IP Law Bulletin

The new rules reduce certain burdens on TTAB proceeding participants, including by doing away with the requirement that parties serve Notices of Opposition or Petitions to Cancel on one another (the Board will handle service on the other side electronically going forward) and allowing the submission of testimony by declaration (subject to the other party’s ability to cross-examine the declarant through a live deposition). The new declaration testimony option is the most significant of the imminent rule changes.

Testimony Changes & B&B Hardware

The introduction of the option of the testimony by declaration, a less formal and less costly means of introducing evidence as compared with the deposition testimony presently required, comes about at a time of uncertainty in the wake of the Supreme Court’s 2015 B&B Hardware decision. In that decision the Supreme Court ruled that under the right circumstances findings before the TTAB can have an issue-preclusive effect on subsequent court actions. In other words, a TTAB finding of likelihood of confusion could determine the outcome of a trademark infringement suit brought later. The TTAB only has the power to refuse or cancel registration, but recognition of a TTAB likelihood of confusion finding in a court of law as preclusive now means that a TTAB decision can, albeit indirectly, influence the granting or refusal of injunctive relief and the awarding of damages.

Since the B&B Hardware decision, courts have assigned preclusive effect to TTAB findings about the issues of priority of rights and fraud, but IP practitioners still await the first post-B&B Hardware court decision recognizing likelihood of confusion preclusion based upon TTAB findings. In the meantime, parties to TTAB proceedings must proceed with increased thoroughness and care when putting on or defending actions out of concern that the TTAB outcome will have consequences extending far beyond the question of registrability.

Discovery Timing Implications

The new rules also significantly impact discovery procedures, limiting requests for admissions and document production requests to 75 (the limit currently in place only for interrogatories) and requiring that all discovery, including production, have taken place during the six-month discovery period. Under the present rules, a party may serve discovery requests on the opposing party up until the last day of discovery, even though the deadline for the other side’s response would extend outside the six-month discovery period. This option will disappear.  Come January, it will be necessary to serve discovery requests by thirty days prior to the close of discovery. The implication is clear: commencing discovery early in the discovery has always been important to allow sufficient time for follow-up discovery, but it is now critical given the rule change that will in effect shorten the discovery window by thirty days.

No “Travel Advisory” Requirement for Foreign Parties, After All

Finally, there is one originally-proposed rule change in particular worth highlighting that has not been included in the final rule as a result of comments submitted during the rulemaking process. Namely, a proposed new rule would have required a party with a foreign witness to notify the other side when its officer, director, managing agent, or “other person who consents to testify on its behalf” is in the U.S. during the discovery or testimony phases of the proceedings. That notice requirement would have allowed the other side to take a live discovery deposition or a testimony deposition where the other side probably would not have had reason to know that the individual in question was to be visiting the U.S. The Board ultimately agreed with concerns expressed during the rulemaking comment period that this requirement would have the undesirable consequence of causing counsel to recommend that foreign parties not travel to the United States for conferences, meetings, or other business during TTAB procedures.

The Board is expected to publish a revised version of the Trademark Trial and Appeal Board Manual of Procedure early in 2017 to reflect the practice changes implemented by the new rules. The United States Patent and Trademark Office has published a chart summarizing all of the rule changes.