NEW TTAB RULES

The USPTO published a Notice of Final Rulemaking in the Federal Register on October 7 2016, at 81 F.R. 69950. It sets forth several amendments to the rules that govern inter partes (oppositions, cancellations, concurrent use) and ex parte appeal proceedings before the TTAB (Trademark Trial and Appeal Board).

For all proceedings, including those already in progress on January 14, 2017, some of the changes are:
• All pleadings and submissions must be filed through ESTTA. Trademark Rules 2.101, 2.102, 2.106, 2.111, 2.114, 2.121, 2.123, 2.126, 2.190 and 2.191.
• Service of all papers must be by email, unless otherwise stipulated. Trademark Rule 2.119.
• Response periods are no longer extended by five days for service by mail. Trademark Rule 2.119.
• Deadlines for submissions to the Board that are initiated by a date of service are 20 days. Trademark Rule 2.119. Responses to motions for summary judgment remain
30 days. Similarly, deadlines for responses to discovery requests remain 30 days.
• All discovery requests must be served early enough to allow for responses prior to
the close of discovery. Trademark Rule 2.120. Duty to supplement discovery
responses will continue after the close of discovery.
• Motions to compel initial disclosures must be filed within 30 days after the deadline
for serving initial disclosures. Trademark Rule 2.120.
• Motions to compel discovery, motions to test the sufficiency of responses or
objections, and motions for summary judgment must be filed prior to the first
pretrial disclosure deadline. Trademark Rules 2.120 and 2.127.
• Requests for production and requests for admission, as well as interrogatories, are
each limited to 75. Trademark Rule 2.120.
• Testimony may be submitted in the form of an affidavit or declaration. Trademark
Rules 2.121, 2. 123 and 2.125.
• New requirements for the submission of trial evidence and deposition transcripts.
Trademark Rules 2.122, 2.123, and 2.125.
• For proceedings filed on or after January 14, 2017, in addition to the changes set
forth above, the Board's notice of institution constitutes service of complaints.
Trademark Rules 2.101 and 2.111.