New TTAB rules for trademark oppositions and cancellations take effect on Jan. 14, 2017.
ESTTA Electronic Filing
All submissions must be filed through the TTAB online filing system known as the Electronic System for Trademark Trials and Appeals (ESTTA). Paper filings are no longer permitted unless extraordinary circumstances or technical difficulties would prevent filing online.
Service by email
All pleadings, disclosures and discovery should now be served electronically. Parties need not stipulate to email service as in the past.
The additional 5-day period previously allocated to response periods for documents served by mail has been removed. The response deadline for motions is generally 20 days. Responses to summary judgment motions will still be due at 30 days. The deadline for discovery responses remains at 30 days.
The TTAB will electronically serve notices of opposition and petitions to cancel on the defendant. The plaintiff will no longer be required to serve the complaint on the defendant.
The amended rules also change the limits and timing of discovery. Document requests (aka requests for production of documents), counting subparts, are now limited to 75. Requests for admissions (RFA’s) are also limited to 75. Interrogatories remain capped at 75. A party may serve a general objection if these discovery requests are believed to exceed 75. [37 CFR § 2.120].
Discovery requests must now be served early enough so that responses will be due by the close of discovery, which means that discovery requests should be served at least 30 days before the close of discovery, and preferably even sooner. [37 CFR § 2.120(a)(3)]. Parties can no longer wait until the last minute to serve discovery requests.
Motion filing deadlines
The deadlines for motions to compel discovery, motions to test the sufficiency of responses or objections, and motions for summary judgment are now due prior to the deadline for the plaintiff’s pretrial disclosures. A dispositive motion, such as a summary judgment motion, will automatically stay the proceeding.
Trial and testimony
Witness testimony may now be taken by affidavit instead of live deposition. The opposing party may demand a live deposition to cross examine the affidavit.
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