A Summary of the New Rules for Litigating Before the TTAB

EDITOR'S NOTE:  After this month's issue of The Intellectual Property Strategist went to press, U.S. District Judge James Cacheris granted a motion by GlaxoSmithKline for a preliminary injunction blocking the U.S. Patent and Trademark Office from implementing the rules set to go into effect on Nov. 1.  For up-to-date information, see http://www.lawjournalnewsletters.com/issues/ljn_patent/8_6/news/149619-1.html

On Aug. 1, 2007, and as reflected in Volume 72 of the Federal Register published on that date, the U.S. Patent and Trademark Office ('USPTO') issued a final rulemaking action titled 'Miscellaneous Changes to Trademark Trial and Appeal Board Rules' (the 'Amendments'). According to this rulemaking action, which modifies a number of provisions within Title 37, Part 2, of the Code of Federal Regulations (the 'Rules'), the effect of these Amendments is fourfold, namely:

1) To require service of complaints or claims on defendants in inter partes proceedings before the Trademark Trial and Appeal Board (the 'Board');

2) To adopt a modified form of the disclosure practices included in the Federal Rules of Civil Procedure;

3) To delete the option of submissions in CD-ROM format; and

4) To clarify the Rules, conform the Rules to current practice, and correct typographical errors.

Certain of the Amendments took effect on Aug. 31, 2007. However, the majority of the Amendments take effect as to inter partes proceedings commenced on or after Nov. 1, 2007. This article summarizes, by effective date, the most significant Amendments affecting Board inter partes proceedings.

Amendments Effective Aug. 31, 2007

The following Amendments took effect on Aug. 31, 2007. Unless otherwise noted, these Amendments took effect both as to proceedings already pending before the Board and as to new proceedings commenced on or after Aug. 31, 2007.

A Protective Order Is Now Applicable in All Proceedings

The Amendments added a new '2.116(g) to the Rules, which provides that the Board's standard protective order is automatically applicable in all inter partes proceedings unless an alternative order is entered either by agreement of the parties or by motion. However, this Amendment makes clear that '[n]o 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 terms of whatever protective order is applicable in the specific proceeding].'

By this Amendment, a protective order of some type is now applicable in all pending Board proceedings. Consequently, parties will no longer be able appropriately to object to discovery requests on the ground that information or documents requested are confidential and will only be disclosed later 'upon entry of a protective order.' Instead, an objecting party must likely explain why the Board's standard protective order is insufficient for the particular circumstances presented, and file a motion seeking entry of a more suitable protective order.

Electronic Notification and Service of Papers May Now Be Accomplished

Sections 2.105(a) and 2.113(a), which pertain to the manner in
which the Board notifies a defendant of the institution of an inter partes proceeding and sets the deadline for the defendant to answer, have now been amended to provide for notification via e-mail. In a similar vein, '2.119(b), which lists various methods by which service of papers may be effected between the parties, has been amended to provide that the parties may agree to electronic service.

CD-ROM Submissions Have Been Eliminated

According to the USPTO, because submissions in CD-ROM format are rare and have presented technical problems, the option to file submissions in CD-ROM form has been eliminated from '2.126. That section has also been amended to clarify that '[e]xhibits pertaining to a paper submission must be filed on paper and comply with the requirements for a paper submission.'

Miscellaneous Additional Amendments

Additional Amendments effective Aug. 31, 2007 include the following:

• Section 2.118 has been amended to provide that in all cases in which notice from the USPTO to any registrant or applicant is returned undelivered, additional notice may be given in the Official Gazette;
• Section 2.120(d)(1) has been amended to provide that the Board must approve any motion or stipulation to exceed the discovery limit of 75 interrogatories, counting subparts;
• Section 2.127(a) has been amended to provide that tables of contents, indices of cases, descriptions of the record, statements of the issues, recitations of the facts, arguments, and summaries all 'count' toward the applicable page limit for motions;
• Section 2.133(a) has been amended to provide that amendments to an application or registration that are the subject of an inter partes proceeding must be approved by the Board, even if made upon consent; and
• Section 2.122(d)(1) has been amended to provide that effective only in proceedings commenced on or after Aug. 31, 2007, a pleaded registration of a plaintiff will be received into evidence and made part of the trial record if the opposition or petition is accompanied by only one original or photocopy (rather than two duplicates) of the certificate of registration or by a current printout from the electronic database records of the USPTO showing the current status and title of the registration.

Amendments Effective to Proceedings on or After Nov. 1, 2007

The following Amendments take effect with respect to all inter partes proceedings commenced on or after Nov. 1, 2007.

Plaintiff Must Attempt to 'Serve' Initial Pleading

Sections 2.101 and 2.113 have been amended to require that the initial pleading must be accompanied by 'proof of service' in order for a plaintiff to receive a filing date for its opposition or cancellation proceeding. A plaintiff must serve a copy of the notice of opposition or petition for cancellation, including all exhibits, on the defendant's attorney of record or, if there is no attorney, on the defendant or on the defendant's domestic representative at the correspondence address of record with the USPTO.

'Service' may be effected by any of the means listed in '2.119 (as amended), which include service by standard U.S. mail, and the USPTO has noted that parties are not required to follow the more stringent Federal Rules of Civil Procedure, or any international convention, regarding service of process.

A plaintiff may comply with these Amendments simply by mailing a copy of its initial pleading to the defendant's address as listed in the USPTO's online TARR and/or Assignment Division records, and including a 'certificate of service' when the plaintiff files its initial pleading. If the service copy is returned as 'undeliverable,' the plaintiff must then notify the Board within 10 days of the receipt of the returned copy, although the plaintiff must also provide the Board, at that time, with any information the plaintiff then possesses about the defendant's current whereabouts.

A 'Modified Disclosure Regime' Is Implemented

Perhaps the most significant Amendments are those reflected in amended ”2.120 and 2.121, which implement what the USPTO calls a 'modified disclosure regime' patterned after Fed. R. Civ. P. 26(a). As discussed more fully below, the principal features of this 'modified disclosure regime' are four new requirements, namely:

1) An initial discovery conference;

2) Initial fact disclosures;

3) Expert witness disclosures before the opening of the testimony periods; and

4) Final pretrial disclosures.

In addition, these Amendments require the Board to modify its initial scheduling order to account for these new requirements.

The Parties Must Conduct an Initial Discovery Conference. New ”2.120(a)(1)-(2) provide for a 'conference of the parties to discuss settlement and to develop a disclosure and discovery plan.' This conference must occur before the discovery period opens, and 'the parties must discuss the subjects set forth in Federal Rule of Civil Procedure 26(f) and any subjects set forth in the Board's institution order.' The USPTO has indicated that '[t]he parties' discovery conference may be in person or by other means.' A Board interlocutory attorney or administrative trademark judge will participate in the conference if a party requests such participation not later than 10 days before the conference deadline. The USPTO has indicated that the parties are not required to file a discovery plan after the conference, but the Amendments provide that sanctions may be sought if a party fails to participate in the conference.

The Parties Must Make Initial Fact Disclosures Before Commencing Discovery. New ”2.120(a)(1)-(3) require the parties to exchange the initial disclosures identified in Fed. R. Civ. P. 26(a)(1)(A) and (B). Thus, before commencing traditional discovery, and absent modification of this requirement either by a stipulation approved by the Board or through a motion granted by the Board, parties must identify persons with discoverable information that they may use to support their claims or defenses, and either identify or produce the documents in their possession, custody, or control that they may use to support their claims or defenses. Such disclosures (but not disclosed documents) will, at trial, be treated similarly to information received through traditional discovery methods such as responses to written discovery requests.

The Board's institution order will set the deadline for making such initial disclosures. It appears that, as a matter of practice, this deadline will be 30 days after the discovery period opens. A party's failure to make timely and/or adequate initial disclosures may be the subject of a motion to compel, which must be filed before the close of the discovery period.

The Parties Must Make Expert Witness Disclosures Before Discovery Closes. In addition to the initial fact disclosures, the Amendments also provide for '[d]isclosure of expert testimony … in the manner and sequence provided in Federal Rule of Civil Procedure 26(a)(2).' This Amendment thus requires service of a detailed report from any testifying expert no later than 30 days before the close of the discovery period. Experts retained solely for purposes of rebuttal must be disclosed within 30 days after the initial expert disclosure has occurred.

If a party retains a testifying expert after the deadline for expert disclosures, the party must promptly file a motion for leave to use expert testimony. Upon a party's disclosure of plans to use expert testimony, whether before or after the deadline for disclosing expert testimony, the Board may issue an order regarding expert discovery and/or setting a deadline for any other party to disclose plans to use a rebuttal expert.

A party's failure to make timely and/or adequate expert disclosures may be the subject of a motion to compel, which must be filed before the close of the discovery period.

The Parties Must Make Pretrial Disclosures of Anticipated Witnesses. Section 2.121(e) has been amended to incorporate certain aspects of the final pretrial disclosure requirements contained in Fed. R. Civ. P. 26(a)(3). These Amendments provide that each party, no later than 15 days before the opening of its testimony period(s), must provide certain identifying information for each witness from whom it intends to take testimony or may take testimony if the need arises, and must provide a general summary or list of the types of documents that may be introduced as exhibits. If a party does not plan to take testimony from any witnesses, it must so state in its pretrial disclosures.

Under amended '2.123(e)(3), if an opposing party's pretrial disclosures are untimely or inadequate as to any witness, a party may cross-examine that witness under protest, while reserving the right to object to the receipt of such testimony into evidence. The party must file a motion to strike the challenged witness or portions of the testimony promptly after the testimony is completed. The party may also seek to exclude, in whole or in part, testimony from any witness for whom pretrial disclosures were not adequately made.

The Board's Institution Order Sets the Litigation Schedule

Under amended ”2.120(a) and 2.121(a), the Board's institution order will identify the following deadlines:

• The due date for the defendant's answer;
• The deadline for the initial discovery conference;
• The opening and closing of the discovery period;
• The deadline for initial disclosures;
• The deadline for disclosure of expert testimony;
• The deadlines for the parties' pretrial disclosures; and
• The opening and closing of the parties' testimony periods.

These deadlines may be modified 'upon stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board.'

Summary Judgment Procedures Are Slightly Modified

Finally, '2.127(e), governing motions for summary judgment, has been amended in two significant respects. First, a motion for summary judgment may not be filed until after the moving party has made its initial disclosures, unless the motion asserts claim or issue preclusion or lack of jurisdiction. Second, the Board will consider the parties' 'written disclosures or disclosed documents,' in addition to materials previously appropriate to support a summary judgment motion, if such materials are provided with the party's brief.

Conclusion

The Amendments, by design, appear to make Board inter partes proceedings resemble more closely civil actions brought in the federal district courts. Significant differences remain, however, between Board inter partes proceedings and federal court actions. Significant differences also remain between the litigation procedures the Board employed before the Amendments and those that will be in place after all of the Amendments become effective. Practitioners should therefore pay detailed attention to how these Amendments will impact their litigation practices before the Board.

William M. Bryner is a partner with Kilpatrick Stockton LLP and practices in Winston-Salem, NC. His practice concentrates on litigation, prosecution, and counseling related to trademarks and unfair competition, including litigating dozens of inter partes proceedings before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office. The author expresses appreciation to his colleagues, Christopher P. Bussert and Laura C. Miller, for their insightful comments on earlier drafts. ' Kilpatrick Stockton LLP 2007

EDITOR'S NOTE:  After this month's issue of The Intellectual Property Strategist went to press, U.S. District Judge James Cacheris granted a motion by GlaxoSmithKline for a preliminary injunction blocking the U.S. Patent and Trademark Office from implementing the rules set to go into effect on Nov. 1.  For up-to-date information, see http://www.lawjournalnewsletters.com/issues/ljn_patent/8_6/news/149619-1.html

On Aug. 1, 2007, and as reflected in Volume 72 of the Federal Register published on that date, the U.S. Patent and Trademark Office ('USPTO') issued a final rulemaking action titled 'Miscellaneous Changes to Trademark Trial and Appeal Board Rules' (the 'Amendments'). According to this rulemaking action, which modifies a number of provisions within Title 37, Part 2, of the Code of Federal Regulations (the 'Rules'), the effect of these Amendments is fourfold, namely:

1) To require service of complaints or claims on defendants in inter partes proceedings before the Trademark Trial and Appeal Board (the 'Board');

2) To adopt a modified form of the disclosure practices included in the Federal Rules of Civil Procedure;

3) To delete the option of submissions in CD-ROM format; and

4) To clarify the Rules, conform the Rules to current practice, and correct typographical errors.

Certain of the Amendments took effect on Aug. 31, 2007. However, the majority of the Amendments take effect as to inter partes proceedings commenced on or after Nov. 1, 2007. This article summarizes, by effective date, the most significant Amendments affecting Board inter partes proceedings.

Amendments Effective Aug. 31, 2007

The following Amendments took effect on Aug. 31, 2007. Unless otherwise noted, these Amendments took effect both as to proceedings already pending before the Board and as to new proceedings commenced on or after Aug. 31, 2007.

A Protective Order Is Now Applicable in All Proceedings

The Amendments added a new '2.116(g) to the Rules, which provides that the Board's standard protective order is automatically applicable in all inter partes proceedings unless an alternative order is entered either by agreement of the parties or by motion. However, this Amendment makes clear that '[n]o 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 terms of whatever protective order is applicable in the specific proceeding].'

By this Amendment, a protective order of some type is now applicable in all pending Board proceedings. Consequently, parties will no longer be able appropriately to object to discovery requests on the ground that information or documents requested are confidential and will only be disclosed later 'upon entry of a protective order.' Instead, an objecting party must likely explain why the Board's standard protective order is insufficient for the particular circumstances presented, and file a motion seeking entry of a more suitable protective order.

Electronic Notification and Service of Papers May Now Be Accomplished

Sections 2.105(a) and 2.113(a), which pertain to the manner in
which the Board notifies a defendant of the institution of an inter partes proceeding and sets the deadline for the defendant to answer, have now been amended to provide for notification via e-mail. In a similar vein, '2.119(b), which lists various methods by which service of papers may be effected between the parties, has been amended to provide that the parties may agree to electronic service.

CD-ROM Submissions Have Been Eliminated

According to the USPTO, because submissions in CD-ROM format are rare and have presented technical problems, the option to file submissions in CD-ROM form has been eliminated from '2.126. That section has also been amended to clarify that '[e]xhibits pertaining to a paper submission must be filed on paper and comply with the requirements for a paper submission.'

Miscellaneous Additional Amendments

Additional Amendments effective Aug. 31, 2007 include the following:

• Section 2.118 has been amended to provide that in all cases in which notice from the USPTO to any registrant or applicant is returned undelivered, additional notice may be given in the Official Gazette;
• Section 2.120(d)(1) has been amended to provide that the Board must approve any motion or stipulation to exceed the discovery limit of 75 interrogatories, counting subparts;
• Section 2.127(a) has been amended to provide that tables of contents, indices of cases, descriptions of the record, statements of the issues, recitations of the facts, arguments, and summaries all 'count' toward the applicable page limit for motions;
• Section 2.133(a) has been amended to provide that amendments to an application or registration that are the subject of an inter partes proceeding must be approved by the Board, even if made upon consent; and
• Section 2.122(d)(1) has been amended to provide that effective only in proceedings commenced on or after Aug. 31, 2007, a pleaded registration of a plaintiff will be received into evidence and made part of the trial record if the opposition or petition is accompanied by only one original or photocopy (rather than two duplicates) of the certificate of registration or by a current printout from the electronic database records of the USPTO showing the current status and title of the registration.

Amendments Effective to Proceedings on or After Nov. 1, 2007

The following Amendments take effect with respect to all inter partes proceedings commenced on or after Nov. 1, 2007.

Plaintiff Must Attempt to 'Serve' Initial Pleading

Sections 2.101 and 2.113 have been amended to require that the initial pleading must be accompanied by 'proof of service' in order for a plaintiff to receive a filing date for its opposition or cancellation proceeding. A plaintiff must serve a copy of the notice of opposition or petition for cancellation, including all exhibits, on the defendant's attorney of record or, if there is no attorney, on the defendant or on the defendant's domestic representative at the correspondence address of record with the USPTO.

'Service' may be effected by any of the means listed in '2.119 (as amended), which include service by standard U.S. mail, and the USPTO has noted that parties are not required to follow the more stringent Federal Rules of Civil Procedure, or any international convention, regarding service of process.

A plaintiff may comply with these Amendments simply by mailing a copy of its initial pleading to the defendant's address as listed in the USPTO's online TARR and/or Assignment Division records, and including a 'certificate of service' when the plaintiff files its initial pleading. If the service copy is returned as 'undeliverable,' the plaintiff must then notify the Board within 10 days of the receipt of the returned copy, although the plaintiff must also provide the Board, at that time, with any information the plaintiff then possesses about the defendant's current whereabouts.

A 'Modified Disclosure Regime' Is Implemented

Perhaps the most significant Amendments are those reflected in amended ”2.120 and 2.121, which implement what the USPTO calls a 'modified disclosure regime' patterned after Fed. R. Civ. P. 26(a). As discussed more fully below, the principal features of this 'modified disclosure regime' are four new requirements, namely:

1) An initial discovery conference;

2) Initial fact disclosures;

3) Expert witness disclosures before the opening of the testimony periods; and

4) Final pretrial disclosures.

In addition, these Amendments require the Board to modify its initial scheduling order to account for these new requirements.

The Parties Must Conduct an Initial Discovery Conference. New ”2.120(a)(1)-(2) provide for a 'conference of the parties to discuss settlement and to develop a disclosure and discovery plan.' This conference must occur before the discovery period opens, and 'the parties must discuss the subjects set forth in Federal Rule of Civil Procedure 26(f) and any subjects set forth in the Board's institution order.' The USPTO has indicated that '[t]he parties' discovery conference may be in person or by other means.' A Board interlocutory attorney or administrative trademark judge will participate in the conference if a party requests such participation not later than 10 days before the conference deadline. The USPTO has indicated that the parties are not required to file a discovery plan after the conference, but the Amendments provide that sanctions may be sought if a party fails to participate in the conference.

The Parties Must Make Initial Fact Disclosures Before Commencing Discovery. New ”2.120(a)(1)-(3) require the parties to exchange the initial disclosures identified in Fed. R. Civ. P. 26(a)(1)(A) and (B). Thus, before commencing traditional discovery, and absent modification of this requirement either by a stipulation approved by the Board or through a motion granted by the Board, parties must identify persons with discoverable information that they may use to support their claims or defenses, and either identify or produce the documents in their possession, custody, or control that they may use to support their claims or defenses. Such disclosures (but not disclosed documents) will, at trial, be treated similarly to information received through traditional discovery methods such as responses to written discovery requests.

The Board's institution order will set the deadline for making such initial disclosures. It appears that, as a matter of practice, this deadline will be 30 days after the discovery period opens. A party's failure to make timely and/or adequate initial disclosures may be the subject of a motion to compel, which must be filed before the close of the discovery period.

The Parties Must Make Expert Witness Disclosures Before Discovery Closes. In addition to the initial fact disclosures, the Amendments also provide for '[d]isclosure of expert testimony … in the manner and sequence provided in Federal Rule of Civil Procedure 26(a)(2).' This Amendment thus requires service of a detailed report from any testifying expert no later than 30 days before the close of the discovery period. Experts retained solely for purposes of rebuttal must be disclosed within 30 days after the initial expert disclosure has occurred.

If a party retains a testifying expert after the deadline for expert disclosures, the party must promptly file a motion for leave to use expert testimony. Upon a party's disclosure of plans to use expert testimony, whether before or after the deadline for disclosing expert testimony, the Board may issue an order regarding expert discovery and/or setting a deadline for any other party to disclose plans to use a rebuttal expert.

A party's failure to make timely and/or adequate expert disclosures may be the subject of a motion to compel, which must be filed before the close of the discovery period.

The Parties Must Make Pretrial Disclosures of Anticipated Witnesses. Section 2.121(e) has been amended to incorporate certain aspects of the final pretrial disclosure requirements contained in Fed. R. Civ. P. 26(a)(3). These Amendments provide that each party, no later than 15 days before the opening of its testimony period(s), must provide certain identifying information for each witness from whom it intends to take testimony or may take testimony if the need arises, and must provide a general summary or list of the types of documents that may be introduced as exhibits. If a party does not plan to take testimony from any witnesses, it must so state in its pretrial disclosures.

Under amended '2.123(e)(3), if an opposing party's pretrial disclosures are untimely or inadequate as to any witness, a party may cross-examine that witness under protest, while reserving the right to object to the receipt of such testimony into evidence. The party must file a motion to strike the challenged witness or portions of the testimony promptly after the testimony is completed. The party may also seek to exclude, in whole or in part, testimony from any witness for whom pretrial disclosures were not adequately made.

The Board's Institution Order Sets the Litigation Schedule

Under amended ”2.120(a) and 2.121(a), the Board's institution order will identify the following deadlines:

• The due date for the defendant's answer;
• The deadline for the initial discovery conference;
• The opening and closing of the discovery period;
• The deadline for initial disclosures;
• The deadline for disclosure of expert testimony;
• The deadlines for the parties' pretrial disclosures; and
• The opening and closing of the parties' testimony periods.

These deadlines may be modified 'upon stipulation of the parties approved by the Board, or upon motion granted by the Board, or by order of the Board.'

Summary Judgment Procedures Are Slightly Modified

Finally, '2.127(e), governing motions for summary judgment, has been amended in two significant respects. First, a motion for summary judgment may not be filed until after the moving party has made its initial disclosures, unless the motion asserts claim or issue preclusion or lack of jurisdiction. Second, the Board will consider the parties' 'written disclosures or disclosed documents,' in addition to materials previously appropriate to support a summary judgment motion, if such materials are provided with the party's brief.

Conclusion

The Amendments, by design, appear to make Board inter partes proceedings resemble more closely civil actions brought in the federal district courts. Significant differences remain, however, between Board inter partes proceedings and federal court actions. Significant differences also remain between the litigation procedures the Board employed before the Amendments and those that will be in place after all of the Amendments become effective. Practitioners should therefore pay detailed attention to how these Amendments will impact their litigation practices before the Board.

William M. Bryner is a partner with Kilpatrick Stockton LLP and practices in Winston-Salem, NC. His practice concentrates on litigation, prosecution, and counseling related to trademarks and unfair competition, including litigating dozens of inter partes proceedings before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office. The author expresses appreciation to his colleagues, Christopher P. Bussert and Laura C. Miller, for their insightful comments on earlier drafts. ' Kilpatrick Stockton LLP 2007