-29, unless otherwise noted.

0
2. Revise Sec.  2.92 to read as follows:


Sec.  2.92  Preliminary to interference.

    An interference which has been declared by the Director will not be 
instituted by the Trademark Trial and Appeal Board until the examining 
attorney has determined that the marks which are to form the subject 
matter of the controversy are registrable, and all of the marks have 
been published in the Official Gazette for opposition.
0
3. In Sec.  2.98 revise the second sentence to read as follows:


Sec.  2.98  Adding party to interference.

    * * * If an application which is or might be the subject of a 
petition for addition to an interference is not added, the examining 
attorney may suspend action on the application pending termination of 
the interference proceeding.
0
4. In Sec.  2.99 revise paragraphs (c), (d)(1), (d)(2), (d)(3), and 
(f)(3) to read as follows:


Sec.  2.99  Application to register as concurrent user.

* * * * *
    (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 notice of institution 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 
notice 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 email 
address, the notice will be transmitted via email.
    (d)(1) The Board's notice of institution will include a web link or 
web address for the concurrent use application proceeding contained in 
Office records.
    (2) An answer to the notice is not required in the case of an 
applicant or registrant whose application or

[[Page 19309]]

registration is acknowledged by the concurrent use applicant in the 
concurrent use application, but a statement, if desired, may be filed 
within forty days after the issuance of the notice; in the case of any 
other party specified as a concurrent user in the application, an 
answer must be filed within forty days after the issuance of the 
notice.
    (3) If an answer, when required, is not filed, judgment will be 
entered precluding the defaulting user from claiming any right more 
extensive than that acknowledged in the application(s) for concurrent 
use registration, but the burden of proving entitlement to 
registration(s) will remain with the concurrent use applicant(s).
* * * * *
    (f) * * *
    (3) A true copy of the court decree is submitted to the examining 
attorney; and
* * * * *
0
5. Revise Sec.  2.101 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.
    (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. The 
opposition need not be verified, but must be signed by the opposer or 
the opposer's attorney, as specified in Sec.  11.1 of this chapter, or 
other authorized representative, as specified in Sec.  11.14(b) of this 
chapter. Electronic signatures pursuant to Sec.  2.193(c) are required 
for oppositions filed through ESTTA under paragraphs (b)(1) or (2) of 
this section.
    (1) An opposition to an application must be filed through ESTTA. In 
the event that ESTTA is unavailable due to technical problems, or when 
extraordinary circumstances are present, an opposition against an 
application based on Section 1 or 44 of the Act may be filed in paper 
form. An opposition to an application based on Section 66(a) of the Act 
must be filed through ESTTA and may not under any circumstances be 
filed in paper form.
    (2) A paper opposition to an application based on Section 1 or 44 
of the Act must be filed by the due date set forth in paragraph (c) of 
this section and be accompanied by a Petition to the Director under 
Sec.  2.146(a)(5), with the fees therefor and the showing required 
under paragraph (b)(1) of this section. Timeliness of the paper 
submission will be determined in accordance with Sec. Sec.  2.195 
through 2.198.
    (c) The opposition must be filed within thirty days after 
publication (Sec.  2.80) of the application being opposed or within an 
extension of time (Sec.  2.102) for filing an opposition. The 
opposition must be accompanied by the required fee for each party 
joined as opposer for each class in the application for which 
registration is opposed (see Sec.  2.6).
    (d) An otherwise timely opposition cannot be filed via ESTTA unless 
the opposition is accompanied by a fee that is sufficient to pay in 
full for each named party opposer to oppose the registration of a mark 
in each class specified in the opposition. A paper opposition that is 
not accompanied by the required fee sufficient to pay in full for each 
named party opposer for each class in the application for which 
registration is opposed may not be instituted. If time remains in the 
opposition period as originally set or as extended by the Board, the 
potential opposer may resubmit the opposition with the required fee.
    (e) The filing date of an opposition is the date of electronic 
receipt in the Office of the notice of opposition, and required fee. In 
the rare instances that filing by paper is permitted under these rules, 
the filing date will be determined in accordance with Sec. Sec.  2.195 
through 2.198.
0
6. Amend Sec.  2.102 by revising:
0
a. Paragraphs (a), (b), (c)(1), and (c)(2);
0
b. Add a new second sentence after the first sentence in paragraph 
(c)(3);
0
c. Add new paragraph (d), and;
0
d. Add and reserve paragraph (e) to read as follows:


Sec.  2.102  Extension of time for filing an opposition.

    (a) Any person who believes that he, she or it would be damaged by 
the registration of a mark on the Principal Register may file a request 
with the Trademark Trial and Appeal Board to extend the time for filing 
an opposition. The request need not be verified, but must be signed by 
the potential opposer or by the potential opposer's attorney, as 
specified in Sec.  11.1 of this chapter, or authorized representative, 
as specified in Sec.  11.14(b) of this chapter. Electronic signatures 
pursuant to Sec.  2.193(c) are required for electronically filed 
extension requests.
    (1) A request to extend the time for filing an opposition to an 
application must be filed through ESTTA. In the event that ESTTA is 
unavailable due to technical problems, or when extraordinary 
circumstances are present, a request to extend the opposition period 
for an application based on Section 1 or 44 of the Act may be filed in 
paper form by the opposition due date set forth in Sec.  2.101(c). A 
request to extend the opposition period for an application based on 
Section 66(a) of the Act must be filed through ESTTA and may not under 
any circumstances be filed in paper form.
    (2) A paper request to extend the opposition period for an 
application based on Section 1 or 44 of the Act must be filed by the 
due date set forth in Sec.  2.101(c) and be accompanied by a Petition 
to the Director under Sec.  2146(a)(5), with the fees therefor and the 
showing required under paragraph (a)(1) of this section. Timeliness of 
the paper submission will be determined in accordance with Sec. Sec.  
2.195 through 2.198.
    (b) A request to extend the time for filing an opposition must 
identify the potential opposer with reasonable certainty. Any 
opposition filed during an extension of time must be in the name of the 
person to whom the extension was granted, except that an opposition may 
be accepted if the person in whose name the extension was requested was 
misidentified through mistake or if the opposition is filed in the name 
of a person in privity with the person who requested and was granted 
the extension of time.
    (c) * * *
    (1) A person may file a first request for (i) either a thirty-day 
extension of time, which will be granted upon request, or (ii) a 
ninety-day extension of time, which will be granted only for good cause 
shown. A sixty-day extension is not available as a first extension of 
time to oppose.
    (2) If a person was granted an initial thirty-day extension of 
time, that person may file a request for an additional sixty-day 
extension of time, which will be granted only for good cause shown.
    (3) * * * No other time period will be allowed for a final 
extension of the opposition period. * * *
    (d) The filing date of a request to extend the time for filing an 
opposition is the date of electronic receipt in the Office of the 
request. In the rare instance that filing by paper is permitted under 
these rules, the filing date will be determined in accordance with 
Sec. Sec.  2.195 through 2.198.
    (e) Fees. [Reserved]
0
7. Add and reserve Sec.  2.103 to read as follows:


Sec.  2.103  [Reserved]

0
8. Amend Sec.  2.104 by revising paragraph (a), and adding new 
paragraph (c) to read as follows:


Sec.  2.104  Contents of opposition.

    (a) The opposition must set forth a short and plain statement 
showing why

[[Page 19310]]

the opposer believes he, she or it would be damaged by the registration 
of the opposed mark and state the grounds for opposition. ESTTA 
requires the opposer to select relevant grounds for opposition. The 
required accompanying statement supports and explains the grounds.
* * * * *
    (c) An opposition to an application filed under Section 66(a) of 
the Act must identify the goods and/or services opposed and the grounds 
for opposition on the ESTTA cover sheet as well as in the accompanying 
statement. Opposition to a Section 66(a) application may not be amended 
to include goods, services or grounds beyond those set forth in the 
ESTTA cover sheet.
0
9. Revise Sec.  2.105 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) has been filed with the correct fee(s), and the opposition has 
been determined to be timely and complete, the Trademark Trial and 
Appeal Board shall prepare a notice of institution, which shall 
identify the proceeding as an opposition, number of the proceeding, and 
the application(s) involved; and the notice shall designate a time, not 
less than thirty days from the mailing date of the notice, within which 
an answer must be filed. If a party has provided the Office with an 
email address, the notice will be transmitted via email. The notice, 
which will include a web link or web address to access the electronic 
proceeding record, constitutes service of the notice of opposition to 
the applicant.
    (b) The Board shall forward a copy of the notice to opposer, as 
follows:
    (1) If the opposition is transmitted by an attorney, or a written 
power of attorney is filed, the Board will send the notice to the 
attorney transmitting the opposition or to the attorney designated in 
the power of attorney, provided that the person is an ``attorney'' as 
defined in Sec.  11.1 of this chapter, at the email or correspondence 
address for the attorney.
    (2) If opposer is not represented by an attorney in the opposition, 
but opposer has appointed a domestic representative, the Board will 
send the notice to the domestic representative, at the email or 
correspondence address of record for the domestic representative, 
unless opposer designates in writing another correspondence address.
    (3) If opposer is not represented by an attorney in the opposition, 
and no domestic representative has been appointed, the Board will send 
the notice directly to opposer at the email or correspondence address 
of record for opposer, unless opposer designates in writing another 
correspondence address.
    (c) The Board shall forward a copy of the notice to applicant, as 
follows:
    (1) If the opposed application contains a clear indication that the 
application is being prosecuted by an attorney, as defined in Sec.  
11.1 of this chapter, the Board shall send the notice described in this 
section to applicant's attorney at the email or correspondence address 
of record for the attorney.
    (2) If the opposed application is not being prosecuted by an 
attorney but a domestic representative has been appointed, the Board 
will send the notice described in this section to the domestic 
representative, at the email or correspondence address of record for 
the domestic representative, unless applicant designates in writing 
another correspondence address.
    (3) If the opposed application is not being prosecuted by an 
attorney, and no domestic representative has been appointed, the Board 
will send the notice described in this section directly to applicant, 
at the email or correspondence address of record for the applicant, 
unless applicant designates in writing another correspondence address.
0
10. Amend Sec.  2.106 by revising paragraphs (a) and (b) to read as 
follows:


Sec.  2.106  Answer.

    (a) If no answer is filed within the time initially set, or as may 
later be reset by the Board, the opposition may be decided as in case 
of default. The failure to file a timely answer tolls all deadlines, 
including the discovery conference, until the issue of default is 
resolved.
    (b)(1) An answer shall state in short and plain terms the 
applicant's defenses to each claim asserted and shall admit or deny the 
averments upon which the opposer relies. If the applicant is without 
knowledge or information sufficient to form a belief as to the truth of 
an averment, applicant shall so state and this will have the effect of 
a denial. Denials may take any of the forms specified in Rule 8(b) of 
the Federal Rules of Civil Procedure. An answer may contain any 
defense, including the affirmative defenses of unclean hands, laches, 
estoppel, acquiescence, fraud, mistake, prior judgment, or any other 
matter constituting an avoidance or affirmative defense. When pleading 
special matters, the Federal Rules of Civil Procedure shall be 
followed. A reply to an affirmative defense shall not be filed. When a 
defense attacks the validity of a registration pleaded in the 
opposition, paragraph (b)(2) of this section shall govern. A pleaded 
registration is a registration identified by number by the party in the 
position of plaintiff in an original notice of opposition or in any 
amendment thereto made under Rule 15 of the Federal Rules of Civil 
Procedure.
    (2)(i) A defense attacking the validity of any one or more of the 
registrations pleaded in the opposition shall be a compulsory 
counterclaim if grounds for such counterclaim exist at the time when 
the answer is filed. If grounds for a counterclaim are known to the 
applicant when the answer to the opposition is filed, the counterclaim 
shall be pleaded with or as part of the answer. If grounds for a 
counterclaim are learned during the course of the opposition 
proceeding, the counterclaim shall be pleaded promptly after the 
grounds therefor are learned. A counterclaim need not be filed if the 
claim is the subject of another proceeding between the same parties or 
anyone in privity therewith; but the applicant must promptly inform the 
Board, in the context of the opposition proceeding, of the filing of 
the other proceeding.
    (ii) An attack on the validity of a registration pleaded by an 
opposer will not be heard unless a counterclaim or separate petition is 
filed to seek the cancellation of such registration.
    (iii) The provisions of Sec. Sec.  2.111 through 2.115, inclusive, 
shall be applicable to counterclaims. A time, not less than thirty 
days, will be designated by the Board within which an answer to the 
counterclaim must be filed.
    (iv) The times for pleading, discovery, testimony, briefs or oral 
argument may be reset or extended when necessary, upon motion by a 
party, or as the Board may deem necessary, to enable a party fully to 
present or meet a counterclaim or separate petition for cancellation of 
a registration.
* * * * *
0
11. Revise Sec.  2.107 to read as follows:


Sec.  2.107  Amendment of pleadings in an opposition proceeding.

    (a) Pleadings in an opposition proceeding against an application 
filed under section 1 or 44 of the Act may be amended in the same 
manner and to the same extent as in a civil action in a United States 
district court, except that, after the close of the time period for 
filing an opposition including any extension of time for filing an 
opposition, an opposition may not be amended to add to the goods or 
services opposed, or to add a joint opposer.

[[Page 19311]]

    (b) Pleadings in an opposition proceeding against an application 
filed under section 66(a) of the Act may be amended in the same manner 
and to the same extent as in a civil action in a United States district 
court, except that, once filed, the opposition may not be amended to 
add grounds for opposition or goods or services beyond those identified 
in the notice of opposition, or to add a joint opposer. The grounds for 
opposition, the goods or services opposed, and the named opposers are 
limited to those identified in the ESTTA cover sheet regardless of what 
is contained in any attached statement.
0
12. Revise Sec.  2.111 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.
    (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. The petition for cancellation need not be 
verified, but must be signed by the petitioner or the petitioner's 
attorney, as specified in Sec.  11.1 of this chapter, or other 
authorized representative, as specified in Sec.  11.14(b) of this 
chapter. Electronic signatures pursuant to Sec.  2.193(c) 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)(1) A petition to cancel a registration must be filed through 
ESTTA. In the event that ESTTA is unavailable due to technical 
problems, or when extraordinary circumstances are present, a petition 
to cancel may be filed in paper form as provided in paragraph (c)(2) of 
this section.
    (2) A paper petition to cancel a registration must be accompanied 
by a Petition to the Director under Sec.  2.146(a)(5), with the fees 
therefor and the showing required under paragraph (c)(1) of this 
section. Timeliness of the paper submission, if relevant to a ground 
asserted in the petition to cancel, will be determined in accordance 
with Sec. Sec.  2.195 through 2.198.
    (d) The petition for cancellation must be accompanied by the 
required fee for each party joined as petitioner for each class in the 
registration(s) for which cancellation is sought (see Sec.  2.6). A 
petition cannot be filed via ESTTA unless the petition is accompanied 
by a fee that is sufficient to pay in full for each named petitioner to 
seek cancellation of the registration(s) in each class specified in the 
petition. A petition filed in paper form that is not accompanied by a 
fee sufficient to pay in full for each named petitioner for each class 
in the registration(s) for which cancellation is sought may not be 
instituted.
    (e) The filing date of a petition for cancellation is the date of 
electronic receipt in the Office of the petition and required fee. In 
the rare instances that filing by paper is permitted under these rules, 
the filing date of a petition for cancellation is the date identified 
in Sec.  2.198.
0
13. Revise Sec.  2.112 to read as follows:


Sec.  2.112  Contents of petition for cancellation.

    (a) The petition for cancellation must set forth a short and plain 
statement showing why the petitioner believes he, she or it is or will 
be damaged by the registration, state the ground for cancellation, and 
indicate, to the best of petitioner's knowledge, the name and address, 
and a current email address(es), of the current owner of the 
registration, and of any attorney, as specified in Sec. Sec.  11.14(a) 
and (c) of this Chapter, reasonably believed by the petitioner to be a 
possible representative of the owner in matters regarding the 
registration. ESTTA requires the petitioner to select relevant grounds 
for petition to cancel. The required accompanying statement supports 
and explains the grounds.
    (b) When appropriate, petitions for cancellation of different 
registrations owned by the same party may be joined in a consolidated 
petition for cancellation. The required fee must be included for each 
party joined as a petitioner for each class sought to be cancelled in 
each registration against which the petition for cancellation has been 
filed.
0
14. Revise Sec.  2.113 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) has been filed and the correct fee has been submitted, 
the Trademark Trial and Appeal Board shall prepare a notice of 
institution which shall identify the proceeding as a cancellation, 
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 notice, within which an answer must be filed. If a party has 
provided the Office with an email address, the notice will be 
transmitted via email. The notice, which will include a web link or web 
address to access the electronic proceeding record, constitutes service 
to the registrant of the petition to cancel.
    (b) The Board shall forward a copy of the notice to petitioner, as 
follows:
    (1) If the petition for cancellation is transmitted by an attorney, 
or a written power of attorney is filed, the Board will send the notice 
to the attorney transmitting the petition for cancellation or to the 
attorney designated in the power of attorney, provided that person is 
an ``attorney'' as defined in Sec.  11.1 of this chapter, to the 
attorney's email or correspondence address of record for the attorney.
    (2) If petitioner is not represented by an attorney in the 
cancellation proceeding, but petitioner has appointed a domestic 
representative, the Board will send the notice to the domestic 
representative, at the email or correspondence address of record for 
the domestic representative, unless petitioner designates in writing 
another correspondence address.
    (3) If petitioner is not represented by an attorney in the 
cancellation proceeding, and no domestic representative has been 
appointed, the Board will send the notice directly to petitioner, at 
the email or correspondence address of record for petitioner, unless 
petitioner designates in writing another correspondence address.
    (c)(1) The Board shall forward a copy of the notice to 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).
    (2) If the respondent has appointed a domestic representative, and 
such appointment is reflected in the Office's records, the Board will 
send the notice only to the domestic representative at the email or 
correspondence address of record for the domestic representative.
    (3) In the case of a registration issued under 15 U.S.C. 1141i, 
notice will be sent to the international registration holder's 
designated representative. The notice, which will include a web link or 
web address to access the electronic

[[Page 19312]]

proceeding record, constitutes service to respondent of the petition to 
cancel.
    (d) When the party alleged by the petitioner, pursuant to Sec.  
2.112(a), as the current owner of the registration(s) is not the record 
owner, a courtesy copy of the notice with a web link or web address to 
access the electronic proceeding record shall be forwarded to the 
alleged current owner. The alleged current owner may file a motion to 
be joined or substituted as respondent.
0
15. Revise Sec.  2.114 to read as follows:


Sec.  2.114  Answer.

    (a) If no answer is filed within the time initially set, or as may 
later be reset by the Board, the petition may be decided as in case of 
default. The failure to file a timely answer tolls all deadlines, 
including the discovery conference, until the issue of default is 
resolved.
    (b)(1) An answer shall state in short and plain terms the 
respondent's defenses to each claim asserted and shall admit or deny 
the averments upon which the petitioner relies. If the respondent is 
without knowledge or information sufficient to form a belief as to the 
truth of an averment, respondent shall so state and this will have the 
effect of a denial. Denials may take any of the forms specified in Rule 
8(b) of the Federal Rules of Civil Procedure. An answer may contain any 
defense, including the affirmative defenses of unclean hands, laches, 
estoppel, acquiescence, fraud, mistake, prior judgment, or any other 
matter constituting an avoidance or affirmative defense. When pleading 
special matters, the Federal Rules of Civil Procedure shall be 
followed. A reply to an affirmative defense need not be filed. When a 
defense attacks the validity of a registration pleaded in the petition, 
paragraph (b)(2) of this section shall govern. A pleaded registration 
is a registration identified by number by the party in position of 
plaintiff in an original petition for cancellation, or a counterclaim 
petition for cancellation, or in any amendment thereto made under Rule 
15 of the Federal Rules of Civil Procedure.
    (2)(i) A defense attacking the validity of any one or more of the 
registrations pleaded in the petition shall be a compulsory 
counterclaim if grounds for such counterclaim exist at the time when 
the answer is filed. If grounds for a counterclaim are known to 
respondent when the answer to the petition is filed, the counterclaim 
shall be pleaded with or as part of the answer. If grounds for a 
counterclaim are learned during the course of the cancellation 
proceeding, the counterclaim shall be pleaded promptly after the 
grounds therefor are learned. A counterclaim need not be filed if the 
claim is the subject of another proceeding between the same parties or 
anyone in privity therewith; but the party in position of respondent 
and counterclaim plaintiff must promptly inform the Board, in the 
context of the primary cancellation proceeding, of the filing of the 
other proceeding.
    (ii) An attack on the validity of a registration pleaded by a 
petitioner for cancellation will not be heard unless a counterclaim or 
separate petition is filed to seek the cancellation of such 
registration.
    (iii) The provisions of Sec. Sec.  2.111 through 2.115, inclusive, 
shall be applicable to counterclaims. A time, not less than thirty 
days, will be designated by the Board within which an answer to the 
counterclaim must be filed. Such response period may be reset as 
necessary by the Board, for a time period to be determined by the 
Board.
    (iv) The times for pleading, discovery, testimony, briefs, or oral 
argument may be reset or extended when necessary, upon motion by a 
party, or as the Board may deem necessary, to enable a party fully to 
present or meet a counterclaim or separate petition for cancellation of 
a registration.
    (c) The petition for cancellation or counterclaim petition for 
cancellation may be withdrawn without prejudice before the answer is 
filed. After the answer is filed, such petition or counterclaim 
petition may not be withdrawn without prejudice except with the written 
consent of the registrant or the registrant's attorney or other 
authorized representative.
0
16. Amend Sec.  2.116 by revising paragraphs (c) and (e) through (g) to 
read as follows:


Sec.  2.116  Federal Rules of Civil Procedure.

* * * * *
    (c) The notice of opposition or the petition for cancellation and 
the answer correspond to the complaint and answer in a court 
proceeding.
* * * * *
    (e) The submission of notices of reliance, declarations and 
affidavits, as well as the taking of depositions, during the assigned 
testimony periods correspond to the trial in court proceedings.
    (f) Oral hearing, if requested, of arguments on the record and 
merits corresponds to oral summation in court proceedings.
    (g) The Trademark Trial and Appeal Board's standard protective 
order is automatically imposed in all inter partes 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. 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. The Board 
may treat as not confidential that material which cannot reasonably be 
considered confidential, notwithstanding a designation as such by a 
party.
0
17. Amend by revising Sec.  2.117 paragraph (c) to read as follows:


Sec.  2.117  Suspension of proceedings.

* * * * *
    (c) Proceedings may also be suspended sua sponte by the Board, or, 
for good cause, upon motion or a stipulation of the parties approved by 
the Board. Many consented or stipulated motions to suspend are suitable 
for automatic approval by ESTTA, but the Board retains discretion to 
condition approval on the party or parties providing necessary 
information about the status of settlement talks, discovery activities, 
or trial activities, as may be appropriate.
0
18. 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, including notification to the 
Office of non-delivery in paper or electronic form, additional notice 
may be given by publication in the Official Gazette.
0
19. Revise Sec.  2.119 and the heading to read as follows:


Sec.  2.119  Service and signing.

    (a) Except for the notice of opposition or the petition to cancel, 
every submission filed in the Office in inter partes cases, including 
notices of appeal to the courts, must be served upon the other party or 
parties. Proof of such service must be made before the submission will 
be considered by the Office. A statement signed by the attorney or 
other authorized representative, attached to or appearing on the 
original submission when filed, clearly stating the date and manner in 
which service was made will be accepted as prima facie proof of 
service.

[[Page 19313]]

    (b) Service of submissions filed with the Board and any other 
papers served on a party not required to be filed with the Board, must 
be on the attorney or other authorized representative of the party if 
there be such or on the party if there is no attorney or other 
authorized representative, and must be made by email, unless otherwise 
stipulated, or if the serving party can show by written explanation 
accompanying the submission or paper, or in a subsequent amended 
certificate of service, that service by email was attempted but could 
not be made due to technical problems or extraordinary circumstances, 
then service may be made in any of the following ways:
    (1) By delivering a copy of the submission or paper to the person 
served;
    (2) By leaving a copy at the usual place of business of the person 
served, with someone in the person's employment;
    (3) When the person served has no usual place of business, by 
leaving a copy at the person's residence, with some person of suitable 
age and discretion who resides there;
    (4) Transmission by the Priority Mail Express[supreg] Post Office 
to Addressee service of the United States Postal Service or by first-
class mail, which may also be certified or registered;
    (5) Transmission by overnight courier;
    (6) Other forms of electronic transmission.
    (c) When service is made by first-class mail, Priority Mail 
Express[supreg], or overnight courier, the date of mailing or of 
delivery to the overnight courier will be considered the date of 
service.
    (d) If a party to an inter partes proceeding is not domiciled in 
the United States and is not represented by an attorney or other 
authorized representative located in the United States, none of the 
parties to the proceeding is eligible to use the service option under 
paragraph (b)(4) of this section. The party not domiciled in the United 
States may designate by submission filed in the Office the name and 
address of a person residing in the United States on whom may be served 
notices or process in the proceeding. If the party has appointed a 
domestic representative, official communications of the Office will be 
addressed to the domestic representative unless the proceeding is being 
prosecuted by an attorney at law or other qualified person duly 
authorized under Sec.  11.14(c) of this subchapter. If the party has 
not appointed a domestic representative and the proceeding is not being 
prosecuted by an attorney at law or other qualified person, the Office 
will send correspondence directly to the party, unless the party 
designates in writing another address to which correspondence is to be 
sent. The mere designation of a domestic representative does not 
authorize the person designated to prosecute the proceeding unless 
qualified under Sec.  11.14(a), or qualified under Sec.  11.14(b) and 
authorized under Sec.  2.17(f).
    (e) Every submission filed in an inter partes proceeding, and every 
request for an extension of time to file an opposition, must be signed 
by the party filing it, or by the party's attorney or other authorized 
representative, but an unsigned submission will not be refused 
consideration if a signed copy is submitted to the Office within the 
time limit set in the notification of this defect by the Office.
0
20. Revise Sec.  2.120 to read as follows:


Sec.  2.120  Discovery.

    (a) In general. (1) Except as otherwise provided in this section, 
and 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. The provisions of Rule 26 of the Federal Rules of Civil 
Procedure relating to required disclosures, the conference of the 
parties to discuss settlement and to develop a disclosure and discovery 
plan, the scope, proportionality, 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 within the notice of 
institution of the proceeding.
    (2)(i) The discovery conference shall occur no later than the 
opening of the discovery period, and the parties must discuss the 
subjects set forth in Rule 26(f) of the Federal Rules of Civil 
Procedure 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 to the deadline for the 
conference, or when the Board deems it useful for the parties to have 
Board involvement. 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.
    (ii) Initial disclosures must be made no later than thirty days 
after the opening of the discovery period.
    (iii) Disclosure of expert testimony must occur in the manner and 
sequence provided in Rule 26(a)(2) of the Federal Rules of Civil 
Procedure, 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, either on its own 
initiative or on notice from either party of the disclosure of expert 
testimony, may issue an order regarding expert discovery and/or set a 
deadline for any other party to disclose plans to use a rebuttal 
expert.
    (iv) The parties may stipulate to a shortening of the discovery 
period, that there will be no discovery, that the number of discovery 
requests or depositions be limited, or that reciprocal disclosures be 
used in place of discovery. Limited extensions of the discovery period 
may be granted 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, but the 
expert disclosure deadline must always be scheduled prior to the close 
of discovery. If a stipulation or motion for modification is denied, 
discovery disclosure deadlines may remain as originally set or reset 
and obligations may remain unaltered.
    (v) 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

[[Page 19314]]

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 properly noticed 
and taken during the discovery period. Interrogatories, requests for 
production of documents and things, and requests for admission must be 
served early enough in the discovery period, as originally set or as 
may have been reset by the Board, so that responses will be due no 
later than the close of discovery. 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, but the response may not be due later than the 
close of discovery. 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.
    (b) Discovery deposition within the United States. The deposition 
of a natural person shall be taken in the Federal judicial district 
where the person resides or is regularly employed or at any place on 
which the parties agree in writing. The responsibility rests wholly 
with the party taking discovery to secure the attendance of a proposed 
deponent other than a party or anyone who, at the time set for the 
taking of the deposition, is an officer, director, or managing agent of 
a party, or a person designated under Rule 30(b)(6) or Rule 31(a) of 
the Federal Rules of Civil Procedure. (See 35 U.S.C. 24.)
    (c) Discovery deposition in foreign countries; or of foreign party 
within jurisdiction of the United States. (1) The discovery deposition 
of a natural person residing in a foreign country who is a party or 
who, at the time set for the taking of the deposition, is an officer, 
director, or managing agent of a party, or a person designated under 
Rule 30(b)(6) or Rule 31(a) of the Federal Rules of Civil Procedure, 
shall, if taken in a foreign country, be taken in the manner prescribed 
by Sec.  2.124 unless the Trademark Trial and Appeal Board, upon motion 
for good cause, orders that the deposition be taken by oral 
examination, or the parties so stipulate.
    (2) Whenever a foreign party is or will be, during a time set for 
discovery, present within the United States or any territory which is 
under the control and jurisdiction of the United States, such party may 
be deposed by oral examination upon notice by the party seeking 
discovery. Whenever a foreign party has or will have, during a time set 
for discovery, an officer, director, managing agent, or other person 
who consents to testify on its behalf, present within the United States 
or any territory which is under the control and jurisdiction of the 
United States, the party must inform every adverse party of such 
presence and such officer, director, managing agent, or other person 
who consents to testify in its behalf may be deposed by oral 
examination upon notice by the party seeking discovery. The party 
seeking discovery may have one or more officers, directors, managing 
agents, or other persons who consent to testify on behalf of the 
adverse party, designated under Rule 30(b)(6) of the Federal Rules of 
Civil Procedure. The deposition of a person under this paragraph shall 
be taken in the Federal judicial district where the witness resides or 
is regularly employed, or, if the witness neither resides nor is 
regularly employed in a Federal judicial district, where the witness is 
at the time of the deposition. This paragraph does not preclude the 
taking of a discovery deposition of a foreign party by any other 
procedure provided by paragraph (c)(1) of this section.
    (d) Interrogatories. 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. 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 (f) of this section.
    (e) Requests for production. The total number of requests for 
production which a party may serve upon another party pursuant to Rule 
34 of the Federal Rules of Civil Procedure, in a proceeding, shall not 
exceed seventy-five, counting subparts. If a party upon which requests 
have been served believes that the number of requests 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 responses and specific objections to the requests, 
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 requests 
which together are said to exceed the limitation, and must otherwise 
comply with the requirements of paragraph (f) of this section. The 
time, place, and manner for production of documents, electronically 
stored information, and tangible things shall comport with the 
provisions of Rule 34 of the Federal Rules of Civil Procedure, or be 
made pursuant to agreement of the parties, or where and in the manner 
which the Trademark Trial and Appeal Board, upon motion, orders.
    (f) 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, 
electronically stored information, or tangible 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 must be filed within thirty days after the 
deadline therefor and include a copy of the disclosure(s), if any, and 
a motion to compel an 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 deadline for pretrial disclosures for the first 
testimony period as originally set or as reset. A motion to compel 
discovery shall include a copy of the request for designation of a 
witness 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

[[Page 19315]]

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, electronically stored information, or tangible 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 showing 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 to compel 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. If discovery has closed, however, the parties need not make 
pretrial disclosures until directed to do so by the Board.
    (g) Motion for a protective order. Upon motion by a party obligated 
to make 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 (A) 
through (H), inclusive, of Rule 26(c)(1) 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.
    (h) 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 (h)(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 (h)(1) of this section.
    (i) Requests for admission. The total number of requests for 
admission which a party may serve upon another party pursuant to Rule 
36 of the Federal Rules of Civil Procedure, in a proceeding, shall not 
exceed seventy-five, counting subparts. If a party upon which requests 
for admission have been served believes that the number of requests for 
admission 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 requests for admission, serve a general objection on the ground 
of their excessive number. However, independent of this limit, a party 
may make one comprehensive request for admission of any adverse party 
that has produced documents for an admission authenticating such 
documents, or specifying which documents cannot be authenticated.
    (1) Any motion by a party to determine the sufficiency of an answer 
or objection, including testing the sufficiency of a general objection 
on the ground of excessive number, to a request made by that party for 
an admission must be filed prior to the deadline for pretrial 
disclosures for the first testimony period, as originally set or as 
reset. The motion shall include a copy of the request for admission and 
any exhibits thereto and of the answer or objection. The motion must be 
supported by a written statement from the moving party showing that 
such party or the attorney therefor has made a good faith effort, by 
conference or correspondence, to resolve with the other party or the 
attorney therefor the issues presented in the motion and has been 
unable to reach agreement. If issues raised in the motion are 
subsequently resolved by agreement of the parties, the moving party 
should inform the Board in writing of the issues in the motion which no 
longer require adjudication.
    (2) When a party files a motion to determine the sufficiency of an 
answer or objection to a request for an admission, 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 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. If discovery has closed, however, the 
parties need not make pretrial disclosures until directed to do so by 
the Board.
    (j) 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 a telephone 
conference would be beneficial, the Board may, upon its own initiative 
or upon request made by one or both of the parties, schedule a 
telephone conference.
    (2) Whenever it appears to the Trademark Trial and Appeal Board 
that

[[Page 19316]]

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, direct that the parties and/or their attorneys meet with 
the Board for a disclosure, discovery or pretrial conference on such 
terms as the Board may order.
    (3) Parties may not make a recording of the conferences referenced 
in paragraphs (j)(1) and (j)(2) of this section.
    (k) Use of discovery deposition, answer to interrogatory, admission 
or written disclosure. (1) The discovery deposition of a party or of 
anyone who at the time of taking the deposition was an officer, 
director or managing agent of a party, or a person designated by a 
party pursuant to Rule 30(b)(6) or Rule 31(a) of the Federal Rules of 
Civil Procedure, may be offered in evidence by an adverse party.
    (2) Except as provided in paragraph (k)(1) of this section, the 
discovery deposition of a witness, whether or not a party, shall not be 
offered in evidence unless the person whose deposition was taken is, 
during the testimony period of the party offering the deposition, dead; 
or out of the United States (unless it appears that the absence of the 
witness was procured by the party offering the deposition); or unable 
to testify because of age, illness, infirmity, or imprisonment; or 
cannot be served with a subpoena to compel attendance at a testimonial 
deposition; or there is a stipulation by the parties; or upon a showing 
that such exceptional circumstances exist as to make it desirable, in 
the interest of justice, to allow the deposition to be used. The use of 
a discovery deposition by any party under this paragraph will be 
allowed only by stipulation of the parties approved by the Trademark 
Trial and Appeal Board, or by order of the Board on motion, which shall 
be filed when the party makes its pretrial disclosures, unless the 
motion is based upon a claim that such exceptional circumstances exist 
as to make it desirable, in the interest of justice, to allow the 
deposition to be used, even though such deadline has passed, in which 
case the motion shall be filed promptly after the circumstances claimed 
to justify use of the deposition became known.
    (3)(i) A discovery deposition, an answer to an interrogatory, an 
admission to a request for admission, or a written initial disclosure, 
which may be offered in evidence under the provisions of paragraph (k) 
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 initial disclosure, together with a notice of 
reliance in accordance with Sec.  2.122(g). 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), or the party has obtained an admission or 
stipulation from the producing party that authenticates the documents.
    (4) If only part of a discovery deposition is submitted and made 
part of the record by a party, an adverse party may introduce under a 
notice of reliance any other part of the deposition which should in 
fairness be considered so as to make not misleading what was offered by 
the submitting party. A notice of reliance filed by an adverse party 
must be supported by a written statement explaining why the adverse 
party needs to rely upon each additional part listed in the adverse 
party's notice, failing which the Board, in its discretion, may refuse 
to consider the additional parts.
    (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 (k) 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, or an answer to an interrogatory, or an admission, or an 
authenticated produced document has been made of record by one party in 
accordance with the provisions of paragraph (k)(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
21. Amend Sec.  2.121 by revising the heading and paragraphs (a), (c) 
through (e) to read as follows:


Sec.  2.121  Assignment of times for taking testimony and presenting 
evidence.

    (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 and presenting 
evidence (``testimony period''). No testimony shall be taken or 
evidence presented 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

[[Page 19317]]

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. 
The resetting of a party's testimony period will result in the 
rescheduling of the remaining pretrial disclosure deadlines without 
action by any party.
* * * * *
    (c) A testimony period which is solely for rebuttal will be set for 
fifteen days. All other testimony periods will be set for thirty days. 
The periods may be shortened or extended by stipulation of the parties 
approved by the Trademark Trial and Appeal Board, or may be extended 
upon motion granted by the Board, or by order of the Board. If a motion 
for an extension is denied, the testimony periods and their associated 
pretrial disclosure deadlines may remain as set.
    (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 through ESTTA, with the relevant dates set forth and an 
express statement that all parties agree to the new dates.
    (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. The testimony of a 
witness may be taken upon oral examination and transcribed, or 
presented in the form of an affidavit or declaration, as provided in 
Sec.  2.123. 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. A party may move to quash a noticed testimony 
deposition of a witness not identified or improperly identified in 
pretrial disclosures before the deposition. When testimony has been 
presented by affidavit or declaration, but was not covered by an 
earlier pretrial disclosure, the remedy for any adverse party is the 
prompt filing of a motion to strike, as provided in Sec. Sec.  2.123 
and 2.124.
0
22. Amend Sec.  2.122 by revising paragraphs (a) through (e), and 
addingparagraph (g), to read as follows:


Sec.  2.122  Matters in evidence.

    (a) Applicable Rules. Unless the parties otherwise stipulate, the 
rules of evidence for proceedings before the Trademark Trial and Appeal 
Board are the Federal Rules of Evidence, the relevant provisions of the 
Federal Rules of Civil Procedure, the relevant provisions of Title 28 
of the United States Code, and the provisions of this Part of Title 37 
of the Code of Federal Regulations. When evidence has been made of 
record by one party in accordance with these rules, it may be referred 
to by any party for any purpose permitted by the Federal Rules of 
Evidence.
    (b) Application and registration files. (1) The file of each 
application or registration specified in a notice of interference, of 
each application or registration specified in the notice of a 
concurrent use registration proceeding, of the application against 
which a notice of opposition is filed, or of each registration against 
which a petition or counterclaim for cancellation is filed forms part 
of the record of the proceeding without any action by the parties and 
reference may be made to the file for any relevant and competent 
purpose.
    (2) The allegation in an application for registration, or in a 
registration, of a date of use is not evidence on behalf of the 
applicant or registrant; a date of use of a mark must be established by 
competent evidence. Specimens in the file of an application for 
registration, or in the file of a registration, are not evidence on 
behalf of the applicant or registrant unless identified and introduced 
in evidence as exhibits during the period for the taking of testimony. 
Statements made in an affidavit or declaration in the file of an 
application for registration, or in the file of a registration, are not 
evidence on behalf of the applicant or registrant and must be 
established by competent evidence.
    (c) Exhibits to pleadings. Except as provided in paragraph (d)(1) 
of this section, an exhibit attached to a pleading is not evidence on 
behalf of the party to whose pleading the exhibit is attached, and must 
be identified and introduced in evidence as an exhibit during the 
period for the taking of testimony.
    (d) Registrations. (1) A registration of the opposer or petitioner 
pleaded in an opposition or petition to cancel will be received in 
evidence and made part of the record if the opposition or petition is 
accompanied by an original or photocopy of the registration prepared 
and issued by the 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 Office 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).
    (2) A registration owned by any party to a proceeding may be made 
of record in the proceeding by that party by appropriate identification 
and introduction during the taking of testimony or by filing a notice 
of reliance in accordance with paragraph (g) of this section, which 
shall be accompanied by a copy (original or photocopy) of the 
registration prepared and issued by the 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 
Office showing the current status and title of the registration. The 
notice of reliance shall be filed during the testimony period of the 
party that files the notice.
    (e) Printed publications and official records. (1) Printed 
publications, such as books and periodicals, available to the general 
public in libraries or of general circulation among members of the 
public or that segment of the public which is relevant in a particular 
proceeding, and official records, if the publication or official record 
is competent evidence and relevant to an issue, may be introduced in 
evidence by filing a notice of reliance on the material being offered 
in accordance with paragraph (g) of this section. The notice

[[Page 19318]]

of reliance shall specify the printed publication (including 
information sufficient to identify the source and the date of the 
publication) or the official record and the pages to be read; and be 
accompanied by the official record or a copy thereof whose authenticity 
is established under the Federal Rules of Evidence, or by the printed 
publication or a copy of the relevant portion thereof. A copy of an 
official record of the Office need not be certified to be offered in 
evidence.
    (2) Internet materials may be admitted into evidence under a notice 
of reliance in accordance with paragraph (g) of this section, in the 
same manner as a printed publication in general circulation, so long as 
the date the internet materials were accessed and their source (e.g., 
URL) are provided.
* * * * *
    (g) Notices of reliance. The types of evidence admissible by notice 
of reliance are identified in paragraphs (d)(2), (e)(1), and (e)(2) of 
this section and Sec.  2.120(k). A notice of reliance shall be filed 
during the testimony period of the party that files the notice. For all 
evidence offered by notice of reliance, the notice must indicate 
generally the relevance of the evidence and associate it with one or 
more issues in the proceeding. Failure to identify the relevance of the 
evidence, or associate it with issues in the proceeding, with 
sufficient specificity is a procedural defect that can be cured by the 
offering party within the time set by Board order.
0
23. Amend Sec.  2.123 by revising paragraphs (a) through (c), (e) 
through (k), and removing paragraph (l) to read as follows:


Sec.  2.123  Trial testimony in inter partes cases.

    (a)(1) The testimony of witnesses in inter partes cases may be 
submitted in the form of an affidavit or a declaration pursuant to 
Sec.  2.20, filed during the proffering party's testimony period, 
subject to the right of any adverse party to elect to take and bear the 
expense of oral cross-examination of that witness as provided under 
paragraph (c) of this section if such witness is within the 
jurisdiction of the United States, or conduct cross-examination by 
written questions as provided in Sec.  2.124 if such witness is outside 
the jurisdiction of the United States, and the offering party must make 
that witness available; or taken by deposition upon oral examination as 
provided by this section; or by deposition upon written questions as 
provided by Sec.  2.124.
    (2) A testimonial deposition taken in a foreign country shall be 
taken by deposition upon written questions as provided by Sec.  2.124, 
unless the Board, upon motion for good cause, orders that the 
deposition be taken by oral examination or by affidavit or declaration, 
subject to the right of any adverse party to elect to take and bear the 
expense of cross-examination by written questions of that witness, or 
the parties so stipulate. If a party serves notice of the taking of a 
testimonial deposition upon written questions of a witness who is, or 
will be at the time of the deposition, present within the United States 
or any territory which is under the control and jurisdiction of the 
United States, any adverse party may, within twenty days from the date 
of service of the notice, file a motion with the Trademark Trial and 
Appeal Board, for good cause, for an order that the deposition be taken 
by oral examination. The proffering party must inform every adverse 
party when it knows that such witness will be within the jurisdiction 
of the United States during such party's testimony period.
    (b) Stipulations. If the parties so stipulate in writing, 
depositions may be taken before any person authorized to administer 
oaths, at any place, upon any notice, and in any manner, and when so 
taken may be used like other depositions. The parties may stipulate in 
writing what a particular witness would testify to if called; or any 
relevant facts in the case may be stipulated in writing.
    (c) Notice of examination of witnesses. Before the oral depositions 
of witnesses shall be taken by a party, due notice in writing shall be 
given to the adverse party or parties, as provided in Sec.  2.119(b), 
of the time when and place where the depositions will be taken, of the 
cause or matter in which they are to be used, and the name and address 
of each witness to be examined. Depositions may be noticed for any 
reasonable time and place in the United States. A deposition may not be 
noticed for a place in a foreign country except as provided in 
paragraph (a)(2) of this section. No party shall take depositions in 
more than one place at the same time, nor so nearly at the same time 
that reasonable opportunity for travel from one place of examination to 
the other is not available. When a party elects to take oral cross-
examination of an affiant or declarant, the notice of such election 
must be served on the adverse party and a copy filed with the Board 
within 10 days from the date of service of the affidavit or declaration 
and completed within 20 days from the date of service of the notice of 
election. Upon motion for good cause by any party, or upon its own 
initiative, the Board may extend the periods for electing and taking 
oral cross-examination. When such election has been made but cannot be 
completed within that testimony period, the Board, after the close of 
that testimony period, shall suspend or reschedule other proceedings in 
the matter to allow for the orderly completion of the oral cross-
examination(s).
* * * * *
    (e) Examination of witnesses. (1) Each witness before providing 
oral testimony shall be duly sworn according to law by the officer 
before whom the deposition is to be taken. Where oral depositions are 
taken, every adverse party shall have a full opportunity to cross-
examine each witness. When testimony is proffered by affidavit or 
declaration, every adverse party will have the right to elect oral 
cross-examination of any witness within the jurisdiction of the United 
States. For examination of witnesses outside the jurisdiction of the 
United States, see Sec.  2.124.
    (2) The deposition shall be taken in answer to questions, with the 
questions and answers recorded in their regular order by the officer, 
or by some other person (who shall be subject to the provisions of Rule 
28 of the Federal Rules of Civil Procedure) in the presence of the 
officer except when the officer's presence is waived on the record by 
agreement of the parties. The testimony shall be recorded and 
transcribed, unless the parties present agree otherwise. Exhibits which 
are marked and identified at the deposition will be deemed to have been 
offered into evidence, without any formal offer thereof, unless the 
intention of the party marking the exhibits is clearly expressed to the 
contrary.
    (3) 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.
    (i) 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).
    (ii) A motion to strike the testimony of a witness for lack of 
proper or

[[Page 19319]]

adequate notice of examination must request the exclusion of the entire 
testimony of that witness and not only a part of that testimony.
    (4) All objections made at the time of an oral examination to the 
qualifications of the officer taking the deposition, or to the manner 
of taking it, or to the evidence presented, or to the conduct of any 
party, and any other objection to the proceedings, shall be noted by 
the officer upon the deposition. Evidence objected to shall be taken 
subject to the objections.
    (5) When the oral deposition has been transcribed, the deposition 
transcript shall be carefully read over by the witness or by the 
officer to the witness, and shall then be signed by the witness in the 
presence of any officer authorized to administer oaths unless the 
reading and the signature be waived on the record by agreement of all 
parties.
    (f) Certification and filing of deposition.
    (1) The officer shall annex to the deposition his or her 
certificate showing:
    (i) Due administration of the oath by the officer to the witness 
before the commencement of his or her deposition;
    (ii) The name of the person by whom the deposition was taken down, 
and whether, if not taken down by the officer, it was taken down in his 
or her presence;
    (iii) The presence or absence of the adverse party;
    (iv) The place, day, and hour of commencing and taking the 
deposition;
    (v) The fact that the officer was not disqualified as specified in 
Rule 28 of the Federal Rules of Civil Procedure.
    (2) If any of the foregoing requirements in paragraph (f)(1) of 
this section are waived, the certificate shall so state. The officer 
shall sign the certificate and affix thereto his or her seal of office, 
if he or she has such a seal. The party taking the deposition, or its 
attorney or other authorized representative, shall then promptly file 
the transcript and exhibits in electronic form using ESTTA. If the 
weight or bulk of an exhibit shall exclude it from such filing or 
prevent its uploading to ESTTA, it shall be transmitted by the party 
taking the deposition, or its attorney or other authorized 
representative, in a separate package marked and addressed as provided 
in this section, including an explanation as to why it could not be 
submitted electronically.
    (g) Form of deposition. (1) The pages of each deposition must be 
numbered consecutively, and the name of the witness plainly and 
conspicuously written at the top of each page. A deposition must be in 
written form. The questions propounded to each witness must be 
consecutively numbered unless the pages have numbered lines. Each 
question must be followed by its answer. The deposition transcript must 
be submitted in full-sized format (one page per sheet), not condensed 
(multiple pages per sheet).
    (2) Exhibits must be numbered or lettered consecutively and each 
must be marked with the number and title of the case and the name of 
the party offering the exhibit. Entry and consideration may be refused 
to improperly marked exhibits.
    (3) Each deposition must contain a word index and an index of the 
names of the witnesses, giving the pages where the words appear in the 
deposition and where witness examination and cross-examination begin, 
and an index of the exhibits, briefly describing their nature and 
giving the pages at which they are introduced and offered in evidence.
    (h) Depositions must be filed. All depositions which are taken must 
be duly filed in the Office. On refusal to file, the Office at its 
discretion will not further hear or consider the contestant with whom 
the refusal lies; and the Office may, at its discretion, receive and 
consider a copy of the withheld deposition, attested by such evidence 
as is procurable.
    (i) Effect of errors and irregularities in depositions. Rule 
32(d)(1), (2), and (3)(A) and (B) of the Federal Rules of Civil 
Procedure shall apply to errors and irregularities in depositions. 
Notice will not be taken of merely formal or technical objections which 
shall not appear to have wrought a substantial injury to the party 
raising them; and in case of such injury it must be made to appear that 
the objection was raised at the time specified in said rule.
    (j) Objections to admissibility. Subject to the provisions of 
paragraph (i) of this section, objection may be made to receiving in 
evidence any declaration, affidavit, or deposition, or part thereof, or 
any other evidence, for any reason which would require the exclusion of 
the evidence from consideration. Objections to the competency of a 
witness or to the competency, relevancy, or materiality of testimony 
must be raised at the time specified in Rule 32(d)(3)(A) of the Federal 
Rules of Civil Procedure. Such objections may not be considered until 
final hearing.
    (k) Evidence not considered. Evidence not obtained and filed in 
compliance with these sections will not be considered.
0
24. Amend Sec.  2.124 by revising paragraphs (b)(2), (d)(1), and (f), 
and adding paragraphs (b)(3), (d)(3) to read as follows:


Sec.  2.124  Depositions upon written questions.

* * * * *
    (b)(1) * * *
    (2) A party desiring to take a discovery deposition upon written 
questions shall serve notice thereof upon each adverse party and shall 
file a copy of the notice, but not copies of the questions, with the 
Board. The notice shall state the name and address, if known, of the 
person whose deposition is to be taken. If the name of the person is 
not known, a general description sufficient to identify the witness or 
the particular class or group to which he or she belongs shall be 
stated in the notice, and the party from whom the discovery deposition 
is to be taken shall designate one or more persons to be deposed in the 
same manner as is provided by Rule 30(b)(6) of the Federal Rules of 
Civil Procedure.
    (3) A party desiring to take cross-examination, by written 
questions, of a witness who has provided testimony by affidavit or 
declaration shall serve notice thereof upon each adverse party and 
shall file a copy of the notice, but not copies of the questions, with 
the Board.
* * * * *
    (d)(1) Every notice served on any adverse party under the 
provisions of paragraph (b) of this section, for the taking of direct 
testimony, shall be accompanied by the written questions to be 
propounded on behalf of the party who proposes to take the deposition. 
Every notice served on any adverse party under the provisions of 
paragraph (b)(3) of this section, for the taking of cross-examination, 
shall be accompanied by the written questions to be propounded on 
behalf of the party who proposes to take the cross-examination. Within 
twenty days from the date of service of the notice of taking direct 
testimony, any adverse party may serve cross questions upon the party 
who proposes to take the deposition. Any party who serves cross 
questions, whether in response to direct examination questions or under 
paragraph (b)(3) of this section, shall also serve every other adverse 
party. Within ten days from the date of service of the cross questions, 
the party who proposes to take the deposition, or who earlier offered 
testimony of the witness by affidavit or declaration, may serve 
redirect questions on every adverse party. Within ten days from the 
date of service of the redirect questions, any party who served cross 
questions may serve recross questions upon the party

[[Page 19320]]

who proposes to take the deposition; any party who serves recross 
questions shall also serve every other adverse party. Written 
objections to questions may be served on a party propounding questions; 
any party who objects shall serve a copy of the objections on every 
other adverse party. In response to objections, substitute questions 
may be served on the objecting party within ten days of the date of 
service of the objections; substitute questions shall be served on 
every other adverse party.
* * * * *
    (3) Service of written questions, responses, and cross-examination 
questions shall be in accordance with Sec.  2.119(b).
* * * * *
    (f) The party who took the deposition shall promptly serve a copy 
of the transcript, copies of documentary exhibits, and duplicates or 
photographs of physical exhibits on every adverse party. It is the 
responsibility of the party who takes the deposition to assure that the 
transcript is correct (see Sec.  2.125(b)). If the deposition is a 
discovery deposition, it may be made of record as provided by Sec.  
2.120(k). If the deposition is a testimonial deposition, the original, 
together with copies of documentary exhibits and duplicates or 
photographs of physical exhibits, shall be filed promptly with the 
Trademark Trial and Appeal Board.
* * * * *
0
25. Revise Sec.  2.125 to read as follows:


Sec.  2.125  Filing and service of testimony.

    (a) One copy of the declaration or affidavit prepared in accordance 
with Sec.  2.123, together with copies of documentary exhibits and 
duplicates or photographs of physical exhibits, shall be served on each 
adverse party at the time the declaration or affidavit is submitted to 
the Trademark Trial and Appeal Board during the assigned testimony 
period.
    (b) One copy of the transcript of each testimony deposition taken 
in accordance with Sec. Sec.  2.123 or 2.124, together with copies of 
documentary exhibits and duplicates or photographs of physical 
exhibits, shall be served on each adverse party within thirty days 
after completion of the taking of that testimony. If the transcript 
with exhibits is not served on each adverse party within thirty days or 
within an extension of time for the purpose, any adverse party which 
was not served may have remedy by way of a motion to the Trademark 
Trial and Appeal Board to reset such adverse party's testimony and/or 
briefing periods, as may be appropriate. If the deposing party fails to 
serve a copy of the transcript with exhibits on an adverse party after 
having been ordered to do so by the Board, the Board, in its 
discretion, may strike the deposition, or enter judgment as by default 
against the deposing party, or take any such other action as may be 
deemed appropriate.
    (c) The party who takes testimony is responsible for having all 
typographical errors in the transcript and all errors of arrangement, 
indexing and form of the transcript corrected, on notice to each 
adverse party, prior to the filing of one certified transcript with the 
Trademark Trial and Appeal Board. The party who takes testimony is 
responsible for serving on each adverse party one copy of the corrected 
transcript or, if reasonably feasible, corrected pages to be inserted 
into the transcript previously served.
    (d) One certified transcript and exhibits shall be filed with the 
Trademark Trial and Appeal Board. Notice of such filing shall be served 
on each adverse party and a copy of each notice shall be filed with the 
Board.
    (e) Each transcript shall comply with Sec.  2.123(g) with respect 
to arrangement, indexing and form.
    (f) Upon motion by any party, for good cause, the Trademark Trial 
and Appeal Board may order that any part of an affidavit or declaration 
or a deposition transcript or any exhibits that directly disclose any 
trade secret or other confidential research, development, or commercial 
information may be filed under seal and kept confidential under the 
provisions of Sec.  2.27(e). If any party or any attorney or agent of a 
party fails to comply with an order made under this paragraph, the 
Board may impose any of the sanctions authorized by Sec.  2.120(h).
0
26. Revise Sec.  2.126 to read as follows:


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

    (a) Submissions shall be made to the Trademark Trial and Appeal 
Board via ESTTA.
    (1) Text in an electronic submission must be filed in at least 12-
point type and double-spaced.
    (2) Exhibits pertaining to an electronic submission must be made 
electronically as an attachment to the submission and must be clear and 
legible.
    (b) In the event that ESTTA is unavailable due to technical 
problems, or when extraordinary circumstances are present, submissions 
may be filed in paper form. Submissions in paper form must be 
accompanied by a Petition to the Director under Sec.  2.146(a)(5), with 
the fees therefor and the showing required under this paragraph. A 
paper submission, including exhibits and depositions, must meet the 
following requirements:
    (1) A paper submission must be printed in at least 12-point type 
and double-spaced, with text on one side only of each sheet;
    (2) A paper submission must be 8 to 8.5 inches (20.3 to 21.6 cm.) 
wide and 11 to 11.69 inches (27.9 to 29.7 cm.) long, and contain no 
tabs or other such devices extending beyond the edges of the paper;
    (3) If a paper submission contains dividers, the dividers must not 
have any extruding tabs or other devices, and must be on the same size 
and weight paper as the submission;
    (4) A paper submission must not be stapled or bound;
    (5) All pages of a paper submission must be numbered and exhibits 
shall be identified in the manner prescribed in Sec.  2.123(g)(2);
    (6) Exhibits pertaining to a paper submission must be filed on 
paper and comply with the requirements for a paper submission.
    (c) To be handled as confidential, submissions to the Trademark 
Trial and Appeal Board that are confidential in whole or part pursuant 
to Sec.  2.125(e) must be submitted using the ``Confidential'' 
selection available in ESTTA or, where appropriate, under a separate 
paper cover. Both the submission and its cover must be marked 
confidential and must identify the case number and the parties. A copy 
of the submission for public viewing with the confidential portions 
redacted must be submitted concurrently.
0
27. Amend Sec.  2.127 by revising paragraphs (a) through (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 twenty 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

[[Page 19321]]

twenty 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 or 
reopened. 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.
    (b) Any request for reconsideration or modification of an order or 
decision issued on a motion must be filed within one month from the 
date thereof. A brief in response must be filed within twenty days from 
the date of service of the request.
    (c) Interlocutory motions, requests, conceded matters, 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 or Paralegal of 
the Board to whom authority to act has been delegated, or by ESTTA. 
Motions disposed of by orders entitled ``By the Trademark Trial and 
Appeal Board'' have the same legal effect as orders by a panel of three 
Administrative Trademark Judges of the Board.
    (d) When any party timely files a potentially dispositive motion, 
including, but not limited to, a motion to dismiss, a motion for 
judgment on the pleadings, or a motion for summary judgment, the case 
is suspended by the Trademark Trial and Appeal Board with respect to 
all matters not germane to the motion and no party should file any 
paper which is not germane to the motion except as otherwise may be 
specified in a Board order. If the case is not disposed of as a result 
of the motion, proceedings will be resumed pursuant to an order of the 
Board when the motion is decided.
    (e)(1) A 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 must be filed 
prior to the deadline for pretrial disclosures for the first testimony 
period, as originally set or as reset. A motion under Rule 56(d) 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(d) will not be extended or reopened. If no motion under 
Rule 56(d) 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 twenty 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 or 
reopened. 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). If any motion for summary judgment is denied, the parties may 
stipulate that the materials submitted with briefs on the motion shall 
be considered at trial as trial evidence, which may be supplemented by 
additional evidence during trial.
0
28. Amend Sec.  2.128 by revising paragraphs (a)(3) and (b) to read as 
follows:


Sec.  2.128  Briefs at final hearing.

    (a)(1) * * *
    (3) When a party in the position of plaintiff fails to file a main 
brief, an order may be issued allowing plaintiff until a set time, not 
less than fifteen days, in which to show cause why the Board should not 
treat such failure as a concession of the case. If plaintiff fails to 
file a response to the order, or files a response indicating that 
plaintiff has lost interest in the case, judgment may be entered 
against plaintiff. If a plaintiff files a response to the order showing 
good cause, but does not have any evidence of record and does not move 
to reopen its testimony period and make a showing of excusable neglect 
sufficient to support such reopening, judgment may be entered against 
plaintiff for failure to take testimony or submit any other evidence.
    (b) Briefs must be submitted in written form and must meet the 
requirements prescribed in Sec.  2.126. Each brief shall contain an 
alphabetical index of cited cases. Without prior leave of the Trademark 
Trial and Appeal Board, a main brief on the case shall not exceed 
fifty-five pages in length in its entirety, including the table of 
contents, index of cases, description of the record, statement of the 
issues, recitation of the facts, argument, and summary; and a reply 
brief shall not exceed twenty-five pages in its entirety. Evidentiary 
objections that may properly be raised in a party's brief on the case 
may instead be raised in an appendix or by way of a separate statement 
of objections. The appendix or separate statement is not included 
within the page limit. Any brief beyond the page limits and any brief 
with attachments outside the stated requirements may not be considered 
by the Board.
0
29. Amend Sec.  2.129 by revising paragraphs (a) through (c) 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 or other statutory members 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. Parties and members of the Board may attend in person or, at the 
discretion of the Board, remotely. 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.
    (b) The date or time of a hearing may be reset, so far as is 
convenient and proper, to meet the wishes of the parties and their 
attorneys or other authorized

[[Page 19322]]

representatives. The Board may, however, deny a request to reset a 
hearing date for lack of good cause or if multiple requests for 
rescheduling have been filed.
    (c) Any request for rehearing or reconsideration or modification of 
a decision issued after final hearing must be filed within one month 
from the date of the decision. A brief in response must be filed within 
twenty days from the date of service of the request. The times 
specified may be extended by order of the Trademark Trial and Appeal 
Board on motion for good cause.
* * * * *
0
30. Revise Sec.  2.130 to read as follows:


Sec.  2.130  New matter suggested by the trademark examining attorney.

    If, while an inter partes proceeding involving an application under 
section 1 or 44 of the Act is pending, facts appear which, in the 
opinion of the examining attorney, render the mark in the application 
unregistrable, the examining attorney should request that the Board 
remand the application. The Board may suspend the proceeding and remand 
the application to the trademark examining attorney for an ex parte 
determination of the question of registrability. A copy of the 
trademark examining attorney's final action will be furnished to the 
parties to the inter partes proceeding following the final 
determination of registrability by the trademark examining attorney or 
the Board on appeal. The Board will consider the application for such 
further inter partes action as may be appropriate.
0
31. Revise Sec.  2.131 read as follows:


Sec.  2.131  Remand after decision in inter partes proceeding.

    If, during an inter partes proceeding involving an application 
under section 1 or 44 of the Act, facts are disclosed which appear to 
render the mark unregistrable, but such matter has not been tried under 
the pleadings as filed by the parties or as they might be deemed to be 
amended under Rule 15(b) of the Federal Rules of Civil Procedure to 
conform to the evidence, the Trademark Trial and Appeal Board, in lieu 
of determining the matter in the decision on the proceeding, may remand 
the application to the trademark examining attorney for reexamination 
in the event the applicant ultimately prevails in the inter partes 
proceeding. Upon remand, the trademark examining attorney shall 
reexamine the application in light of the matter referenced by the 
Board. If, upon reexamination, the trademark examining attorney finally 
refuses registration to the applicant, an appeal may be taken as 
provided by Sec. Sec.  2.141 and 2.142.
0
32. Amend Sec.  2.132 by revising paragraphs (a) and (b) to read as 
follows:


Sec.  2.132  Involuntary dismissal for failure to take testimony.

    (a) If the time for taking testimony by any party in the position 
of plaintiff has expired and it is clear to the Board from the 
proceeding record that such party has not taken testimony or offered 
any other evidence, the Board may grant judgment for the defendant. 
Also, any party in the position of defendant may, without waiving the 
right to offer evidence in the event the motion is denied, move for 
dismissal on the ground of the failure of the plaintiff to prosecute. 
The party in the position of plaintiff shall have twenty days from the 
date of service of the motion to show cause why judgment should not be 
rendered dismissing the case. In the absence of a showing of excusable 
neglect, judgment may be rendered against the party in the position of 
plaintiff. If the motion is denied, testimony periods will be reset for 
the party in the position of defendant and for rebuttal.
    (b) If no evidence other than Office records showing the current 
status and title of plaintiff's pleaded registration(s) is offered by 
any party in the position of plaintiff, any party in the position of 
defendant may, without waiving the right to offer evidence in the event 
the motion is denied, move for dismissal on the ground that upon the 
law and the facts the party in the position of plaintiff has shown no 
right to relief. The party in the position of plaintiff shall have 
twenty days from the date of service of the motion to file a brief in 
response to the motion. The Trademark Trial and Appeal Board may render 
judgment against the party in the position of plaintiff, or the Board 
may decline to render judgment until all testimony periods have passed. 
If judgment is not rendered on the motion to dismiss, testimony periods 
will be reset for the party in the position of defendant and for 
rebuttal.
* * * * *
0
33. Amend Sec.  2.134 by revising paragraph (b) to read as follows:


Sec.  2.134  Surrender or voluntary cancellation of registration.

* * * * *
    (b) After the commencement of a cancellation proceeding, if it 
comes to the attention of the Trademark Trial and Appeal Board that the 
respondent has permitted its involved registration to be cancelled 
under section 8 or section 71 of the Act of 1946, or has failed to 
renew its involved registration under section 9 of the Act of 1946, or 
has allowed its registered extension of protection to expire under 
section 70(b) of the Act of 1946, an order may be issued allowing 
respondent until a set time, not less than fifteen days, in which to 
show cause why such cancellation, failure to renew, or expiration 
should not be deemed to be the equivalent of a cancellation by request 
of respondent without the consent of the adverse party and should not 
result in entry of judgment against respondent as provided by paragraph 
(a) of this section. In the absence of a showing of good and sufficient 
cause, judgment may be entered against respondent as provided by 
paragraph (a) of this section.
0
34. Revise Sec.  2.136 to read as follows:


Sec.  2.136  Status of application on termination of proceeding.

    After the Board has issued its decision in an opposition or 
concurrent use proceeding, and after the time for filing any appeal of 
the decision has expired, or any appeal that was filed has been decided 
and the Board's decision affirmed, the proceeding will be terminated by 
the Board. On termination of an opposition or concurrent use 
proceeding, if the judgment is not adverse to the applicant, the 
application returns to the status it had before the institution of the 
proceeding. If the judgment is adverse to the applicant, the 
application stands refused without further action and all proceedings 
thereon are considered terminated.
0
35. Amend Sec.  2.142 by revising paragraphs (b), (c), (d), (e), and 
(f)(1) through (f)(4) and (f)(6) to read as follows:


Sec.  2.142  Time and manner of ex parte appeals.

* * * * *
    (b)(1) The brief of appellant shall be filed within sixty days from 
the date of appeal. If the brief is not filed within the time allowed, 
the appeal may be dismissed. The examining attorney shall, within sixty 
days after the brief of appellant is sent to the examining attorney, 
file with the Trademark Trial and Appeal Board a written brief 
answering the brief of appellant and shall mail a copy of the brief to 
the appellant. The appellant may file a reply brief within twenty days 
from the date of mailing of the brief of the examining attorney.
    (2) Briefs must be submitted in written form and must meet the 
requirements prescribed in Sec.  2.126. Each brief shall contain an 
alphabetical index

[[Page 19323]]

of cited cases. Without prior leave of the Trademark Trial and Appeal 
Board, a brief shall not exceed twenty-five pages in length in its 
entirety, including the table of contents, index of cases, description 
of the record, statement of the issues, recitation of the facts, 
argument, and summary. A reply brief from the appellant, if any, shall 
not exceed ten pages in length in its entirety. Unless authorized by 
the Board, no further briefs are permitted.
    (3) Citation to evidence in briefs should be to the documents in 
the electronic application record by date, the name of the paper under 
which the evidence was submitted, and the page number in the electronic 
record.
    (c) All requirements made by the examining attorney and not the 
subject of appeal shall be complied with prior to the filing of an 
appeal, and the statement of issues in the brief should note such 
compliance.
    (d) Evidence shall not be submitted after the filing of a notice of 
appeal. If the appellant or the examining attorney desires to introduce 
additional evidence after an appeal is filed, the appellant or the 
examining attorney must submit a request to the Board to suspend the 
appeal and to remand the application for further examination.
    (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 or other statutory members 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. Appellants, examining attorneys, and members 
of the Board may attend in person or, at the discretion of the Board, 
remotely.
    (2) If the appellant requests an oral argument, the examining 
attorney who issued the refusal of registration or the requirement from 
which the appeal is taken, or in lieu thereof another examining 
attorney as designated by a supervisory or managing attorney, shall 
present an oral argument. If no request for an oral hearing is made by 
the appellant, the appeal will be decided on the record and briefs.
    (3) Oral argument will be limited to twenty minutes by the 
appellant and ten minutes by the examining attorney. The appellant may 
reserve part of the time allowed for oral argument to present a 
rebuttal argument.
    (f)(1) If, during an appeal from a refusal of registration, it 
appears to the Trademark Trial and Appeal Board that an issue not 
previously raised may render the mark of the appellant unregistrable, 
the Board may suspend the appeal and remand the application to the 
examining attorney for further examination to be completed within the 
time set by the Board.
    (2) If the further examination does not result in an additional 
ground for refusal of registration, the examining attorney shall 
promptly return the application to the Board, for resumption of the 
appeal, with a written statement that further examination did not 
result in an additional ground for refusal of registration.
    (3) If the further examination does result in an additional ground 
for refusal of registration, the examining attorney and appellant shall 
proceed as provided by Sec. Sec.  2.61, 2.62, and 2.63. If the ground 
for refusal is made final, the examining attorney shall return the 
application to the Board, which shall thereupon issue an order allowing 
the appellant sixty days from the date of the order to file a 
supplemental brief limited to the additional ground for the refusal of 
registration. If the supplemental brief is not filed by the appellant 
within the time allowed, the appeal may be dismissed.
    (4) If the supplemental brief of the appellant is filed, the 
examining attorney shall, within sixty days after the supplemental 
brief of the appellant is sent to the examining attorney, file with the 
Board a written brief answering the supplemental brief of appellant and 
shall mail a copy of the brief to the appellant. The appellant may file 
a reply brief within twenty days from the date of mailing of the brief 
of the examining attorney.
* * * * *
    (6) If, during an appeal from a refusal of registration, it appears 
to the examining attorney that an issue not involved in the appeal may 
render the mark of the appellant unregistrable, the examining attorney 
may, by written request, ask the Board to suspend the appeal and to 
remand the application to the examining attorney for further 
examination. If the request is granted, the examining attorney and 
appellant shall proceed as provided by Sec. Sec.  2.61, 2.62, and 2.63. 
After the additional ground for refusal of registration has been 
withdrawn or made final, the examining attorney shall return the 
application to the Board, which shall resume proceedings in the appeal 
and take further appropriate action with respect thereto.
* * * * *
0
36. Add and reserve Sec.  2.143 to read as follows:


Sec.  2.143  [Reserved]

0
37. Revise Sec.  2.145 to read as follows:


Sec.  2.145  Appeal to court and civil action.

    (a) For an Appeal to the United States Court of Appeals for the 
Federal Circuit under section 21(a) of the Act. (1) An applicant for 
registration, or any party to an interference, opposition, or 
cancellation proceeding or any party to an application to register as a 
concurrent user, hereinafter referred to as inter partes proceedings, 
who is dissatisfied with the decision of the Trademark Trial and Appeal 
Board and any registrant who has filed an affidavit or declaration 
under section 8 or section 71 of the Act or who has filed an 
application for renewal and is dissatisfied with the decision of the 
Director (Sec. Sec.  2.165, 2.184), may appeal to the United States 
Court of Appeals for the Federal Circuit. It is unnecessary to request 
reconsideration by the Board before filing any such appeal; however, a 
party requesting reconsideration must do so before filing a notice of 
appeal.
    (2) In all appeals under section 21(a), the appellant must take the 
following steps:
    (i) File the notice of appeal with the Director, addressed to the 
Office of the General Counsel, as provided in Sec.  104.2 of this 
chapter;
    (ii) File a copy of the notice of appeal with the Trademark Trial 
and Appeal Board via ESTTA; and
    (iii) Comply with the requirements of the Federal Rules of 
Appellate Procedure and Rules for the United States Court of Appeals 
for the Federal Circuit, including serving the requisite number of 
copies on the Court and paying the requisite fee for the appeal.
    (3) Additional requirements. (i) The notice of appeal shall specify 
the party or parties taking the appeal and shall designate the decision 
or part thereof appealed from.
    (ii) In inter partes proceedings, the notice of appeal must be 
served as provided in Sec.  2.119.
    (b) For a notice of election under section 21(a)(1) to proceed 
under section 21(b) of the Act. (1) Any applicant or registrant in an 
ex parte case who takes an appeal to the United States Court of Appeals 
for the Federal Circuit waives any right to proceed under section 21(b) 
of the Act.
    (2) If an adverse party to an appeal taken to the United States 
Court of Appeals for the Federal Circuit by a

[[Page 19324]]

defeated party in an inter partes proceeding elects to have all further 
review proceedings conducted under section 21(b) of the Act, that party 
must take the following steps:
    (i) File a notice of election with the Director, addressed to the 
Office of the General Counsel, as provided in Sec.  104.2 of this 
chapter;
    (ii) File a copy of the notice of election with the Trademark Trial 
and Appeal Board via ESTTA; and
    (iii) Serve the notice of election as provided in Sec.  2.119.
    (c) For a civil action under section 21(b) of the Act. (1) Any 
person who may appeal to the United States Court of Appeals for the 
Federal Circuit (paragraph (a) of this section), may have remedy by 
civil action under section 21(b) of the Act. It is unnecessary to 
request reconsideration by the Board before filing any such civil 
action; however, a party requesting reconsideration must do so before 
filing a civil action.
    (2) Any applicant or registrant in an ex parte case who seeks 
remedy by civil action under section 21(b) of the Act must serve the 
summons and complaint pursuant to Rule 4(i) of the Federal Rules of 
Civil Procedure with the copy to the Director addressed to the Office 
of the General Counsel as provided in Sec.  104.2 of this chapter. A 
copy of the complaint must also be filed with the Trademark Trial and 
Appeal Board via ESTTA.
    (3) The party initiating an action for review of a Board decision 
in an inter partes case under section 21(b) of the Act must file notice 
thereof with the Trademark Trial and Appeal Board via ESTTA no later 
than five business days after filing the complaint in the district 
court. The notice must identify the civil action with particularity by 
providing the case name, case number, and court in which it was filed. 
A copy of the complaint may be filed with the notice. Failure to file 
the required notice can result in termination of the Board proceeding 
and further action within the United States Patent and Trademark Office 
consistent with the final Board decision.
    (d) Time for appeal or civil action. (1) For an appeal under 
section 21(a). The notice of appeal filed pursuant to section 21(a) of 
the Act must be filed with the Director no later than sixty-three (63) 
days from the date of the final decision of the Trademark Trial and 
Appeal Board or the Director. Any notice of cross-appeal is controlled 
by Rule 4(a)(3) of the Federal Rules of Appellate Procedure, and any 
other requirement imposed by the Rules of the United States Court of 
Appeals for the Federal Circuit.
    (2) For a notice of election under 21(a)(1) and a civil action 
pursuant to such notice of election. The times for filing a notice of 
election under section 21(a)(1) and for commencing a civil action 
pursuant to a notice of election are governed by section 21(a)(1) of 
the Act.
    (3) For a civil action under section 21(b). A civil action must be 
commenced no later than sixty-three (63) days after the date of the 
final decision of the Trademark Trial and Appeal Board or Director.
    (4) Time computation. (i) If a request for rehearing or 
reconsideration or modification of the Board decision is filed within 
the time specified in Sec. Sec.  2.127(b), 2.129(c) or 2.144, or within 
any extension of time granted thereunder, the time for filing an appeal 
or commencing a civil action shall expire no later than sixty-three 
(63) days after action on the request.
    (ii) Holidays. The times specified in this section in days are 
calendar days. If the last day of time specified for an appeal, notice 
of election, or commencing a civil action falls on a Saturday, Sunday 
or Federal holiday in the District of Columbia, the time is extended to 
the next day which is neither a Saturday, Sunday nor a Federal holiday 
in the District of Columbia pursuant to Sec.  2.196.
    (e) Extension of time. (1) The Director, or the Director's 
designee, may extend the time for filing an appeal, or commencing a 
civil action, upon written request if:
    (i) Requested before the expiration of the period for filing an 
appeal or commencing a civil action, and upon a showing of good cause; 
or
    (ii) Requested after the expiration of the period for filing an 
appeal or commencing a civil action, and upon a showing that the 
failure to act was the result of excusable neglect.
    (2) The request must be filed as provided in Sec.  104.2 of this 
chapter and addressed to the attention of the Office of the Solicitor. 
A copy of the request should also be filed with the Trademark Trial and 
Appeal Board via ESTTA.
0
38. Amend Sec.  2.190 by revising paragraphs (a) through (c) to read as 
follows:


Sec.  2.190  Addresses for trademark correspondence with the United 
States Patent and Trademark Office.

    (a) Trademark correspondence. In general. All trademark-related 
documents filed on paper, except documents sent to the Assignment 
Recordation Branch for recordation; requests for copies of trademark 
documents; and certain documents filed under the Madrid Protocol as 
specified in paragraph (e) of this section, should be addressed to: 
Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451. 
All trademark-related documents may be delivered by hand, during the 
hours the Office is open to receive correspondence, to the Trademark 
Assistance Center, James Madison Building--East Wing, Concourse Level, 
600 Dulany Street, Alexandria, Virginia 22314.
    (b) Electronic trademark documents. An applicant may transmit a 
trademark document through TEAS, at http://www.uspto.gov. Documents 
that relate to proceedings before the Trademark Trial and Appeal Board 
shall be filed directly with the Board electronically through ESTTA, at 
http://estta.uspto.gov.
    (c) Trademark Assignments. Requests to record documents in the 
Assignment Recordation Branch may be filed through the Office's Web 
site, at http://www.uspto.gov. Paper documents and cover sheets to be 
recorded in the Assignment Recordation Branch should be addressed to: 
Mail Stop Assignment Recordation Services, Director of the United 
States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 
22313-1450. See Sec.  3.27 of this chapter.
* * * * *
0
39. Revise Sec.  2.191 to read as follows:


Sec.  2.191  Business to be transacted in writing.

    All business with the Office should be transacted in writing. The 
personal appearance of applicants or their representatives at the 
Office is unnecessary. The action of the Office will be based 
exclusively on the written record. No attention will be paid to any 
alleged oral promise, stipulation, or understanding in relation to 
which there is disagreement or doubt. The Office encourages parties to 
file documents through TEAS wherever possible, or through ESTTA for 
documents in proceedings before the Trademark Trial and Appeal Board.

    Dated: March 18, 2016.
Michelle K. Lee,
Under Secretary of Commerce for Intellectual Property and Director, 
United States Patent and Trademark Office.
[FR Doc. 2016-06672 Filed 4-1-16; 8:45 am]
BILLING CODE 3510-16-P