Changes to the Trademark Trial and Appeal Board (TTAB)

Effective January 14, 2017, all Trademark proceedings (oppositions, cancellations, concurrent use and ex parte appeal proceedings) which are already in progress are subject to the following changes:

  1. ¬†All pleadings and submissions need to be submitted through the Electronic System for Trademark Trials and Appeals “ESTTA”.
  2. Service of all papers must now be made by only email unless stipulated otherwise by the parties.
  3. Service by mail no longer entitles the respondent an additional 5 days to respond.
  4. Deadlines for submissions to the TTAB that are initiated by a date of service are 20 days.
  5. Responses to summary judgment and to requests for discovery remain at 30 days.
  6. Discovery request must be served early enough to allow for responses prior to the close of discovery (this should be an interesting issue).
  7. There will still be a duty to supplement discovery after the close of discovery.
  8. Motions to compel initial disclosures must be filed within 30 days after the deadline for serving initial disclosures.
  9. Prior to the first pretrial disclosure deadline, motions to compel discovery, motions to test the sufficiency of responses or objections, and motion for summary judgment must be filed.
  10.  There is a limit of 75 requests for production, requests admissions, and interrogatories.
  11. Testimony may be submitted by affidavit or declaration.
  12. Under Trademark Rules 2.122, 2.123, and 2.125 there are new rules for the submission of trial evidence and deposition transcripts.
  13. For proceedings filed on or after January 14, 2017, the TTAB’s notice of institution constitutes service of complaints.

For further resources you may consult https://www.uspto.gov/trademarks-application-process/trademark-trial-and-appeal-board-ttab, which contains the Notice of Final Rulemaking in the Federal Register on October 7, 2016, at 81 F.R. 69950.