On August 1, 2007, the Trademark Trial and Appeal Board (the “TTAB” or the “Board”) announced final rule changes that significantly alter service, discovery and pre-trial procedures in contested proceedings. The Board announced its proposed rulemaking on January 17, 2006.  In response to extensive comments, the final rules differ in important ways from those first articulated by the Board.  In particular, Committee 203,  then chaired by Phil Hampton and Brent Routman, developed a series of resolutions critical of certain aspects of the proposed rules, and Section representatives along with representatives of several other IP organizations met with the TTAB representatives on July 26, 2006 to present the concerns of the groups.

Although some of the final rule changes (such as automatic application of the Board’s standard confidentiality order absent an order negotiated by the parties or ordered by the Board on motion) became effective August 31, 2007, the three most major changes come into effect for contested proceedings commenced on or after November 1, 2007 and are discussed below.

1. Obligation of Plaintiffs to Serve Initial Pleadings

Prior to the rule change, the Board served the initial pleading, such as the Notice of Opposition or Petition for Cancellation, on the party in the position of defendant with the order instituting the proceeding. The new rule requires instead that, concurrently with filing the pleading in the Board, plaintiffs serve the initial pleading on defendants through a method specified in Trademark Rule 2.119 (unless the other party has agreed to accept service via email). In response to comments received from the Section and others, the TTAB modified its original proposal to clarify that plaintiffs have no duty to investigate the whereabouts of the defendant party and instead need only serve the correspondent of record as listed on the TARR database and the assignment records found on the PTO website. Plaintiffs, however, are required to notify the Board within 10 days of receiving information that the pleading was not delivered or was returned as undeliverable and to provide any information the plaintiff may have about possible new addresses for the defendant. The responsibility for service then passes to the Board.

2. Mandatory Initial Disclosure

The Board’s proposed rule to opt into Federal Rule of Civil Procedure’s mandatory initial disclosure rule generated the most controversy.  Previously, the TTAB had opted out of this rule.  The final rule, although adopting initial disclosure, clarifies and scales down the extent of such required disclosures in response to the comments received from the Section and others.

For all contested proceedings instituted on or after November 1, 2007, the Board in its instituting order will provide for commencement of the discovery period 30 days after the answer due date.  Between the answer date and the commencement of the discovery periods, the parties must participate in a disclosure conference to which an Interlocutory Attorney from the Board may be requested to join.  Mandatory initial disclosures are due 30 days after the discovery period commences.  Although the Board anticipates liberal grant to requests to extend or suspend made prior to filing of the answer, it states that it is unlikely to entertain motions to suspend after the answer and prior to the disclosure conference.  Thus, as a practice matter, where parties are actively engaged in settlement discussions at the outset of a proceeding, they may want to suspend immediately or to extend the answer deadline in order to facilitate settlement without deadlines looming.

Absent an approved stipulation to the contrary that is approved by the Board, the new rule requires parties under FRCP 26(a) (1) (A) & (B) to make initial disclosures.  Parties cannot make a summary judgment motion (except on jurisdictional or claim preclusion grounds) and may not engage in traditional discovery until such disclosures are made. The disclosures that must be made, however, were scaled back from those set forth in the proposed rule.  Initial disclosure now requires the identification of witnesses and documents and things that may be relied upon by the party in establishing its claims or defenses with a sanction of preclusion at trial in the event that such initial disclosures or subsequent supplements to such disclosures are inadequate.  Subject to Board approval, however, parties can stipulate to engage in more extensive initial disclosures or can forgo such disclosures entirely.  This topic, thus, should be explored by the parties.

3. Expert and Pre-trial Disclosure

The Board’s new rule requiring expert disclosure under FRCP 26(a) (2) also changed in response to comments received. The proposed rule had required such disclosure mid way through the discovery period.  The final rule, by contrast, requires disclosure of any experts who may be called at trial by a party later, i.e. at least 30 days prior to the close of discovery.  If a party plans to use an expert only to rebut the other party’s expert, however, it has 30 days after the other party’s expert disclosure to make its own expert disclosure.  Moreover, after notification of making expert disclosure to the Board, the TTAB may suspend proceedings to permit expert discovery to occur, thus creating greater flexibility.

Finally, the Board has modified the new pre-trial disclosures required.  At least 15 days before its testimony period commences, each party must identify the witnesses it expects to testify, a summary of the topics on which the witness will testify and a description of the general types of exhibits which may be introduced, but need not specify each exhibit or document.  Nor are parties required to indicate any Notice of Reliance material which they intend to file as part of their trial testimony.

Committee 203 plans to monitor implementation of these new rules and to report on issues and practice points raised thereby in the coming months.


Section Appoints New Meetings Assistant

The Section is pleased to announce that Nathaniel K. Hooker will join the Section staff on October 15 as the new Meetings Assistant. In his position, he will provide primary support to the event and meeting coordination efforts. If you have any questions about meeting setups, scheduling, committee meeting arrangements, speaker materials, CLE accreditation, or other event and meeting related questions, contact Nathaniel at 312-988-6268, or Nathaniel.Hooker@americanbar.org.

Nathaniel is a recent graduate of Hillsdale College in Hillsdale, Michigan, where he majored in economics. He has served as a law firm intern, and project manager for a municipal contractor.

In addition he has managed a water sports rental facility, served as a probation officer with a juvenile court, and served as a high school freestyle wrestling coach and referee. He has also been involved in volunteer service with both Habitat for Humanity and Big Brothers.

Mark your calendar now for the 23rd Annual Intellectual Property Law Conference, April 10-12, 2007, at the Crystal Gateway Marriott Hotel, Arlington, Virginia. A special reception is planned to be held at the Court of Appeals for the Federal Circuit. Online registration and complete information will be available on the Section website in December.