On January 14, 2017, a sweeping set of new rules will govern proceedings before the U.S. Trademark Trial and Appeal Board (TTAB), including those still pending before the Board on that date. The final publication of the new rules can be located on the TTAB portal of the U.S. Patent and Trademark Office’s website at https://www.uspto.gov/trademarks-application-process/trademark-trial-and-appeal-board-ttab. While the portal includes a bevy of links and helpful charts to acquiant practioners with all of the changes, there are a few highlights that deserve specific mention.
The major theme of the TTAB’s amended rules is making “electronic” the default method of procedure. Arguably, practioners were already defaulting to electronic means of filing and communication, not only due to the passive encouragements of the TTAB, but also by the nature of trademark and TTAB practice generally. Nevertheless, electronic filings via the TTAB’s online filing system, ESTTA, will now be required rather than preferred. In the same vein, service of papers and documents between parties must be effectuated by email unless stipulated otherwise, eliminating the extra five days previously alotted in instances of service by mail. The TTAB will also be taking on the responsibility of serving notices of opposition and petitions for cancellation, eletronically, of course, to attorneys of record, rather than requiring parties to serve these initial filings. In addition, several discovery changes are likely to shake up the status quo, specifically the limit of requests for admissions and requests for production of documents to 75 each, along with the mandate that all discovery be completed by the discovery deadline, including responses to any outstanding discovery requests.
Is it possible that TTAB’s first rule amendments in 10 years could signal more sweeping changes incoming? For now, attorneys have enough to contemplate in the next three months.