Last week, the U.S Patent and Trademark Office (USPTO) announced a proposal for the first major rule changes to the Trademark Trial and Appeal Board’s (TTAB) practices for the first time in nearly a decade.  Interested parties have until June 3 to provide feedback.

Perhaps the most significant proposed change would allow for parties to submit trial testimony by affidavit rather than holding depositions.  Currently, such a move is frequently made during cases, but only when both parties stipulate to allow it. The rule change would allow parties to unilaterally opt to submit testimony via affidavit or declaration.  Opponents who want to challenge written testimony can still do so because the proposed rules expressly provide them with the right to orally cross-examine witnesses.  The proposed rule changes also would require everything filed with the TTAB and all service of filings on the other side be done so electronically.

The new rules also attempt to reduce the time and costs for litigants by streamlining the process of discovery before the TTAB with a wide range of changes.  For example, the proposal would cap the number of document production requests and requests for admissions (currently without limit), and would require that discovery requests be served early enough in the proceedings that they can be answered and documents can be produced before the close of discovery.

The TTAB’s proposal also would import the “proportionality” principles that were recently added to the Federal Rules of Civil Procedure — a general policy that discovery in TTAB cases should be reasonable based on the relative sizes of the litigants.   This is an important change to keep in mind for big companies fighting smaller rivals before the TTAB.

We will continue to monitor the TTAB’s proposed rules and keep you abreast of the final rules before they go into effect.  In the meantime, please contact us if you have any questions.

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