[Federal Register Volume 81, Number 238 (Monday, December 12, 2016)]
[Rules and Regulations]
[Pages 89382-89383]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2016-29728]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 2

[Docket No. PTO-T-2016-0053]
RIN 0651-AD13


Miscellaneous Changes to Trademark Trial and Appeal Board Rules 
of Practice; Correction

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule; correction.

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SUMMARY: The United States Patent and Trademark Office published in the 
Federal Register on October 7, 2016 a final rule, which will become 
effective on January 14, 2017, revising the Rules of Practice before 
the Trademark Trial and Appeal Board. This document corrects errors in 
certain cross-references, clarifies the manner of testimony taken in a 
foreign country and the process in depositions upon written questions, 
and reincorporates the time frames for cross appeals and cross actions 
in that rule.

DATES: This rule is effective January 14, 2017, and applies to all 
proceedings pending on or after the effective date.

FOR FURTHER INFORMATION CONTACT: Cheryl Butler, Trademark Trial and 
Appeal Board, by email at [email protected], or by telephone at 
(571) 272-4259.

SUPPLEMENTARY INFORMATION: The USPTO issues this final rule to correct 
inadvertent errors in certain cross-references in Sec. Sec.  2.124(f) 
and 2.126(c), to clarify the manner of testimony taken in a foreign 
country in Sec.  2.123(a)(2), to clearly incorporate cross-examination 
in the process of depositions upon written questions in Sec.  
2.124(d)(1), and to reincorporate explicit timing requirements for 
cross-appeals and cross-actions in Sec.  2.145(d)(1) and (3) of its 
October 7, 2016 final rule revising the Trademark Trial and Appeal 
Board Rules of Practice. (81 FR 69950) (published under RIN 0651-AC35).
    The first sentence of Sec.  2.123(a)(2) is clarified to separate 
motions to take depositions upon written questions by oral examination 
from testimony by affidavit or declaration. To implement this 
clarification, the phrase ``A testimonial deposition'' is replaced with 
``Testimony'' and the clause ``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'' is moved to 
clearly delineate it.
    The first sentence of Sec.  2.124(d)(1) should cross reference 
paragraphs (b)(1) and (2) rather than only (b). A paragraph was added 
to Sec.  2.124(b) which operated to renumber that section, and the 
cross reference was not updated. In addition, in the first, third and 
sixth sentences, further clarification was needed to clearly 
incorporate the timing for cross-examination upon written questions of 
testimony by affidavit or declaration.
    The second sentence of Sec.  2.124(f) should cross reference Sec.  
2.125(c) rather than Sec.  2.125(b). A paragraph was added to Sec.  
2.125, which operated to renumber that section, and the cross reference 
was not updated.
    The first sentence of Sec.  2.126(c) should cross reference Sec.  
2.125(f) rather than Sec.  2.125(e). A paragraph was added to Sec.  
2.125, which operated to renumber that section, and the cross reference 
was not updated.
    The October 7, 2016 final rule amended the timing requirements for 
appeals and civil actions, but inadvertently omitted the timing 
requirement for cross-actions from Sec.  2.145(d)(3). Therefore, this 
correction revises the last sentence in Sec.  2.145(d)(3)

[[Page 89383]]

to reincorporate the timing requirement for cross-actions. Also, this 
correction revises Sec.  2.145(d)(1) concerning cross-appeals to have 
consistency between Sec.  2.145(d)(3) and (d)(1).
    This correcting rule may be issued without prior notice and 
opportunity for comment as the corrections are nonsubstantive and being 
implemented to avoid inconsistencies and confusion with the rule issued 
on October 7, 2016. The USPTO corrects the errors as discussed below.
    In FR Doc. 2016-23092, published on October 7, 2016 (81 FR 69950), 
make the following corrections:


Sec.  2.123   [Corrected]

0
1. On page 69981, column 2, in paragraph (a)(2) of Sec.  2.123, the 
first sentence is corrected to read ``Testimony 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 the parties 
so stipulate; 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.''


Sec.  2.124   [Corrected]

0
2. On page 69982, column 3, in paragraph (d)(1) of Sec.  2.124:
0
i. The cross reference to ``paragraph (b)'' is corrected to read 
``paragraphs (b)(1) and (2)'';
0
ii. The term ``direct testimony'' is corrected to read ``direct 
examination'' in both instances;
0
iii. In the third sentence the phrase ``or service of a testimony 
affidavit or declaration,'' is added before the phrase ``any adverse 
party may serve cross questions upon the party who proposes to take the 
deposition''; and
0
iv. In the sixth sentence the phrase ``or who earlier offered testimony 
of the witness by affidavit or declaration'' is added after the phrase 
``any party who served cross questions may serve recross questions upon 
the party who proposes to take the deposition''.

0
3. On page 69983, column 1, in paragraph (f) of Sec.  2.124, the cross 
reference to ``Sec.  2.125(b)'' is corrected to read ``Sec.  
2.125(c)''.


Sec.  2.126  [Corrected]

0
4. On page 69983, column 3, in paragraph (c) of Sec.  2.126, the cross 
reference to ``Sec.  2.125(e)'' is corrected to read ``Sec.  
2.125(f)''.


Sec.  2.145   [Corrected]

0
5. On page 69987, column 2, in paragraph (d)(1) of Sec.  2.145, the 
last sentence is removed and added in its place is ``In inter partes 
cases, the time for filing a notice of cross-appeal expires 14 days 
after service of the notice of appeal or 63 days from the date of the 
decision of the Trademark Trial and Appeal Board or the Director, 
whichever is later.''

0
6. On page 69987, column 2, in paragraph (d)(3) of Sec.  2.145, this 
final sentence is added ``In inter partes cases, the time for filing a 
cross-action expires 14 days after service of the summons and complaint 
or 63 days from the date of the decision of the Trademark Trial and 
Appeal Board or the Director, whichever is later.''

    Dated: December 6, 2016.
Michelle K. Lee,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2016-29728 Filed 12-9-16; 8:45 am]
 BILLING CODE 3510-16-P