January 16, 2017 Top Story

Trademark Trial and Appeal Board Enters Twenty-First Century

Rule amendments streamline proceedings, but some needed changes remain unaddressed

By Connor D. Jackson

The U.S. Patent and Trademark Office has finalized amendments to the Trademark Trial and Appeal Board (TTAB) practice rules. Key changes include caps on discovery requests, discovery "proportionality," and stricter motion deadlines. The most significant change—and possibly most problematic—allows parties to unilaterally choose to provide trial testimony via affidavit, which may delay TTAB proceedings and be inconsistent with federal court rules.

Trial Testimony via Affidavit Inconsistent with Federal Rules, Inefficient

The TTAB has long allowed testimony via affidavit by stipulation of all parties. But under the new rules, a party may elect to do so unilaterally (although the opposing party retains their right to later oral cross-examination). According to ABA Section of Litigation leaders, this change is inconsistent with federal rules, which have more stringent witness testimony standards compared to the TTAB and injects unnecessary inefficiency into to TTAB proceedings—outcomes that are inapposite to the purpose of the amendments.

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