The Trademark Trial and Appeal Board, or TTAB for short, is the quasi-judicial branch at the U.S. Trademark Office that oversees, amongst other matters, all trademark opposition-, trademark cancellation-, and concurrent use proceedings. Recently, the TTAB has adopted amendments to its rules of practice that mirror the Federal Rules of Civil Procedure, particularly with respect to discovery issues. The changes come into effect on November 1, 2007.
Of significance, the TTAB rules will now require that the plaintiff and defendant in a TTAB proceeding partake in a discovery conference to map out a discovery plan, including the guidelines for taking discovery and timing of discovery activities for the proceeding, and engage in the exchange of mandatory initial disclosures, including an initial production of relevant documents and things, and identification of potential witnesses. These new provisions correlate directly to the Federal Rules. In adopting these changes, the TTAB reasoned that the earlier the parties sit down to discuss the dispute and the earlier they begin to exchange discovery, the earlier the parties will discuss settlement.
The new rules also provide that the TTAB's standard protective order is applicable for all cases before the TTAB. Accordingly, in the absence of a mutual agreement upon protective order, the standard protective order applies. This provision became effective on August 31, 2007.
Another amendment that addressed a subject of much commentary involves the former requirement that a trademark application or registration owner provide a certified copy of the application or registration showing current title and ownership. The USPTO's website makes all of this information available electronically, which begged the question, why make litigants provide a certified copy when the TTAB could take judicial notice of the information provided on the USPTO's website. The amended rule establishes that ownership and title information obtained from the USPTO's website may be submitted in lieu of a certified copy of an application or registration. This provision also came into effect on August 31, 2007.
Vol. 53, June 2010