The Trademark Trial and Appeal Board (the "Board") has announced a number of changes to the Trademark Rules of Practice, to take effect on January 14, 2017. The new rules will apply to all proceedings that are pending on, or filed after, that date.
The changes aim to provide more efficiency and clarity to Board proceedings by reducing burdens and better reflecting current technology. A full breakdown of the changes can be found here. Among the most notable are:
- Parties are no longer required to serve Notices of Opposition or Petitions to Cancel - the Board will do that electronically once the documents are filed;
- All filings must be made through the Board's electronic filing system, ESTTA, with exceptions permitted only if ESTAA is unavailable or a party experiences extraordinary circumstances;
- Testimony can be submitted by declaration or affidavit, subject to the right to cross-examine;
- All service of documents between parties must be by email. Consequently, the five-day extended response period for physically mailed service will be deleted;
- Requests for documents and admissions are limited to 75 each, and all discovery, including production, must take place during the six-month discovery period (thus, discovery requests must be served early enough to ensure this requirement is met); and
- The Board's standard protective order will be automatically imposed in all inter partes proceedings.
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