01/23/2017 | Elizabeth Lee D’Amore
With the objective of moving towards a fully integrated, paperless system, including promoting efficiency by mandating electronic filing, the United States Patent and Trademark Office (“USPTO”) made several changes to the rules governing cases before the Trademark Trial and Appeal Board (“TTAB”) and implemented a number of new fees for filings in the USPTO. The changes took effect on January 14, 2017.
How trademark owners might be effected depends on their goals. Most of these changes should accelerate proceedings and overall make TTAB proceedings more efficient. However, the accelerated proceedings could increase the costs for parties in some cases by accelerating deadlines and requiring more work earlier in the case. On the other hand, with the additional early charges looming, the accelerated proceedings could also push a case to settlement at an earlier stage.
TTAB Amended Rules
Only Electronic Filings and Service: TTAB now requires electronic filing of all documents in the Electronic System for Trademark Trials and Appeals (“ESTTA”), unless there are extraordinary circumstances such as technical difficulties with the electronic filing system or circumstances such as disaster, extender power outage, or a medical emergency. Permission to file by paper must be requested by petition to the Director.
Service of Complaint: TTAB will now be responsible to serve Notices of Opposition and Petitions to Cancel on the other party by email, if available, or by first-class mail.
Email Service of Other Documents: Service via email is the general rule (answers, motions, discovery) unless the parties agree otherwise. For large documents, the parties may agree to service via a file hosting service, USB drive or other similar services.
Opposing Madrid Protocol Applications: An opposition against an application based on a Madrid extension is limited to those goods, services and grounds set forth in the ESTTA cover sheet that is automatically generated during electronic filing. The ESTTA cover sheet controls regardless of the allegations contained in the Notice of Opposition.
Response Time for Motions and Reply Briefs: Because all papers must be served by email, the 5-day mail rule has been eliminated. Instead, response will be due in 20 days.
Summary Judgment (SJ) Motions: Time for response or filing of motion remains at 30 days, while reply is amended to 20 days as indicated above. SJ motions must be filed before the plaintiff’s deadline for pretrial disclosures (earlier than former deadline of prior to opening of first testimony period).
Suspension Pending Motion: Filing a potentially dispositive motion now automatically suspends the proceeding.
Changes in Discovery Rules and Procedures:
Service of written discovery: All written discovery must be served early enough so that all written discovery responses including document production will be complete by the close of the discovery period. Parties are precluded from stipulating to a later production of documents without approval by the Board of an extension to the discovery cut-off date.
Limits on discovery requests: 75 interrogatories, 75 Requests for Admission and 75 Request for Production.
Trial: Testimony may be taken by affidavit or declaration subject to the right of the adverse party to cross-examine.
Deposition transcripts must be submitted as a single page of transcript per sheet with a word index, instead of the prior four page of transcripts per sheet.
Judicial Review of TTAB Decisions: Time for filing changed to 63 days from Board’s decision.
The changes outlined above reflect the most significant updates to the rules governing practice and filing fees for matters before the USPTO and TTAB.
Fee changes in the USPTO
Section 8 Affidavit/Section 71 Affidavit:
Extensions of Time to File Statement of Use:
Filing an Opposition: increased from $300 to $400 per Class
Petition for Cancellation: increased from $300 to $400 per Class
Ex Parte Appeal: increased from $300 to $400 per Class.
Elizabeth Lee D’Amore, a partner at Lucas & Mercanti LLP, focuses on the preparation and prosecution of patent applications in the biological, chemical, pharmaceutical, biochemical and biotechnological arts as well as on portfolio development and management. She can be reached at +1 (212) 661-8000 ext. 135 or at email@example.com.