The Trademark Trial and Appeal Board (TTAB) Rules of Practice have been amended and go into effect January 14, 2017 for all proceedings, including those then-pending. The changes include, among other things, allowing submission of testimony by declaration (subject to the other party's ability to cross-examine the declarant via live deposition), limiting the number of discovery requests allowed, and shortening the window for discovery. They also include eliminating the need for parties to serve Notices of Opposition or Petitions to Cancel on one another, which will now be handled by the Board via electronic service.
Allowing for Testimony by Declaration
Prior to the rule changes, submission of testimony in TTAB proceedings was only allowed by deposition unless otherwise agreed to by the parties. The new changes, however, allow for the option of introducing testimony by declaration—a less costly and usually more convenient way of introducing evidence. This change aligns with the express purpose of the amendments, which is to promote efficient trial procedure. It also comes in the wake of the Supreme Court’s 2015 B&B Hardware decision, which held TTAB findings may, under the right circumstances, have preclusive effect on subsequent court actions. Thus, given the potential long lasting effect of Board decisions, evidence submission has heightened importance, and should be more thorough.
Narrowing the Period of Discovery
The new rules also limit requests for admissions and requests for production to 75 per party, and mandate all discovery be finalized within six months. Parties will no longer be allowed to serve discovery requests on opposing parties up to the last day of the six-month period, knowing the responses would be due past the deadline. Instead, all discovery requests must be served thirty days prior to the end of the discovery period. With the tightened window, firms and practitioners must be particularly mindful to commence discovery early to comply with the shortened window for requests.
To view a chart summary of all changes, click here.