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:
- All pleadings and submissions need to be submitted through the Electronic System for Trademark Trials and Appeals “ESTTA”.
- Service of all papers must now be made by only email unless stipulated otherwise by the parties.
- Service by mail no longer entitles the respondent an additional 5 days to respond.
- Deadlines for submissions to the TTAB that are initiated by a date of service are 20 days.
- Responses to summary judgment and to requests for discovery remain at 30 days.
- Discovery request must be served early enough to allow for responses prior to the close of discovery (this should be an interesting issue).
- There will still be a duty to supplement discovery after the close of discovery.
- Motions to compel initial disclosures must be filed within 30 days after the deadline for serving initial disclosures.
- 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.
- There is a limit of 75 requests for production, requests admissions, and interrogatories.
- Testimony may be submitted by affidavit or declaration.
- Under Trademark Rules 2.122, 2.123, and 2.125 there are new rules for the submission of trial evidence and deposition transcripts.
- 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.