Guide to Changes in the Trademark Trial and Appeal Board Manual of Procedure (TBMP), 3rd Edition

8/3/2019 Guide to Changes in the Trademark Trial and Appeal Board Manual of Procedure (TBMP), 3rd Edition

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Guide to Changes in the

Trademark Trial and Appeal Board Manual

of Procedure (TBMP), 3rd Edition

Trademark is our exper ience.Exper ience is our t rademark.

www.ErikPelton.com

2011 Erik M. Pelton & Associates, PLLC. All Rights Reserved.


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2011 Erik M. Pelton & Associates, PLLC. All Rights Reserved. www.ErikPelton.com i

Introduction

In May 2011, the Trademark Trial and Appeal Board (TTAB) released the long-awaited 3rd

Edition of its Trademark Trial and Appeal Board Manual of Procedure (TBMP).1

This guide

summarizes and highlights the most significant changes included in the 3rd Edition of the

TBMP, providing particular attention to new and significantly revised sections.

The TBMP was created to serve as a comprehensive and ready resource for practitioners.2

Though the TBMP is neither a binding authority nor a substitute for controlling statutes, rules, or

decisional law, it contains invaluable depth and details regarding the Boards practice and

procedure.

The 3rd Edition provides a well deserved update of the Manual. Following the release of the 1st

Edition in 1995, the 2nd Edition of the TBMP was published on May 1, 2003 and revised once,

in March of 2004. During the years between the 2nd and 3rd Editions, the TTAB issued more

than 300 precedential decisions as well as a significant package of rules changes that took effect

for proceedings commenced on or after November 1, 2007. The 3rd Edition incorporates

amendments to the Trademark Rules of Practice, the Trademark Act, and the applicable Federal

Rules as of November 15, 2010. Many of the most significant changes in the 3rd Edition relate to

five topics:

2007 changes to the Trademark Rules of Practice;

using ESSTA for electronic filing of TTAB documents;

Accelerated Case Resolution (ACR) options;

expanded precedents concerning Madrid Protocol applications; and

expanded details regarding concurrent use proceedings.

At more than 1,300 pages, the 3rd Edition is the most comprehensive version of the TBMP to

date. Its creation was a massive undertaking lasting several years and requiring the efforts of

many Administrative Trademark Judges and other staff members. The TTAB has indicated its

intent to provide more frequent updates in the future. The TTAB also welcomes comments and

suggestions regarding the manual, which may be sent to [email protected].

In the pages that follow, we have summarized most of the additions and changes included in the

3rd Edition. We have underlined or otherwise emphasized changes that we consider to be

particularly significant or interesting. Sections that were unchanged in the 3rd Edition have been

omitted from this guide. Though many of these changes may already be well-known to frequentTTAB practitioners, we expect that a quick review of this document will bring to light several

previously unknown or long-overlooked changes, even among the most experienced TTAB

veterans.

1The full text of the TBMP is available at http://www.uspto.gov/trademarks/process/appeal/Preface_TBMP.jsp

2Chief Administrative Trademark Judge J. David Sams, Preface to TBMP (2

ndEd.), May 1, 2003.


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2011 Erik M. Pelton & Associa

We welcome your comments an

guide is for informational purpo

circumstances.

Acknowledgement

This guide would not have been

J.D.3

He has been an invaluable

to his many successes as he emb

Erik M. PeltonOctober 16, 2011

3http://www.linkedin.com/pub/mic

es, PLLC. All Rights Reserved. www.ErikPel

feedback via email at [email protected]. O

es only and should not be considered legal advi

possible without the considerable efforts of Mic

esource to the firm for the last 18 months, and

arks on his legal career.

hael-melmer/20/473/333

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f course, this

ce under any

hael Melmer,

e look forward


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Table of Contents

CHAPTER 100 GENERAL INFORMATION 1

CHAPTER 200 EXTENSIONS OF TIME TO OPPOSE 3

CHAPTER 300 - PLEADINGS 5

CHAPTER 400 - DISCOVERY 7

CHAPTER 500 STIPULATIONS TO MOTIONS 11

CHAPTER 600 WITHDRAWAL; SETTLEMENT15

CHAPTER 700 TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE 16

CHAPTER 800 BRIEFS ON CASE, ORAL HEARING, FINAL DECISION 19

CHAPTER 900 REVIEW OF DECISION OF BOARD 20

CHAPTER 1000 - INTERFERENCES 20

CHAPTER 1100 CONCURRENT USE PROCEEDINGS 21

CHAPTER 1200 EX PARTE APPEALS 23


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2011 Erik M. Pelton & Associates, PLLC. All Rights Reserved. www.ErikPelton.com 1

CHAPTER 100 GENERAL INFORMATION

101.03 Citing Non-Precedential Decisions and the Decision of Other Tribunals

Non-precedential decisions, while not binding on Board, may now be cited for whatever

persuasive weight to which they may be entitled. Previously, only precedential decisions

were citable before the TTAB unless a non-precedential decision happened to involve one ofthe parties to the pending proceeding. Any cited non-precedential decisions must be

appended by the citing party to the motion or brief in which it is cited.

Decisions from tribunals other than the TTAB may be cited to the extent allowed and for the

purposes permitted by the tribunal that issued the decision.

101.05: The Purpose and Authority of the TBMP

New subsection describing the TBMP itself, noting that while it is written as a guide for both

Board and practitioners, it does not modify, amend, or serve as a substitute for any statutes,

rules or decisional law and is not binding upon the [TTAB].

Also notes that the TBMP is not a comprehensive reference on all aspects of the procedural

or substantive law applicable to Board proceedings and urges parties to conduct additional

research as appropriate.

106.03 Form of Submissions

All references to submission of materials to Board via CD-ROM have been removed.

Audio and video tape exhibits may not be filed electronically.

110.09 Electronic Filing Using ESTTA (new subsection)

110.09(a): parties should allow sufficient time when dealing with ESTTA.

110.09(b): requests for extensions of time to oppose 66(a) applications, and oppositions to

such applications, must be filed through ESTTA.

110.09(c): general ESTTA instructions, file formats allowed, and limitations on file size. 110.09(d): explanation of service of papers filed through ESTTA.

110.09(e): resources for help with ESTTA.

113.05 Additional Time for Taking Action After Service by Mail

5-day enlargement period does not apply to electronic service; 3-day enlargement in the

FRCP does not apply to Board proceedings.

Added 5 additional days to the response period before applying weekend/holiday rule.

5-day enlargement not available for deadline for filing briefs.

118.02 Fees Payable in Advance

If filing through ESTTA, the document will not be transmitted without payment, and no

filing date will be accorded.

If filing on paper with a partial but insufficient payment of the fee, a party will not be

refused a filing date provided that the fee paid is sufficient for at least one opposer or

petitioner to proceed against at least one class.

118.03 Methods of Payment

Paying the fee is a required part of ESTTA filing process; payments can be made via credit

card, electronic funds transfer, or USPTO deposit account.


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120.01 Access to Non-Confidential Files

Explains current process for requesting paper files and making copies of paper files at the

USPTO.

120.02 Access to Confidential Files

Materials filed under seal pursuant to Boards standard protective order are not made

available for public inspection.

Confidential materials must be designated as such when filed.

120.03 Access to the Files of Terminated Proceedings

Paper files of cancelled registrations, expired registrations, and abandoned applications are

now destroyed after three years (formerly after only two years).


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CHAPTER 200 EXTENSIONS OF TIME TO OPPOSE

202.01 Time for Filing an Extension of Time to Oppose In General

A final extension request (from 120 days after publication) can only be granted for 60 days,

and no less, and can only be granted with consent of Applicant or upon a showing of

extraordinary circumstances; consent of Applicant no longer must be written.

If the final request is for less than 60 days, even with consent, it will be denied; if it is for lessthan 60 days, and there are extraordinary circumstances andconsent, it will be granted for 60

days (not the shorter requested period).

203.01(b) Electronic Filing of Extensions of Time to Oppose (new subsection)

Explains the use of ESTTA for filing extensions of time to oppose; includes website address

for forms, e-mail address for those with technical questions, general information and

instructions.

207.03 Extensions Beyond 120 Days from Publication

Extraordinary circumstances sufficient to justify such an extension include fire, extreme

weather, or death, but do not include settlement negotiations between parties, filing of a letter

of protest by potential opposer, pendency of a post-publication amendment, or civil litigation

between parties.

211.01 Request for Reconsideration

The time for filing opposition or further extension will not be suspended pending

determination of request for reconsideration.

211.03 Petition to the Director

The time for filing opposition or further extension will not be suspended pending decision of

a petition to the Director.

If the decision on a petition to the Director is not favorable to opposer and opposition is thus

dismissed, fee is no longer refunded.212.01 Jurisdiction to Consider Amendment to an Application During or After Extension

Any amendment proposed by applicant before commencement of an inter partes proceeding

must be filed electronically through TEAS or via fax.

Any inquiry regarding status of an amendment must be sent via e-mail to TMPostPubQuery

@uspto.gov (formerly, users were instructed to send such proposals to the Boards attention).

Board will not suspend the time for filing an opposition or extension pending the

consideration of an amendment.

oHowever, pendency of an amendment may constitute good cause, but it will not amount

to extraordinary circumstances to justify a further extension.

212.02 Conditions for Approval of Post-Publication Amendment

Amendments to applications filed under Section 44 or 66(a) no longer listed as examples of

applications that can be converted to a concurrent use registration after publication, but

before registration.

212.03 Form of Amendments

Papers associated with applications that are subject of a request for extension of time should

now be submitted to Petitions Office, rather than the Board.

212.05 Action by Board During the Consideration of an Amendment


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Board will normally suspend an application pending the consideration of an amendment,

upon motion by either party.

When filing notice of opposition through ESTTA, motion to suspend should not be filed

before receipt of an opposition proceeding number.

213 The Effect of Restoration of Jurisdiction to the Examining Attorney

Board will not suspend the time for filing a notice of opposition or extension while

urisdiction is restored to examining attorney.

Opposition filing fee will not be refunded when:

oopposer decides to dismiss opposition after republication of application, or

o registration is denied after application is restored to examining attorney.

214 The Effect of Republication

When the mark is republished by an order of the Examining Attorney, the opposition will be

dismissed, but the filing fee will not be refunded.

An opposition filed in response to an inadvertent republication will not be considered; if it

has already been instituted, it will be dismissed.

215 The Effect of a Letter of Protest Letters of protest alleging knowledge bearing on the registrability of a mark will typically be

denied as untimely if filed more than 30 days after publication.

Once a mark is published, opposition can be instituted regardless of when the letter of protest

was filed.

Board will not suspend time for notice of opposition or extension request pending the

outcome of a letter of protest.

Filing a letter of protest does not give a potential opposer good cause for an extension of

time.

216 Inadvertently Issued Registrations

Board will not suspend the time for notice of opposition or extension request pending

cancellation of an inadvertently issued registration.

218 Abandonment of an Application

An opposition filed during or after the abandonment of an application will not be considered,

and the filing fee will be returned.

If an opposition is filed before Board learns of applications abandonment, opposition will be

dismissed as a nullity and the fee will be refunded.

219 Amendments to Allege Use

If a late-filed amendment to allege use or a premature statement of use is filed, it will not be

considered (though any fee paid will still be refunded). Board does not suspend time for filing notice of opposition or extension request while

considering an amendment to allege use.


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CHAPTER 300 - PLEADINGS

302 Commencing a Proceeding

Proof of service on applications owner is required as part of notice of opposition. If

service copy is undeliverable, opposer must inform Board within 10 days.

303.05(d) New subsection: The Misidentification of a Defendant

When an initial pleading accidentally identifies the wrong applicant or registrant,proceedings nevertheless go forward and the correct party may be substituted later.

304 Proceeding Involving Multiple Classes

If proceeding is filed against application or registration with multiple classes, and there are

sufficient fees for some, but not all classes, fees will be applied as detailed in 37 CFR

2.101(d)(3)(ii)-(iii). If fees are insufficient to proceed against any of the classes, proceeding

will not be instituted at all.

306.01 Time for Filing a Notice of Opposition

After the period for filing opposition has ended (including any extensions of time),

opposition may not be amended to add opposed goods or services.

After opposition is instituted, it may not be amended to correct an incorrect serial number,

but Board may be able to correct these errors if opposer notifies Board during opposition

period, before opposition has been filed.

307.02(a) - Petitions That Must Be Filed Within Five Years from the Date of Registration

Removed genericness claim made to only a portion of the mark, but added deceptive

misdescriptiveness as permissible grounds for filing a petition to cancel more than five

years after registration.

If petition to cancel is served on registrants attorney rather than registrant, Board may not

dismiss petition to cancel (and petitioner can be given a new filing date) if petitioner:

o Serves registrant within five years of issuance date of challenged registration, ando Amends proof of service to show service on registrant.

309.02(c)(1) and (2) Service of a Notice of Opposition on Applicant (new subsections )

Former section 309.02(c) has been split into two new subsections, describing in detail the

service requirements for plaintiffs in opposition and cancellation proceedings, respectively.

309.03(a)(2) The Elements of a Complaint - In General

Amended to make it clear that factual allegations in pleadings are notevidence of matters

alleged exceptto the extent that they may be deemed to be admissions against interest.

309.03(b) Establishing Standing in a Complaint

Expanded list of examples where a real interest in the proceeding and a reasonable belief

of damage may be found to include cases where plaintiff belongs to class of potential

purchasers it alleges are disparaged or brought into contempt or disrepute.

309.03(c) Grounds for a Complaint

Specifies that plaintiff in a 2(d) cancellation/opposition proceeding must specifically plead

any registrations on which it is relying and may not rely at trial on unpleaded registrations.

Immoral or deceptive matter added as grounds for opposition or cancellation under 2(a).

Allegation that a sound mark is not inherently distinctive and has not acquired

distinctiveness added to grounds for opposition or cancellation.


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Nonuse for three consecutive years is prima facie evidence of abandonment.

309.03(d) - Partial Opposition or Partial Cancellation

A party can petition for the disclaimer of a generic term that forms only a portion of a mark

as long as registration is less than five years old.

309.04 - Defects in a Complaint That May Affect the Institution of Proceeding

If plaintiff misidentifies the serial or registration number in an opposition or cancellation,

and proceeding is instituted against that incorrect number, filing fee will not be refunded.

310.02 When the Defendants Copy of an Institution Order is Returned as Undeliverable

When notification of opposition proceeding is returned as undeliverable, notice may be

given by publication in the Official Gazette (formerly this only applied to cancellations).

311.02(a) Admissions and Denials in an Answer

A general denial by defendant now covers jurisdictional grounds.

311.02(b) Affirmative Defenses in an Answer

If defendant offers to amend its identification of goods or services in its answer as part of

an affirmative defense, defendant should also file a motion with Board in order to bring it

to Boards attention. The fair use defense in The Trademark Act has no applicability in inter partes

proceedings before Board.

In cancellation proceedings, affirmative defenses of laches and acquiescence start to run

from the date of registration, unless there is actual knowledge before close of the

opposition period.

312.01 Default In General

The time permitted for defendant to show cause why default judgment should not be

entered has been extended from 20 to 30 days.

When defendant is in default, parties obligations to conference and make initial

disclosures are effectively stayed. If default is set aside, Board will reset deadlines.

313.01 Counterclaims In General

In order to counterclaim for partial cancellation of a registration, one must allege (1) partial

cancellation will avoid a likelihood of confusion, and (2) registrant does not use the mark

on goods or services for which deletion is sought, unless counterclaiming to delete goods or

services on grounds of abandonment, in which case one does not need to allege that

likelihood of confusion will be avoided.

313.06 Answer to a Counterclaim

Proof of service added to required elements for counterclaim.

315 Amending Pleadings An opposition against a 66(a) registration may not be amended to add an entirely new

claim or to add an additional claimed registration to a previously stated 2(d) ground.

An opposition against a 44 or 66(a) application may not be amended to add additional

goods or services subject to opposition.

317 Exhibits to Pleadings

New exception to general rule that exhibits to a pleading are not evidence: a current

printout from TARR or TESS showing current status and title of registration.


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CHAPTER 400 - DISCOVERY

401 Introduction to Disclosures and Discovery

Notes that the current Federal Rules dealing with automatic disclosures and discovery

conferences:

o do not apply to cases filed before November 1, 2007, buto do apply (in a modified form) to cases filed after that date.

All parties involved in cases filed on or after November 1, 2007 are required to:

o conduct a discovery conference, and

o make initial, expert, and pretrial disclosures.

401.01-05 New Discovery Subsections

These new subsections describe in greater detail the procedures associated with discovery

conferences (401.01), initial disclosures (401.02), expert disclosures (401.03), modification

of disclosure obligations (401.04), and signature and formatting requirements associated

with disclosures (401.05).

401.06 Other Requirements Under the Boards Disclosure Regime (new subsection)

Initial disclosures are a prerequisite for filing discovery requests or motions for summary

udgment

o Except motions dealing with the Boards jurisdiction or issue/claim preclusion.

402.02 Limitations on Right to Discovery and Electronically Stored Information (ESI)

The discovery of confidential information is subject to the terms of Boards standard

protective order.

Parties are not required to produce ESI not reasonably accessible because of undue burden

or cost. If the other party moves to compel such ESI, burden is on withholding party to

demonstrate such inaccessibility; if this showing is made, burden shifts to other party toshow good cause.

403.01 Timing of Discovery In General

A new second paragraph describes the procedures for modifying discovery and trial

obligations.

Parties have no obligation to respond to discovery requests served before initial

disclosures.

403.02 Time for Service of Discovery Requests and Taking of Depositions

Discovery requests cannot be served before initial disclosures.

403.03 Time for Service of Discovery Responses

Parties cannot object to discovery requests served late in the discovery period on the

grounds that the responses would be due after the close of discovery; however, parties can

object on other valid grounds.

403.04 Extensions of Discovery Period, Time to Respond to Discovery Requests and

Disclosures

Explains the differences between requests to extend time (1) to make initial disclosures,

and (2) to make expert disclosures.

403.05(b) To Facilitate Introduction of Produced Documents


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A party receiving documents through (1) disclosures or (2) requests for production can

serve a request for an admission of genuineness if the discovery period has not yet expired.

404.02 Who Can be Deposed in a Discovery Deposition

Deposition of a nonparty residing in the US can be taken:

o By subpoena, or

o On notice alone, if witness voluntarily agrees.

404.03(a)(2) Discovery Deposition of a Person in the US

Stresses that the Board has no jurisdiction to enforce subpoenas compelling attendance at a

deposition parties must seek enforcement through the relevant District Court.

404.05 Notice of Discovery Deposition

When a party seeks to take a discovery deposition, the impending end of that partys

discovery period is not an excuse for failing to provide reasonable notice of the deposition.

New paragraph explains the process for requesting documents from a party deponent.

404.06 Taking a Discovery Deposition

Parties can stipulate to conduct depositions via videoconference, but the videos still must

be transcribed to be submitted as evidence. 404.06(a)-(d) (new subsections) describe:

o the process of deposing natural persons as individuals and as corporate

representatives;

o the length of a deposition (one 7-hour day, by default); and

o circumstances under which a witness can be deposed more than once.

404.07(f) Objections to Deposition Questions

Any objections not maintained in a brief at the final hearing may be considered waived by

the Board.

404.08 Discovery Deposition Objections (new subsection)

Lists the types of objections that can be made to the taking of a discovery deposition.

405.01 Interrogatories When Permitted and By Whom

Clarifies that interrogatories can only be served with or after initial disclosures, but the

answers to interrogatories can be served after discovery.

405.03(d) Interrogatories Limit on Number

The Board will count combined questions as separate interrogatories.

405.04(a) Responses to Interrogatories

The five extra days allowed to respond to physically mailed interrogatories does not apply

to those served electronically.

406.01 Requests for Production: When Permitted and By Whom Lists the factors considered for imposing sanctions for non-compliance with discovery

resulting from a conflict with foreign laws.


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406.04(b) Responses to Requests for Production: Place and Form of Production (new

subsection)

If a request for electronically stored information fails to specify the form in which

information should be produced, it should be produced in the form in which it is ordinarily

maintained or in a reasonably usable form.

Producing party can translate electronically stored information into reasonably usable

form, but not if doing so would make the information more difficult for the other party to

use.

407.01 Requests for Admission: When Permitted and By Whom

In cases commenced on or after November 2007, RFAs must be served with or after initial

disclosures.

407.03(a) Reponses to Requests for Admission: Time for Service of Responses

RFAs are deemed admitted if there is no response within 30 days (or by an alternate,

agreed-upon date).

407.04 Effect of Admission

The Board may, on motion, reopen the time to respond to admission requests in order toallow amendments (or to respond if they were deemed admitted by a failure to respond).

408.01(a)-(c) Duty to Cooperate (new subsections)

These subsections detail parties various obligations to one another during discovery.

408.03 Duty to Supplement Disclosures and Discovery Responses

Expanded section, explaining the requirements for disclosures and discovery and

possible sanctions that may apply.

409 Filing Discovery Requests, Discovery Responses, and Disclosures With Board

Initial and expert disclosures should not be filed with the Board, unless the conditions

listed in this section are met.

Parties should file notices of intention to use expert testimony with the Board.

410 Asserting Objections to Requests for Discovery, Motions Attacking Requests for

Discovery, and Disclosures

For cases filed on or after November 2007, parties can object to propounded discovery

on the ground of failure to serve initial disclosures.

New paragraph explains the process of filing motions to compel when seeking to object

to or test the sufficiency of disclosures.

411.01 Remedy for Failure to Provide Disclosures or Discovery: Initial and Expert

Testimony Disclosures (new subsection)

Discusses motions to compel the service of expert and initial disclosures.411.02 Remedy for Failure to Provide Disclosures or Discovery: Interrogatories or

Requests for Production

A party cannot seek the immediate entry of sanctions unless it first files a motion to

compel or the responding party expressly states that there will be no response.

411.03 Remedy for Failure to Provide Disclosures or Discovery: RFAs

As long as a request is admitted or denied, the sufficiency of that response should not

be challenged by the other party.


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412.01 The Boards Standard Protective Order

Includes lengthy new discussion of the standard protective order and other protective

orders which can be raised on motion.

412.02 Modification of Boards Standard Protective Order

Explains how and by whom the order can be modified.

412.02(b) Modification for Pro Se Parties and In House Counsel (new subsection)

This subsection suggests modifications in the protective order when pro se parties or in

house counsel are involved.

412.04 Filing Confidential Materials with the Board

When confidential material is filed with the Board, a redacted public version must also

be filed confidentiality may be waived if the redacted version is not filed.

412.06 Protective Orders Limiting Discovery (new subsection)

Subsection (a) describes motions to protect witnesses from being deposed.

Subsection (b) describes motions for protection from oppressive discovery.

413.01 Telephone Conferences for Motions Relating to Discovery

Describes the types of motions appropriate to consider in a phone conference.414(22) Selected Discovery Guidelines

New paragraph: Taking of discovery on matters concerning the validity of a pleaded

registration is notobjectionable on the basis that it constitutes a collateral attack.


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CHAPTER 500 STIPULATIONS TO MOTIONS

501.02 Filing Stipulations

The following stipulations were added to the list of those that require action or

consideration by the Board:

o to alter the length of the discovery period or disclosure obligations occurring during

the discovery period,o to waive required initial disclosures, or

o to reschedule pretrial disclosures and subsequent trial dates.

502.01 Available Motions

Changed to expressly state that the Board will not consider motions in limine.

502.02(a) Form of Motions and Briefs on Motions

Parties cannot file motions via email unless requested to do so by the Board.

502.02(b) Briefs on Motions

Tables of contents, authorities, and cases are not required in briefs on motions. If included,

they count toward the page limit.

502.04 Determination of Motions

Clarifies that when an uncontested motion is filed, the Board will not consider it to be

conceded until sufficient time has passed to file a brief in opposition.

503.01 The Time for Filing a Motion to Dismiss for Failure to State a Claim

Clarifies that a motion to dismiss for failure to state a claim can be raised during trial.

Filing motion to dismiss tolls both the time to answer and time for the discovery conference

when applicable.

503.02 The Nature of a Motion to Dismiss for Failure to State a Claim

A party must state a claim to relief that is plausible on its face to avoid dismissal.

503.04 Matters Outside the Pleading Submitted on Motion to Dismiss The Board generally will not consider a motion to dismiss that relies on matters outside the

pleading to be a motion for summary judgment.

505.02 The Time for Filing a Motion for a More Definite Statement

When such a motion is filed, subsequent dates, including discovery conference, are stayed.

506.02 The Time for Filing a Motion to Strike Matter from the Pleading

If a motion to strike matter from the pleading is filed before discovery conference, motion

can be discussed at the discovery conference if the parties request Board participation.

507.01 Motion to Amend a Pleading: In General

Added new exception to the rule that pleadings can generally be amended in the same

manner as in a District Court proceeding: after the close of the time for filing an

opposition, the notice of opposition may not be amended to add to the goods or services

opposed.

507.02 Motion to Amend a Pleading: General Rules Regarding Amendments

In an inter partes proceeding, a party can amend a pleading once as a matter of right within

21 days of serving it.

Once the time for filing an opposition to a 66 application has ended, the notice of

opposition cannot be amended to add goods or services.


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508 Motion for Default Judgment for Failure to Answer

If the Board issues a notice of default on its own initiative because defendant has not

answered a complaint, defendant will be allowed time to show cause why default

udgment should not be entered (Board removed the rule stating that defendant had exactly

20 days to respond).

509.01 Motions to Extend or Reopen Time: Nature of the Motions

Normally, these motions require a showing of excusable neglect, however, a new exception

to the rule occurs when defendant is in default for failing to provide a timely answer in

this case, a showing of good cause is required.

509.01(a) Motions to Extend Time

The Board will not extend the time for filing a reply brief.

510.02(b) Resumption of a Proceeding Suspended Pending the Outcome of a Civil

Proceeding

When civil proceeding is resolved, the interested party should notify the Board as soon as

possible, at which point Board will issue a show cause order (under the old rules, no such

order issued). If Board is not notified of any updates in the pending civil case, it will require a status

update after one year (formerly two years).

510.03(a) Suspension for Other Reasons

The Board will suspend a proceeding with respect to all matters not germane to the

motion when a party files a motion to compel initial disclosures, expert disclosures, or

discovery (formerly, rule only listed discovery).

510.03(b) Resumption for Other Reasons

If proceeding is suspended due to bankruptcy, Board will require an update on the status of

bankruptcy every year (formerly every two years).

512.04 Misidentification of a Party

New final paragraph lists the situations in which an applicant is allowed to correct a defect

in identifying itself.

517 Motion to Strike Brief on Motion

Expressly states that the Board will not strike an entire brief in response to evidentiary

objections.

521 Motion to Quash a Notice of Deposition

Added to list of grounds for filing a motion to quash a notice of deposition:

o the deposing party seeks to take the testimonial deposition of a witness who was not

identified in that partys pretrial disclosures.


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523.01 Motion to Compel Disclosure or Discovery In General

In addition to typical motions to compel discovery, parties can file motions to compel:

o attendance at a discovery conference; and

o to supplement inadequate disclosures.

Compelling Answers to Deposition Questions:

o If deposition is not pursuant to a subpoena:

The objection should be stated, but objecting party should still provide an answer.

o If deposition is pursuant to a subpoena:

Propounding party can move the local Federal District Court to compel answer.

Without such an order, the propounding party must complete the deposition and

then file a motion to compel with the Board.

Failing to provide initial disclosures bars that party from:

o Propounding discovery requests, and

o Filing a motion to compel responses to improperly propounded discovery requests.

523.03 Time for Filing a Motion to Compel Disclosure or Discovery

Motions to compel disclosures must be filed before the close of the discovery period.525 Motion to Withdraw or Amend an Admission

If a party fails to respond to a request for admission and wants to avoid admission by

default, that party can:

o Move to reopen its time to serve responses, in which case it must show excusable

neglect; or

o Implicitly acknowledge that its admissions are late and move to withdraw and amend

them pursuant to Fed. R. Civ. P. 36(b).

527.01(a) Motion for Sanctions for Failure to Comply with Board Discovery Order

There is no requirement that the parties engage in a good faith effort to resolve the dispute

before filing a motion for discovery sanctions; however, noncompliance with a motion to

compel is a prerequisite for sanctions for failure to serve initial disclosures.

527.01(f) Motion for Discovery Sanctions: Motions in Limine (new subsection)

The Board will not grant a motion to prospectively exclude evidence that might be

introduced at trial and that might be inconsistent with discovery responses or other material

not provided during discovery; parties are advised instead to file a motion to strike after

the evidence has been introduced.

528.03 Suspension Pending the Determination of a Motion for Summary Judgment

While Board usually suspends proceedings when a motion for summary judgment is filed,

it typically will not do so if the motion is untimely. New third paragraph explains that suspensions toll the time for making required

disclosures.

528.05(a) Summary Judgment Evidence In General

A new third paragraph describes the situations in which:

o Judicial notice may be taken, and

o Supplemental legal authority can be submitted.


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528.05(a)(2) Accelerated Case Resolution (new subsection)

This is an entirely new section that explains the ACR process, when it is available, and

distinguishes it from moving for summary judgment.

528.05(e) Summary Judgment Evidence: Printed Publications and Official Records

New fourth paragraph explains when internet evidence is considered self-authenticating

(formerly stated that internet evidence is not self-authenticating).

New sixth paragraph explains that printed publications are only admissible for what they

show on their face, and not as proof of the matter asserted.

528.05(f) Summary Judgment Evidence: Testimony from Another Proceeding

When parties use testimony from another proceeding for summary judgment purposes, they

can stipulate to its use at trial as well.

528.07(a) Unpleaded Issues Not a Basis for Summary Judgment

If a party amends a pleading and files a summary judgment motion based on new

allegations, any such new allegations will be considered denied if no new answer is made

of record.

533.02(b) Motion to Strike Trial Testimony Deposition on Ground of Failure to DiscloseWitness in Expert or Pretrial Disclosures (new subsection)

Explains parties responsibilities with respect to expert and pretrial disclosures and that any

motion to strike deposition on grounds of failure to disclose must be done immediately

after the deposition is completed.

536 Motion for Order to Show Cause Under Rule 2.128(a)(3) [Plaintiff trial brief not filed]

Even if such an order is discharged, the Plaintiff still has to file a motion to reopen time in

order to submit its brief.

543 Motion For Reconsideration of Final Decision

A new sixth paragraph explains that a second such request does not toll the time for:

o Filing an appeal, or

o Commencing a civil action.


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CHAPTER 600 WITHDRAWAL; SETTLEMENT

602.01 Withdrawal by Applicant

When multiple oppositions are brought against a single application and defendant files an

abandonment in one opposition, judgment will be entered against defendant in all of the

other oppositions in which the defendant did not obtain opposers consent.

Clarifies that failure of the applicant to respond to an office action (as described in theformer version of Rules) is not the only way in which an application can be abandoned

prior to its publication.

602.02(a) Withdrawal by Respondent: Surrender or Voluntary Cancellation of

Registration

When voluntarily surrendering a registration, parties are no longer required to provide the

original registration certificate.

A 66(a) registration can be surrendered either with the International Bureau or the

USPTO (formerly only with the IB).

New sixth paragraph explains partial restrictions of 66(a) registrations.

602.02(b) Withdrawal by Respondent: Cancellation Under 8 or 71; Expiration Under

9 or 70

If respondent does not intend to moot the proceeding but its registration still expires or is

cancelled, and the petitioner chooses to go forward with the proceeding, the expiration does

not remove actual or constructive notice of the registration.

603 Withdrawal by Interference or Concurrent Use Applicant

Explains that applications based solely on 44 or 66(a) cannot be part of a concurrent use

proceeding.

605.02 Suspension for Settlement Negotiations

Between the filing of the answer and the discovery conference, Board usually will not findgood cause to suspend proceedings or extend the schedule.


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CHAPTER 700 TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE

702.01 Pretrial Disclosures (new subsection)

Discusses pretrial disclosures: what needs to be disclosed, types of relevant objections

available, and ramifications for failing to make pretrial disclosures.

702.04 Accelerated Case Resolution (new subsection)

702.04(a) introduces ACR as alternative to traditional proceedings, outlining its structure,purpose, and implementation, and lays out types of cases most appropriate for ACR.

702.04(b) explains summary judgment model of ACR, wherein both trial and briefing

phases of the proceeding occur in a single phase (summary judgment briefs, together with

any accompanying evidence, encompass both the trial and briefing periods).

702.04(c) explains that where the parties have already filed summary judgment briefs, the

Board can invite the parties to convert case into an ACR proceeding, but this requires

parties to stipulate that Board may resolve any outstanding genuine issues of fact.

702.04(d) explains the stipulated record and trial briefs model of ACR, where final

decision is made after parties stipulate to most or all of the evidentiary record essentially

an abbreviated trial on the merits.

702.045(e) explains that the types of stipulations used in ACR are available in any Board

proceeding.

702.05 Overly Large Records (new subsection)

Notes a recent increase in irrelevant and/or cumulative evidence introduced during Board

proceedings, and that the Board views parties who engage in this practice with disfavor.

703.01(b) Oral Testimony Depositions: Form of Testimony

When parties agree to submit testimony via affidavit or declaration, they can also stipulate

that such witnesses may be cross-examined in person.

703.01(n) Correction of Errors in Oral Testimony Depositions If a party discovers errors in a deposition and Board grants a request to correct those errors,

that party should file a correct transcript with Board (formerly, the party had to send a

representative to Board offices to manually correct the transcript).

703.02(g) Depositions on Written Questions: Examination of Witness

Adverse parties are allowed to attend the taking of depositions, but may not participate

any attempt to engage the witness can result in sanctions.

704.03(a) Introducing into Evidence the Application or Registration That is the Subject of

the Proceeding

While the application or registration file which is the subject of the proceeding is

automatically part of the record,

o the specimens are not considered evidence unless established by competent

evidence, and

o the date of use is not considered evidence unless identified and introduced as

evidence

o (formerly the allegations, documents, and exhibits also had to be established by

competent evidence).

Evidence involving acquired distinctiveness is automatically considered evidence.


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704.03(b)(1)(A) Introducing into Evidence a Partys Own Registration Which is Not the

Subject of the Proceeding

The Board will not take judicial notice of such registrations.

If a plaintiff pleads ownership of an application, and that application registers during the

proceeding, the party does not have to amend the pleading to rely on the registration.

o However, if it registers after the closing of the plaintiffs testimony period, the Board

will not consider the registration.

704.03(b)(1)(B) Introducing Third Party Registrations into Evidence

Parties can now introduce third party registrations into evidence through a notice of

reliance by filing a printout of the registration (formerly required plain copy of the

registration).

704.04 Introducing into Evidence Statements and Things in the Application or Registration

Clarifies that date of use and specimen found in the subject application are not

automatically considered evidence.

704.05(a) Introducing Exhibits to Pleadings into Evidence

Such exhibits are not evidence unless properly introduced during testimony period; thissection clarifies the first exception to the rule and adds a second exception:

o First exception: current status and title copy of plaintiffs pleaded registration this

exception is amended to clarify that the copy must be issued by the PTO.

o Second exception: current printout from the PTO database showing the current status

and title; a new third paragraph explains this exception in more detail.

704.05(b) Introducing Exhibits to Briefs into Evidence

Evidence which has already been properly filed should not be re-filed with a partys brief.

704.08 Introducing Printed Publications into Evidence

Section divided into three new subsections:

o Subsection (a) addresses traditional printed publications available to the general

public;

o Subsection (b) addresses internet materials and notes that internet documents that

display both their (1) date and (2) source are now considered to be presumptively true

and genuine; and

o Subsection (c) addresses other printed materials, which are not self-authenticating.

704.09 Introducing Discovery Depositions into Evidence

If a party fails to identify a witness in its initial disclosures it is not necessarily precluded

from introducing that witnesss discovery deposition at trial.

Added written disclosures and disclosed documents to list of documents that normallyshould not be filed with the Board, unless one of the enumerated exceptions is applicable.

704.10 Introducing Interrogatory Answers and Admissions into Evidence

Added materials obtained through the disclosure or discovery process to the list of

items that normally should not be filed with Board, unless they fall within an enumerated

exception.


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704.11 Introducing Produced Documents into Evidence

Added documents obtained through disclosure to those that cannot be introduced

through notice of reliance alone.

Added internet documents to those that can be introduced through notice of reliance.

Amended methods by which documents produced in response to a request for production

of documents may be made of record to also apply to documents obtained through

disclosure.

New fifth paragraph explains that, if no responsive documents exist, a response stating

this can be introduced into evidence.

704.14 Introducing Initial Disclosures and Disclosed Documents into Evidence (new

subsection)

Discusses situations in which each of these can be made of record, including the limited

circumstances in which disclosures can be introduced by the disclosing (rather than the

inquiring) party.

705 Stipulated Evidence and Accelerated Case Resolution

Expressly states that the parties can stipulate to the entire record. If a party fails to reserve the right to object to stipulated evidence, it cannot raise

objections at a later point.

707.02(b) Procedural Objections to Notices of Reliance

If a procedural objection to a notice of reliance is one that could have been cured

promptly, it is deemed waived if not raised promptly.

707.03(b)(3) Objections to Trial Testimony Depositions on the Ground of Failure to

Disclose (new subsection)

Explains when a party can object to improper/inadequate pretrial disclosures.

707.03(c) Objections to Trial Testimony Depositions on Other Procedural/Substantive

Grounds

Added objections regarding the signing of testimonial deposition transcripts to those

that are waived if not raised promptly.

States that parties should preserve their objections at trial by attaching them to the brief

as an appendix or additional statement.

707.04 Waiver of an Objection

Added failing to preserve the objection in its brief on the case as a circumstance where

a partys objection may be waived at trial.


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CHAPTER 800 BRIEFS ON CASE, ORAL HEARING, FINAL DECISION

801.01 Briefs on the Case In General

Exhibits to briefs are generally unnecessary and discouraged.

Any claims or affirmative defenses not referenced in a brief are considered waived.

801.02(d) Time for Filing the Defendants Main Brief

Clarifies that, in oral argument, defendant can address issued raised in plaintiffs replybrief.

801.03 Form and Contents of Briefs

Notes that citation of nonprecedential cases is allowed in motions and briefs.

New sixth paragraph deals with citing cases from courts other than the Federal Circuit or

TTAB.

Updated Boards position on confidential material, noting that standard protective order is

applicable, by default, from disclosure through trial.

802.03 Time and Place of Hearing

In second paragraph, updated procedure involved in attending an oral hearing via

videoconference (removed references to former off-site video conference centers, which

are no longer in operation).

806 Termination of a Proceeding

Updated termination process to reflect current procedures and electronic filing.


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CHAPTER 900 REVIEW OF DECISION OF BOARD

902.02 Time for Filing an Appeal or Cross-Appeal to the Federal Circuit

Board allows only one request for reconsideration; a subsequent request will not toll the

time for appeal.

905 Petition to the Director A petition to the Director does not automatically suspend any pending proceedings, but

Board may still suspend proceedings at its discretion.

906.01 Standards of Review: Appealing to the Federal Circuit or Instituting a Civil Action

Courts reviewing Board decisions apply the substantial evidence standard. Under this

standard, when a court determines that two or more conclusions are supported by the record

and Board chose one of those conclusions, theBoards decision must be sustained.

Findings of fact determined by a reviewing court include:

o Abandonment,

o Functionality,

o Descriptiveness, and

o Whether trade dress is actually product design.

Conclusions of law, reviewed de novo, include:

o Likelihood of confusion, and

o Whether or not the Board properly granted summary judgment.

While Lanham Act interpretations are conclusions of law (and would therefore normally

be reviewed de novo), reviewing courts give substantial deference to Board findings.

CHAPTER 1000 - INTERFERENCES

1007 Conduct of an Interference Proceeding

No longer specifies that, in an interference proceeding, the testimony periods are separated

from the discovery period and from each other by 30-day intervals.


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CHAPTER 1100 CONCURRENT USE PROCEEDINGS

1101.01 Nature of a Concurrent Use Proceeding

Concurrent use registrations are not available in matters of dilution.

For cases instituted since November 2007, a modified disclosure and conferencing

regime is in place.1101.02 Context for the USPTOs Determination of Concurrent Rights

Although cancellation proceedings cannot be resolved with territorial restrictions, a

registrant facing a cancellation petition is allowed to accept judgment against itself and

then apply as a concurrent user.

1102.02 Bases for Concurrent Registration Board or Court Determination

A party can use a Boards finding in a prior proceeding as a basis for its concurrent use

proceeding.

1103.01 Requirements for a Concurrent Use Application Based on a Board Determination

Lists the five main requirements for concurrent use applications and notes that a

concurrent use applicant must serve the application, specimen, and drawing on each party

listed as a concurrent user.

1103.01(a) Requirements for Concurrent Use: Assertion of Use in Commerce

Applicant can apply for a concurrent registration of a mark with a 1(a) filing basis at the

time of application or in a subsequent amendment.

Concurrent use registrations are not available for applications based solely on 44 or

66(a).

For 1(b) applications, concurrent use not available until allegation of use is filed.

1103.01(d)(1) Requirement that an Application for Concurrent Use Identify the Nature and

Extent of the Restriction Involved New second paragraph explains that a concurrent use application must identify:

o the concurrent lawful use of the mark by others,

o their areas of use,

o goods and/or services on or in connection with which their use is made,

o mode of their use,

o periods of their use, and

o registrations issued to, or applications filed by concurrent users.

1103.03 Concurrent Use Applications Based on Court Determinations

A concurrent use application based on a prior court determination must contain all

elements required for a regular unrestricted registration.

1105 Applications and Registrations Not Subject to Proceeding

A (1)b application cannot be amended to a concurrent use application during the

opposition period.

1106.04 Preparing Concurrent Use Notices

Concurrent use applicants no longer need to provide Board with copies of application for

service on the other parties.

When concurrent use proceeding is instituted solely to issue an order for registrant to


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show cause, Board will not set a trial schedule.

1106.05 Locating Excepted Users

When registrant listed as an excepted user cannot be located, and concurrent use applicant

successfully petitions for cancellation of registration on grounds of abandonment, applicant

can then file a motion to delete reference to registrant in the application. If there are no

other excepted users, applicant can move to amend its applicant to seek a normal,

unrestricted registration.

1107 Answer and Default in a Concurrent Use Proceeding

New second paragraph explains service obligations of a concurrent use applicant.

1108 The Issue to be Determined in a Concurrent Use Proceeding

Common law territorial rights and the rights of parties listed as common law concurrent

users are not before the Board.

1109 Conduct of a Concurrent Use Proceeding

In certain cases involving default by failure to answer, Board may allow a party to prove

its entitlement to registration through less formal procedures.

A new second paragraph discusses ACR, but notes that in many cases concurrent useapplicants will be better off seeking an informal ex parte type procedure (i.e., the less

formal procedure addressed above).

1109.01 Sample Trial Schedules for Cases Commenced On or After November 1, 2007 (new

subsection)

Sets forth and explains three full trial schedules for such cases.

1109.02 Sample Trial Schedules for Cases Commenced Before November 1, 2007 (new

subsection)

Sets forth and explains two full trial schedules for such cases.

1110 Settlement Providing for a Concurrent Use Registration

If Board finds a settlement agreement insufficient, it will typically allow the parties to

submit an amended agreement.

New second paragraph lists several types of provisions that can be included in a settlement

agreement.

New third paragraph provides examples of how concurrent use parties may avoid confusion

caused by internet advertising.

1113.01 Conversion of an Opposition Proceeding to a Concurrent Use Proceeding

After conversion of opposition to concurrent use proceeding, parties switch places

opposition defendant becomes plaintiff, and opposition plaintiff becomes defendant.


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CHAPTER 1200 EX PARTE APPEALS

1201.02 Propriety of Appeal: Premature Final Action

When examining attorney sets forth a new rationale for a previously made requirement or

refusal, it does not constitute a new refusal to which applicant is entitled to reply.

If appeal instituted in response to a premature final action, institution order will be vacated.1201.05 Appeal vs. Petition

Board only considers substantive issues and will not consider the issue of whether a refusal

constitutes clear error.

1203.02(b) Time for Filing Examining Attorneys Brief

Applicant is not entitled to approval simply because Ex. Atty. fails to file a brief.

Examining Attorney can present new arguments or rationale for the existing refusals or

requirements without requesting a remand.

1203.02(c) Time for Filing Applicants Reply Brief

If applicants reply brief convinces Examining Attorney that approval of the application is

warranted, Ex. Atty. no longer required to notify Board before approving the application.

1204 Effect of a Request for Reconsideration After Final Action

If the Examining Attorney has already responded to a request or reconsideration after the

appeal was filed, any subsequent request for reconsideration will be considered a request

for remand, even in the event the request is filed within 6 months of the final refusal.

1205.01 Amending an Application During Appeal In General

The Examining Attorney is allowed to submit evidence relevant to such an amendment.

If applicant submits an amendment more than six months after the final office action, the

Board will consider it a request for remand; request will only be granted upon showing

good cause. What constitutes good cause will vary based on the stage of the appeal; sectionprovides examples of when good cause may be found.

1205.02(a) Request to Divide an Application When the Notice of Appeal is Filed via ESTAA

(new subsection)

New subsection explains processes of filing electronically for a request for divide, both

with and without a request for reconsideration.

1205.02(b) Request to Divide an Application When the Notice of Appeal is Filed on Paper

(new subsection)

New subsection explains processes of filing a request to divide on paper, both with and

without a request for reconsideration.

1206.01 Amendment to Allege Use

Clarifies that a new refusal can be issued in response to information contained within an

amendment to allege use.

1207.01 Submission of Evidence During Appeal

Normally, evidence cannot be introduced after appeal is filed. However, if either party

introduced a portion of an article prior to appeal, the other party is permitted to introduce

the entire article, even after the appeal is filed.


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1208.01 Treatment of Evidence From NEXIS Database or Publications

The probative value of newswire evidence varies, depending on the extent to which

consumers have been exposed to such articles.

Board now considers foreign publications on a case-by-case basis.

Examining Attorney can provide a limited number of articles as a sample of all the articles

available, so long as list is representative; Ex. Atty. must identify samples as representative,

otherwise the Board will assume that no other articles support Ex. Atty.s position.

1208.02 Third-Party Registration Evidence

Explains that the Board generally will not take judicial notice of third party registrations

during the course of an appeal, despite the Federal Circuit having done so in In re

Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681 (Fed. Cir. 2010).

Expired or cancelled registrations are generally only admissible to show that such

registrations issued.

1208.03 Internet Evidence

Website evidence should include URL from which and the date on which it was obtained.

Internet evidence is admissible to show the translation of a word. Foreign website may be of some probative value, depending on the circumstances.

Search engine results are of limited probative value. The mere fact that a particular search

retrieves a long list of results has no probative value, and the Board will not take judicial

notice of such searches.

With respect to online dictionary definitions:

o Acceptable as evidence, provided they are readily available and can be verified.

o Board will only take judicial notice of such definitions if they are from references

that are the electronic equivalent of a print dictionary or have regular fixed editions.

Wikipedia evidence is acceptable, as long the other party has had a chance to rebut it.

1208.04 Judicial Notice

The Board will consider definitions available only in electronic format if put in the record

during the prosecution of the application.

The Board will not take judicial notice of something if its source is unclear.

1208.05 Applicants Own Materials (new subsection)

New subsection explains that such materials may be submitted even in the case of an

intent-to-use application.

1216 Oral Hearing

Explains what is required for an applicant to attend an oral hearing via videoconference.

o

If a party introduces documents at the oral hearing that were not already in the record,they will not be considered by the Board without the other partys consent.

1217 Final Decision

In cases with multiple issues on appeal, the Board will normally consider each of them.

However, in some circumstances it may choose to affirm one refusal of registration and

decline to address the remaining issues.

If the Board reverses the refusal of a 1(b) application, the Examining Attorney can still

issue a later refusal based on the statement of use.