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Guide to Changes in the Trademark Trial and Appeal Board Manual of Procedure (TBMP), 3rd Edition

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Introduction
In May 2011, the Trademark Trial and Appeal Board (TTAB) released the long-awaited 3rd Edition of its Trademark Trial and Appeal Board Manual of Procedure (TBMP).1 This guide summarizes and highlights the most significant changes included in the 3rd Edition of the TBMP, providing particular attention to new and significantly revised sections. The TBMP was created to serve as a comprehensive and ready resource for practitioners.2 Though the TBMP is neither a binding authority nor a substitute for controlling statutes, rules, or decisional law, it contains invaluable depth and details regarding the Boards practice and procedure. The 3rd Edition provides a well deserved update of the Manual. Following the release of the 1st Edition in 1995, the 2nd Edition of the TBMP was published on May 1, 2003 and revised once, in March of 2004. During the years between the 2nd and 3rd Editions, the TTAB issued more than 300 precedential decisions as well as a significant package of rules changes that took effect for proceedings commenced on or after November 1, 2007. The 3rd Edition incorporates amendments to the Trademark Rules of Practice, the Trademark Act, and the applicable Federal Rules as of November 15, 2010. Many of the most significant changes in the 3rd Edition relate to five topics: 2007 changes to the Trademark Rules of Practice; using ESSTA for electronic filing of TTAB documents; Accelerated Case Resolution (ACR) options; expanded precedents concerning Madrid Protocol applications; and expanded details regarding concurrent use proceedings. At more than 1,300 pages, the 3rd Edition is the most comprehensive version of the TBMP to date. Its creation was a massive undertaking lasting several years and requiring the efforts of many Administrative Trademark Judges and other staff members. The TTAB has indicated its intent to provide more frequent updates in the future. The TTAB also welcomes comments and suggestions regarding the manual, which may be sent to TBMPcomments@uspto.gov. In the pages that follow, we have summarized most of the additions and changes included in the 3rd Edition. We have underlined or otherwise emphasized changes that we consider to be particularly significant or interesting. Sections that were unchanged in the 3rd Edition have been omitted from this guide. Though many of these changes may already be well-known to frequent TTAB practitioners, we expect that a quick review of this document will bring to light several previously unknown or long-overlooked changes, even among the most experienced TTAB veterans.

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The full text of the TBMP is available at http://www.uspto.gov/trademarks/process/appeal/Preface_TBMP.jsp Chief Administrative Trademark Judge J. David Sams, Preface to TBMP (2nd Ed.), May 1, 2003.

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We welcome your comments and feedback via email at erik@erikpelton.com. Of course, this ome guide is for informational purposes only and should not be considered legal advice under any circumstances.

Acknowledgement
This guide would not have been possib without the considerable efforts of Michael Melmer, possible Melmer 3 J.D. He has been an invaluable resource to the firm for the last 18 months, and we look forward to his many successes as he embarks on his legal career.

Erik M. Pelton October 16, 2011

http://www.linkedin.com/pub/michael http://www.linkedin.com/pub/michael-melmer/20/473/333

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Table of Contents

CHAPTER 100 GENERAL INFORMATION CHAPTER 200 EXTENSIONS OF TIME TO OPPOSE CHAPTER 300 - PLEADINGS CHAPTER 400 - DISCOVERY CHAPTER 500 STIPULATIONS TO MOTIONS CHAPTER 600 WITHDRAWAL; SETTLEMENT CHAPTER 700 TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE CHAPTER 800 BRIEFS ON CASE, ORAL HEARING, FINAL DECISION CHAPTER 900 REVIEW OF DECISION OF BOARD CHAPTER 1000 - INTERFERENCES CHAPTER 1100 CONCURRENT USE PROCEEDINGS CHAPTER 1200 EX PARTE APPEALS

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CHAPTER 100 GENERAL INFORMATION 101.03 Citing Non-Precedential Decisions and the Decision of Other Tribunals Non-precedential decisions, while not binding on Board, may now be cited for whatever persuasive weight to which they may be entitled. Previously, only precedential decisions were citable before the TTAB unless a non-precedential decision happened to involve one of the parties to the pending proceeding. Any cited non-precedential decisions must be appended by the citing party to the motion or brief in which it is cited. Decisions from tribunals other than the TTAB may be cited to the extent allowed and for the purposes permitted by the tribunal that issued the decision. 101.05: The Purpose and Authority of the TBMP New subsection describing the TBMP itself, noting that while it is written as a guide for both Board and practitioners, it does not modify, amend, or serve as a substitute for any statutes, rules or decisional law and is not binding upon the [TTAB]. Also notes that the TBMP is not a comprehensive reference on all aspects of the procedural or substantive law applicable to Board proceedings and urges parties to conduct additional research as appropriate. 106.03 Form of Submissions All references to submission of materials to Board via CD-ROM have been removed. Audio and video tape exhibits may not be filed electronically. 110.09 Electronic Filing Using ESTTA (new subsection) 110.09(a): parties should allow sufficient time when dealing with ESTTA. 110.09(b): requests for extensions of time to oppose 66(a) applications, and oppositions to such applications, must be filed through ESTTA. 110.09(c): general ESTTA instructions, file formats allowed, and limitations on file size. 110.09(d): explanation of service of papers filed through ESTTA. 110.09(e): resources for help with ESTTA. 113.05 Additional Time for Taking Action After Service by Mail 5-day enlargement period does not apply to electronic service; 3-day enlargement in the FRCP does not apply to Board proceedings. Added 5 additional days to the response period before applying weekend/holiday rule. 5-day enlargement not available for deadline for filing briefs. 118.02 Fees Payable in Advance If filing through ESTTA, the document will not be transmitted without payment, and no filing date will be accorded. If filing on paper with a partial but insufficient payment of the fee, a party will not be refused a filing date provided that the fee paid is sufficient for at least one opposer or petitioner to proceed against at least one class. 118.03 Methods of Payment Paying the fee is a required part of ESTTA filing process; payments can be made via credit card, electronic funds transfer, or USPTO deposit account.

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120.01 Access to Non-Confidential Files Explains current process for requesting paper files and making copies of paper files at the USPTO. 120.02 Access to Confidential Files Materials filed under seal pursuant to Boards standard protective order are not made available for public inspection. Confidential materials must be designated as such when filed. 120.03 Access to the Files of Terminated Proceedings Paper files of cancelled registrations, expired registrations, and abandoned applications are now destroyed after three years (formerly after only two years).

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CHAPTER 200 EXTENSIONS OF TIME TO OPPOSE 202.01 Time for Filing an Extension of Time to Oppose In General A final extension request (from 120 days after publication) can only be granted for 60 days, and no less, and can only be granted with consent of Applicant or upon a showing of extraordinary circumstances; consent of Applicant no longer must be written. If the final request is for less than 60 days, even with consent, it will be denied; if it is for less than 60 days, and there are extraordinary circumstances and consent, it will be granted for 60 days (not the shorter requested period). 203.01(b) Electronic Filing of Extensions of Time to Oppose (new subsection) Explains the use of ESTTA for filing extensions of time to oppose; includes website address for forms, e-mail address for those with technical questions, general information and instructions. 207.03 Extensions Beyond 120 Days from Publication Extraordinary circumstances sufficient to justify such an extension include fire, extreme weather, or death, but do not include settlement negotiations between parties, filing of a letter of protest by potential opposer, pendency of a post-publication amendment, or civil litigation between parties. 211.01 Request for Reconsideration The time for filing opposition or further extension will not be suspended pending determination of request for reconsideration. 211.03 Petition to the Director The time for filing opposition or further extension will not be suspended pending decision of a petition to the Director. If the decision on a petition to the Director is not favorable to opposer and opposition is thus dismissed, fee is no longer refunded. 212.01 Jurisdiction to Consider Amendment to an Application During or After Extension Any amendment proposed by applicant before commencement of an inter partes proceeding must be filed electronically through TEAS or via fax. Any inquiry regarding status of an amendment must be sent via e-mail to TMPostPubQuery @uspto.gov (formerly, users were instructed to send such proposals to the Boards attention). Board will not suspend the time for filing an opposition or extension pending the consideration of an amendment. o However, pendency of an amendment may constitute good cause, but it will not amount to extraordinary circumstances to justify a further extension. 212.02 Conditions for Approval of Post-Publication Amendment Amendments to applications filed under Section 44 or 66(a) no longer listed as examples of applications that can be converted to a concurrent use registration after publication, but before registration. 212.03 Form of Amendments Papers associated with applications that are subject of a request for extension of time should now be submitted to Petitions Office, rather than the Board. 212.05 Action by Board During the Consideration of an Amendment
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Board will normally suspend an application pending the consideration of an amendment, upon motion by either party. When filing notice of opposition through ESTTA, motion to suspend should not be filed before receipt of an opposition proceeding number. 213 The Effect of Restoration of Jurisdiction to the Examining Attorney Board will not suspend the time for filing a notice of opposition or extension while jurisdiction is restored to examining attorney. Opposition filing fee will not be refunded when: o opposer decides to dismiss opposition after republication of application, or o registration is denied after application is restored to examining attorney. 214 The Effect of Republication When the mark is republished by an order of the Examining Attorney, the opposition will be dismissed, but the filing fee will not be refunded. An opposition filed in response to an inadvertent republication will not be considered; if it has already been instituted, it will be dismissed. 215 The Effect of a Letter of Protest Letters of protest alleging knowledge bearing on the registrability of a mark will typically be denied as untimely if filed more than 30 days after publication. Once a mark is published, opposition can be instituted regardless of when the letter of protest was filed. Board will not suspend time for notice of opposition or extension request pending the outcome of a letter of protest. Filing a letter of protest does not give a potential opposer good cause for an extension of time. 216 Inadvertently Issued Registrations Board will not suspend the time for notice of opposition or extension request pending cancellation of an inadvertently issued registration. 218 Abandonment of an Application An opposition filed during or after the abandonment of an application will not be considered, and the filing fee will be returned. If an opposition is filed before Board learns of applications abandonment, opposition will be dismissed as a nullity and the fee will be refunded. 219 Amendments to Allege Use If a late-filed amendment to allege use or a premature statement of use is filed, it will not be considered (though any fee paid will still be refunded). Board does not suspend time for filing notice of opposition or extension request while considering an amendment to allege use.

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CHAPTER 300 - PLEADINGS 302 Commencing a Proceeding Proof of service on applications owner is required as part of notice of opposition. If service copy is undeliverable, opposer must inform Board within 10 days. 303.05(d) New subsection: The Misidentification of a Defendant When an initial pleading accidentally identifies the wrong applicant or registrant, proceedings nevertheless go forward and the correct party may be substituted later. 304 Proceeding Involving Multiple Classes If proceeding is filed against application or registration with multiple classes, and there are sufficient fees for some, but not all classes, fees will be applied as detailed in 37 CFR 2.101(d)(3)(ii)-(iii). If fees are insufficient to proceed against any of the classes, proceeding will not be instituted at all. 306.01 Time for Filing a Notice of Opposition After the period for filing opposition has ended (including any extensions of time), opposition may not be amended to add opposed goods or services. After opposition is instituted, it may not be amended to correct an incorrect serial number, but Board may be able to correct these errors if opposer notifies Board during opposition period, before opposition has been filed. 307.02(a) - Petitions That Must Be Filed Within Five Years from the Date of Registration Removed genericness claim made to only a portion of the mark, but added deceptive misdescriptiveness as permissible grounds for filing a petition to cancel more than five years after registration. If petition to cancel is served on registrants attorney rather than registrant, Board may not dismiss petition to cancel (and petitioner can be given a new filing date) if petitioner: o Serves registrant within five years of issuance date of challenged registration, and o Amends proof of service to show service on registrant. 309.02(c)(1) and (2) Service of a Notice of Opposition on Applicant (new subsections) Former section 309.02(c) has been split into two new subsections, describing in detail the service requirements for plaintiffs in opposition and cancellation proceedings, respectively. 309.03(a)(2) The Elements of a Complaint - In General Amended to make it clear that factual allegations in pleadings are not evidence of matters alleged except to the extent that they may be deemed to be admissions against interest. 309.03(b) Establishing Standing in a Complaint Expanded list of examples where a real interest in the proceeding and a reasonable belief of damage may be found to include cases where plaintiff belongs to class of potential purchasers it alleges are disparaged or brought into contempt or disrepute. 309.03(c) Grounds for a Complaint Specifies that plaintiff in a 2(d) cancellation/opposition proceeding must specifically plead any registrations on which it is relying and may not rely at trial on unpleaded registrations. Immoral or deceptive matter added as grounds for opposition or cancellation under 2(a). Allegation that a sound mark is not inherently distinctive and has not acquired distinctiveness added to grounds for opposition or cancellation.
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Nonuse for three consecutive years is prima facie evidence of abandonment. 309.03(d) - Partial Opposition or Partial Cancellation A party can petition for the disclaimer of a generic term that forms only a portion of a mark as long as registration is less than five years old. 309.04 - Defects in a Complaint That May Affect the Institution of Proceeding If plaintiff misidentifies the serial or registration number in an opposition or cancellation, and proceeding is instituted against that incorrect number, filing fee will not be refunded. 310.02 When the Defendants Copy of an Institution Order is Returned as Undeliverable When notification of opposition proceeding is returned as undeliverable, notice may be given by publication in the Official Gazette (formerly this only applied to cancellations). 311.02(a) Admissions and Denials in an Answer A general denial by defendant now covers jurisdictional grounds. 311.02(b) Affirmative Defenses in an Answer If defendant offers to amend its identification of goods or services in its answer as part of an affirmative defense, defendant should also file a motion with Board in order to bring it to Boards attention. The fair use defense in The Trademark Act has no applicability in inter partes proceedings before Board. In cancellation proceedings, affirmative defenses of laches and acquiescence start to run from the date of registration, unless there is actual knowledge before close of the opposition period. 312.01 Default In General The time permitted for defendant to show cause why default judgment should not be entered has been extended from 20 to 30 days. When defendant is in default, parties obligations to conference and make initial disclosures are effectively stayed. If default is set aside, Board will reset deadlines. 313.01 Counterclaims In General In order to counterclaim for partial cancellation of a registration, one must allege (1) partial cancellation will avoid a likelihood of confusion, and (2) registrant does not use the mark on goods or services for which deletion is sought, unless counterclaiming to delete goods or services on grounds of abandonment, in which case one does not need to allege that likelihood of confusion will be avoided. 313.06 Answer to a Counterclaim Proof of service added to required elements for counterclaim. 315 Amending Pleadings An opposition against a 66(a) registration may not be amended to add an entirely new claim or to add an additional claimed registration to a previously stated 2(d) ground. An opposition against a 44 or 66(a) application may not be amended to add additional goods or services subject to opposition. 317 Exhibits to Pleadings New exception to general rule that exhibits to a pleading are not evidence: a current printout from TARR or TESS showing current status and title of registration.
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CHAPTER 400 - DISCOVERY 401 Introduction to Disclosures and Discovery Notes that the current Federal Rules dealing with automatic disclosures and discovery conferences: o do not apply to cases filed before November 1, 2007, but o do apply (in a modified form) to cases filed after that date. All parties involved in cases filed on or after November 1, 2007 are required to: o conduct a discovery conference, and o make initial, expert, and pretrial disclosures. 401.01-05 New Discovery Subsections These new subsections describe in greater detail the procedures associated with discovery conferences (401.01), initial disclosures (401.02), expert disclosures (401.03), modification of disclosure obligations (401.04), and signature and formatting requirements associated with disclosures (401.05). 401.06 Other Requirements Under the Boards Disclosure Regime (new subsection) Initial disclosures are a prerequisite for filing discovery requests or motions for summary judgment o Except motions dealing with the Boards jurisdiction or issue/claim preclusion. 402.02 Limitations on Right to Discovery and Electronically Stored Information (ESI) The discovery of confidential information is subject to the terms of Boards standard protective order. Parties are not required to produce ESI not reasonably accessible because of undue burden or cost. If the other party moves to compel such ESI, burden is on withholding party to demonstrate such inaccessibility; if this showing is made, burden shifts to other party to show good cause. 403.01 Timing of Discovery In General A new second paragraph describes the procedures for modifying discovery and trial obligations. Parties have no obligation to respond to discovery requests served before initial disclosures. 403.02 Time for Service of Discovery Requests and Taking of Depositions Discovery requests cannot be served before initial disclosures. 403.03 Time for Service of Discovery Responses Parties cannot object to discovery requests served late in the discovery period on the grounds that the responses would be due after the close of discovery; however, parties can object on other valid grounds. 403.04 Extensions of Discovery Period, Time to Respond to Discovery Requests and Disclosures Explains the differences between requests to extend time (1) to make initial disclosures, and (2) to make expert disclosures. 403.05(b) To Facilitate Introduction of Produced Documents
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A party receiving documents through (1) disclosures or (2) requests for production can serve a request for an admission of genuineness if the discovery period has not yet expired. 404.02 Who Can be Deposed in a Discovery Deposition Deposition of a nonparty residing in the US can be taken: o By subpoena, or o On notice alone, if witness voluntarily agrees. 404.03(a)(2) Discovery Deposition of a Person in the US Stresses that the Board has no jurisdiction to enforce subpoenas compelling attendance at a deposition parties must seek enforcement through the relevant District Court. 404.05 Notice of Discovery Deposition When a party seeks to take a discovery deposition, the impending end of that partys discovery period is not an excuse for failing to provide reasonable notice of the deposition. New paragraph explains the process for requesting documents from a party deponent. 404.06 Taking a Discovery Deposition Parties can stipulate to conduct depositions via videoconference, but the videos still must be transcribed to be submitted as evidence. 404.06(a)-(d) (new subsections) describe: o the process of deposing natural persons as individuals and as corporate representatives; o the length of a deposition (one 7-hour day, by default); and o circumstances under which a witness can be deposed more than once. 404.07(f) Objections to Deposition Questions Any objections not maintained in a brief at the final hearing may be considered waived by the Board. 404.08 Discovery Deposition Objections (new subsection) Lists the types of objections that can be made to the taking of a discovery deposition. 405.01 Interrogatories When Permitted and By Whom Clarifies that interrogatories can only be served with or after initial disclosures, but the answers to interrogatories can be served after discovery. 405.03(d) Interrogatories Limit on Number The Board will count combined questions as separate interrogatories. 405.04(a) Responses to Interrogatories The five extra days allowed to respond to physically mailed interrogatories does not apply to those served electronically. 406.01 Requests for Production: When Permitted and By Whom Lists the factors considered for imposing sanctions for non-compliance with discovery resulting from a conflict with foreign laws.

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406.04(b) Responses to Requests for Production: Place and Form of Production (new subsection) If a request for electronically stored information fails to specify the form in which information should be produced, it should be produced in the form in which it is ordinarily maintained or in a reasonably usable form. Producing party can translate electronically stored information into reasonably usable form, but not if doing so would make the information more difficult for the other party to use. 407.01 Requests for Admission: When Permitted and By Whom In cases commenced on or after November 2007, RFAs must be served with or after initial disclosures. 407.03(a) Reponses to Requests for Admission: Time for Service of Responses RFAs are deemed admitted if there is no response within 30 days (or by an alternate, agreed-upon date). 407.04 Effect of Admission The Board may, on motion, reopen the time to respond to admission requests in order to allow amendments (or to respond if they were deemed admitted by a failure to respond). 408.01(a)-(c) Duty to Cooperate (new subsections) These subsections detail parties various obligations to one another during discovery. 408.03 Duty to Supplement Disclosures and Discovery Responses Expanded section, explaining the requirements for disclosures and discovery and possible sanctions that may apply. 409 Filing Discovery Requests, Discovery Responses, and Disclosures With Board Initial and expert disclosures should not be filed with the Board, unless the conditions listed in this section are met. Parties should file notices of intention to use expert testimony with the Board. 410 Asserting Objections to Requests for Discovery, Motions Attacking Requests for Discovery, and Disclosures For cases filed on or after November 2007, parties can object to propounded discovery on the ground of failure to serve initial disclosures. New paragraph explains the process of filing motions to compel when seeking to object to or test the sufficiency of disclosures. 411.01 Remedy for Failure to Provide Disclosures or Discovery: Initial and Expert Testimony Disclosures (new subsection) Discusses motions to compel the service of expert and initial disclosures. 411.02 Remedy for Failure to Provide Disclosures or Discovery: Interrogatories or Requests for Production A party cannot seek the immediate entry of sanctions unless it first files a motion to compel or the responding party expressly states that there will be no response. 411.03 Remedy for Failure to Provide Disclosures or Discovery: RFAs As long as a request is admitted or denied, the sufficiency of that response should not be challenged by the other party.
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412.01 The Boards Standard Protective Order Includes lengthy new discussion of the standard protective order and other protective orders which can be raised on motion. 412.02 Modification of Boards Standard Protective Order Explains how and by whom the order can be modified. 412.02(b) Modification for Pro Se Parties and In House Counsel (new subsection) This subsection suggests modifications in the protective order when pro se parties or in house counsel are involved. 412.04 Filing Confidential Materials with the Board When confidential material is filed with the Board, a redacted public version must also be filed confidentiality may be waived if the redacted version is not filed. 412.06 Protective Orders Limiting Discovery (new subsection) Subsection (a) describes motions to protect witnesses from being deposed. Subsection (b) describes motions for protection from oppressive discovery. 413.01 Telephone Conferences for Motions Relating to Discovery Describes the types of motions appropriate to consider in a phone conference. 414(22) Selected Discovery Guidelines New paragraph: Taking of discovery on matters concerning the validity of a pleaded registration is not objectionable on the basis that it constitutes a collateral attack.

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CHAPTER 500 STIPULATIONS TO MOTIONS 501.02 Filing Stipulations The following stipulations were added to the list of those that require action or consideration by the Board: o to alter the length of the discovery period or disclosure obligations occurring during the discovery period, o to waive required initial disclosures, or o to reschedule pretrial disclosures and subsequent trial dates. 502.01 Available Motions Changed to expressly state that the Board will not consider motions in limine. 502.02(a) Form of Motions and Briefs on Motions Parties cannot file motions via email unless requested to do so by the Board. 502.02(b) Briefs on Motions Tables of contents, authorities, and cases are not required in briefs on motions. If included, they count toward the page limit. 502.04 Determination of Motions Clarifies that when an uncontested motion is filed, the Board will not consider it to be conceded until sufficient time has passed to file a brief in opposition. 503.01 The Time for Filing a Motion to Dismiss for Failure to State a Claim Clarifies that a motion to dismiss for failure to state a claim can be raised during trial. Filing motion to dismiss tolls both the time to answer and time for the discovery conference when applicable. 503.02 The Nature of a Motion to Dismiss for Failure to State a Claim A party must state a claim to relief that is plausible on its face to avoid dismissal. 503.04 Matters Outside the Pleading Submitted on Motion to Dismiss The Board generally will not consider a motion to dismiss that relies on matters outside the pleading to be a motion for summary judgment. 505.02 The Time for Filing a Motion for a More Definite Statement When such a motion is filed, subsequent dates, including discovery conference, are stayed. 506.02 The Time for Filing a Motion to Strike Matter from the Pleading If a motion to strike matter from the pleading is filed before discovery conference, motion can be discussed at the discovery conference if the parties request Board participation. 507.01 Motion to Amend a Pleading: In General Added new exception to the rule that pleadings can generally be amended in the same manner as in a District Court proceeding: after the close of the time for filing an opposition, the notice of opposition may not be amended to add to the goods or services opposed. 507.02 Motion to Amend a Pleading: General Rules Regarding Amendments In an inter partes proceeding, a party can amend a pleading once as a matter of right within 21 days of serving it. Once the time for filing an opposition to a 66 application has ended, the notice of opposition cannot be amended to add goods or services.
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508 Motion for Default Judgment for Failure to Answer If the Board issues a notice of default on its own initiative because defendant has not answered a complaint, defendant will be allowed time to show cause why default judgment should not be entered (Board removed the rule stating that defendant had exactly 20 days to respond). 509.01 Motions to Extend or Reopen Time: Nature of the Motions Normally, these motions require a showing of excusable neglect, however, a new exception to the rule occurs when defendant is in default for failing to provide a timely answer in this case, a showing of good cause is required. 509.01(a) Motions to Extend Time The Board will not extend the time for filing a reply brief. 510.02(b) Resumption of a Proceeding Suspended Pending the Outcome of a Civil Proceeding When civil proceeding is resolved, the interested party should notify the Board as soon as possible, at which point Board will issue a show cause order (under the old rules, no such order issued). If Board is not notified of any updates in the pending civil case, it will require a status update after one year (formerly two years). 510.03(a) Suspension for Other Reasons The Board will suspend a proceeding with respect to all matters not germane to the motion when a party files a motion to compel initial disclosures, expert disclosures, or discovery (formerly, rule only listed discovery). 510.03(b) Resumption for Other Reasons If proceeding is suspended due to bankruptcy, Board will require an update on the status of bankruptcy every year (formerly every two years). 512.04 Misidentification of a Party New final paragraph lists the situations in which an applicant is allowed to correct a defect in identifying itself. 517 Motion to Strike Brief on Motion Expressly states that the Board will not strike an entire brief in response to evidentiary objections. 521 Motion to Quash a Notice of Deposition Added to list of grounds for filing a motion to quash a notice of deposition: o the deposing party seeks to take the testimonial deposition of a witness who was not identified in that partys pretrial disclosures.

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523.01 Motion to Compel Disclosure or Discovery In General In addition to typical motions to compel discovery, parties can file motions to compel: o attendance at a discovery conference; and o to supplement inadequate disclosures. Compelling Answers to Deposition Questions: o If deposition is not pursuant to a subpoena: The objection should be stated, but objecting party should still provide an answer. o If deposition is pursuant to a subpoena: Propounding party can move the local Federal District Court to compel answer. Without such an order, the propounding party must complete the deposition and then file a motion to compel with the Board. Failing to provide initial disclosures bars that party from: o Propounding discovery requests, and o Filing a motion to compel responses to improperly propounded discovery requests. 523.03 Time for Filing a Motion to Compel Disclosure or Discovery Motions to compel disclosures must be filed before the close of the discovery period. 525 Motion to Withdraw or Amend an Admission If a party fails to respond to a request for admission and wants to avoid admission by default, that party can: o Move to reopen its time to serve responses, in which case it must show excusable neglect; or o Implicitly acknowledge that its admissions are late and move to withdraw and amend them pursuant to Fed. R. Civ. P. 36(b). 527.01(a) Motion for Sanctions for Failure to Comply with Board Discovery Order There is no requirement that the parties engage in a good faith effort to resolve the dispute before filing a motion for discovery sanctions; however, noncompliance with a motion to compel is a prerequisite for sanctions for failure to serve initial disclosures. 527.01(f) Motion for Discovery Sanctions: Motions in Limine (new subsection) The Board will not grant a motion to prospectively exclude evidence that might be introduced at trial and that might be inconsistent with discovery responses or other material not provided during discovery; parties are advised instead to file a motion to strike after the evidence has been introduced. 528.03 Suspension Pending the Determination of a Motion for Summary Judgment While Board usually suspends proceedings when a motion for summary judgment is filed, it typically will not do so if the motion is untimely. New third paragraph explains that suspensions toll the time for making required disclosures. 528.05(a) Summary Judgment Evidence In General A new third paragraph describes the situations in which: o Judicial notice may be taken, and o Supplemental legal authority can be submitted.

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528.05(a)(2) Accelerated Case Resolution (new subsection) This is an entirely new section that explains the ACR process, when it is available, and distinguishes it from moving for summary judgment. 528.05(e) Summary Judgment Evidence: Printed Publications and Official Records New fourth paragraph explains when internet evidence is considered self-authenticating (formerly stated that internet evidence is not self-authenticating). New sixth paragraph explains that printed publications are only admissible for what they show on their face, and not as proof of the matter asserted. 528.05(f) Summary Judgment Evidence: Testimony from Another Proceeding When parties use testimony from another proceeding for summary judgment purposes, they can stipulate to its use at trial as well. 528.07(a) Unpleaded Issues Not a Basis for Summary Judgment If a party amends a pleading and files a summary judgment motion based on new allegations, any such new allegations will be considered denied if no new answer is made of record. 533.02(b) Motion to Strike Trial Testimony Deposition on Ground of Failure to Disclose Witness in Expert or Pretrial Disclosures (new subsection) Explains parties responsibilities with respect to expert and pretrial disclosures and that any motion to strike deposition on grounds of failure to disclose must be done immediately after the deposition is completed. 536 Motion for Order to Show Cause Under Rule 2.128(a)(3) [Plaintiff trial brief not filed] Even if such an order is discharged, the Plaintiff still has to file a motion to reopen time in order to submit its brief. 543 Motion For Reconsideration of Final Decision A new sixth paragraph explains that a second such request does not toll the time for: o Filing an appeal, or o Commencing a civil action.

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CHAPTER 600 WITHDRAWAL; SETTLEMENT 602.01 Withdrawal by Applicant When multiple oppositions are brought against a single application and defendant files an abandonment in one opposition, judgment will be entered against defendant in all of the other oppositions in which the defendant did not obtain opposers consent. Clarifies that failure of the applicant to respond to an office action (as described in the former version of Rules) is not the only way in which an application can be abandoned prior to its publication. 602.02(a) Withdrawal by Respondent: Surrender or Voluntary Cancellation of Registration When voluntarily surrendering a registration, parties are no longer required to provide the original registration certificate. A 66(a) registration can be surrendered either with the International Bureau or the USPTO (formerly only with the IB). New sixth paragraph explains partial restrictions of 66(a) registrations. 602.02(b) Withdrawal by Respondent: Cancellation Under 8 or 71; Expiration Under 9 or 70 If respondent does not intend to moot the proceeding but its registration still expires or is cancelled, and the petitioner chooses to go forward with the proceeding, the expiration does not remove actual or constructive notice of the registration. 603 Withdrawal by Interference or Concurrent Use Applicant Explains that applications based solely on 44 or 66(a) cannot be part of a concurrent use proceeding. 605.02 Suspension for Settlement Negotiations Between the filing of the answer and the discovery conference, Board usually will not find good cause to suspend proceedings or extend the schedule.

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CHAPTER 700 TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE 702.01 Pretrial Disclosures (new subsection) Discusses pretrial disclosures: what needs to be disclosed, types of relevant objections available, and ramifications for failing to make pretrial disclosures. 702.04 Accelerated Case Resolution (new subsection) 702.04(a) introduces ACR as alternative to traditional proceedings, outlining its structure, purpose, and implementation, and lays out types of cases most appropriate for ACR. 702.04(b) explains summary judgment model of ACR, wherein both trial and briefing phases of the proceeding occur in a single phase (summary judgment briefs, together with any accompanying evidence, encompass both the trial and briefing periods). 702.04(c) explains that where the parties have already filed summary judgment briefs, the Board can invite the parties to convert case into an ACR proceeding, but this requires parties to stipulate that Board may resolve any outstanding genuine issues of fact. 702.04(d) explains the stipulated record and trial briefs model of ACR, where final decision is made after parties stipulate to most or all of the evidentiary record essentially an abbreviated trial on the merits. 702.045(e) explains that the types of stipulations used in ACR are available in any Board proceeding. 702.05 Overly Large Records (new subsection) Notes a recent increase in irrelevant and/or cumulative evidence introduced during Board proceedings, and that the Board views parties who engage in this practice with disfavor. 703.01(b) Oral Testimony Depositions: Form of Testimony When parties agree to submit testimony via affidavit or declaration, they can also stipulate that such witnesses may be cross-examined in person. 703.01(n) Correction of Errors in Oral Testimony Depositions If a party discovers errors in a deposition and Board grants a request to correct those errors, that party should file a correct transcript with Board (formerly, the party had to send a representative to Board offices to manually correct the transcript). 703.02(g) Depositions on Written Questions: Examination of Witness Adverse parties are allowed to attend the taking of depositions, but may not participate any attempt to engage the witness can result in sanctions. 704.03(a) Introducing into Evidence the Application or Registration That is the Subject of the Proceeding While the application or registration file which is the subject of the proceeding is automatically part of the record, o the specimens are not considered evidence unless established by competent evidence, and o the date of use is not considered evidence unless identified and introduced as evidence o (formerly the allegations, documents, and exhibits also had to be established by competent evidence). Evidence involving acquired distinctiveness is automatically considered evidence.
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704.03(b)(1)(A) Introducing into Evidence a Partys Own Registration Which is Not the Subject of the Proceeding The Board will not take judicial notice of such registrations. If a plaintiff pleads ownership of an application, and that application registers during the proceeding, the party does not have to amend the pleading to rely on the registration. o However, if it registers after the closing of the plaintiffs testimony period, the Board will not consider the registration. 704.03(b)(1)(B) Introducing Third Party Registrations into Evidence Parties can now introduce third party registrations into evidence through a notice of reliance by filing a printout of the registration (formerly required plain copy of the registration). 704.04 Introducing into Evidence Statements and Things in the Application or Registration Clarifies that date of use and specimen found in the subject application are not automatically considered evidence. 704.05(a) Introducing Exhibits to Pleadings into Evidence Such exhibits are not evidence unless properly introduced during testimony period; this section clarifies the first exception to the rule and adds a second exception: o First exception: current status and title copy of plaintiffs pleaded registration this exception is amended to clarify that the copy must be issued by the PTO. o Second exception: current printout from the PTO database showing the current status and title; a new third paragraph explains this exception in more detail. 704.05(b) Introducing Exhibits to Briefs into Evidence Evidence which has already been properly filed should not be re-filed with a partys brief. 704.08 Introducing Printed Publications into Evidence Section divided into three new subsections: o Subsection (a) addresses traditional printed publications available to the general public; o Subsection (b) addresses internet materials and notes that internet documents that display both their (1) date and (2) source are now considered to be presumptively true and genuine; and o Subsection (c) addresses other printed materials, which are not self-authenticating. 704.09 Introducing Discovery Depositions into Evidence If a party fails to identify a witness in its initial disclosures it is not necessarily precluded from introducing that witnesss discovery deposition at trial. Added written disclosures and disclosed documents to list of documents that normally should not be filed with the Board, unless one of the enumerated exceptions is applicable. 704.10 Introducing Interrogatory Answers and Admissions into Evidence Added materials obtained through the disclosure or discovery process to the list of items that normally should not be filed with Board, unless they fall within an enumerated exception.

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704.11 Introducing Produced Documents into Evidence Added documents obtained through disclosure to those that cannot be introduced through notice of reliance alone. Added internet documents to those that can be introduced through notice of reliance. Amended methods by which documents produced in response to a request for production of documents may be made of record to also apply to documents obtained through disclosure. New fifth paragraph explains that, if no responsive documents exist, a response stating this can be introduced into evidence. 704.14 Introducing Initial Disclosures and Disclosed Documents into Evidence (new subsection) Discusses situations in which each of these can be made of record, including the limited circumstances in which disclosures can be introduced by the disclosing (rather than the inquiring) party. 705 Stipulated Evidence and Accelerated Case Resolution Expressly states that the parties can stipulate to the entire record. If a party fails to reserve the right to object to stipulated evidence, it cannot raise objections at a later point. 707.02(b) Procedural Objections to Notices of Reliance If a procedural objection to a notice of reliance is one that could have been cured promptly, it is deemed waived if not raised promptly. 707.03(b)(3) Objections to Trial Testimony Depositions on the Ground of Failure to Disclose (new subsection) Explains when a party can object to improper/inadequate pretrial disclosures. 707.03(c) Objections to Trial Testimony Depositions on Other Procedural/Substantive Grounds Added objections regarding the signing of testimonial deposition transcripts to those that are waived if not raised promptly. States that parties should preserve their objections at trial by attaching them to the brief as an appendix or additional statement. 707.04 Waiver of an Objection Added failing to preserve the objection in its brief on the case as a circumstance where a partys objection may be waived at trial.

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CHAPTER 800 BRIEFS ON CASE, ORAL HEARING, FINAL DECISION 801.01 Briefs on the Case In General Exhibits to briefs are generally unnecessary and discouraged. Any claims or affirmative defenses not referenced in a brief are considered waived. 801.02(d) Time for Filing the Defendants Main Brief Clarifies that, in oral argument, defendant can address issued raised in plaintiffs reply brief. 801.03 Form and Contents of Briefs Notes that citation of nonprecedential cases is allowed in motions and briefs. New sixth paragraph deals with citing cases from courts other than the Federal Circuit or TTAB. Updated Boards position on confidential material, noting that standard protective order is applicable, by default, from disclosure through trial. 802.03 Time and Place of Hearing In second paragraph, updated procedure involved in attending an oral hearing via videoconference (removed references to former off-site video conference centers, which are no longer in operation). 806 Termination of a Proceeding Updated termination process to reflect current procedures and electronic filing.

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CHAPTER 900 REVIEW OF DECISION OF BOARD 902.02 Time for Filing an Appeal or Cross-Appeal to the Federal Circuit Board allows only one request for reconsideration; a subsequent request will not toll the time for appeal. 905 Petition to the Director A petition to the Director does not automatically suspend any pending proceedings, but Board may still suspend proceedings at its discretion. 906.01 Standards of Review: Appealing to the Federal Circuit or Instituting a Civil Action Courts reviewing Board decisions apply the substantial evidence standard. Under this standard, when a court determines that two or more conclusions are supported by the record and Board chose one of those conclusions, theBoards decision must be sustained. Findings of fact determined by a reviewing court include: o Abandonment, o Functionality, o Descriptiveness, and o Whether trade dress is actually product design. Conclusions of law, reviewed de novo, include: o Likelihood of confusion, and o Whether or not the Board properly granted summary judgment. While Lanham Act interpretations are conclusions of law (and would therefore normally be reviewed de novo), reviewing courts give substantial deference to Board findings.

CHAPTER 1000 - INTERFERENCES 1007 Conduct of an Interference Proceeding No longer specifies that, in an interference proceeding, the testimony periods are separated from the discovery period and from each other by 30-day intervals.

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CHAPTER 1100 CONCURRENT USE PROCEEDINGS 1101.01 Nature of a Concurrent Use Proceeding Concurrent use registrations are not available in matters of dilution. For cases instituted since November 2007, a modified disclosure and conferencing regime is in place. 1101.02 Context for the USPTOs Determination of Concurrent Rights Although cancellation proceedings cannot be resolved with territorial restrictions, a registrant facing a cancellation petition is allowed to accept judgment against itself and then apply as a concurrent user. 1102.02 Bases for Concurrent Registration Board or Court Determination A party can use a Boards finding in a prior proceeding as a basis for its concurrent use proceeding. 1103.01 Requirements for a Concurrent Use Application Based on a Board Determination Lists the five main requirements for concurrent use applications and notes that a concurrent use applicant must serve the application, specimen, and drawing on each party listed as a concurrent user. 1103.01(a) Requirements for Concurrent Use: Assertion of Use in Commerce Applicant can apply for a concurrent registration of a mark with a 1(a) filing basis at the time of application or in a subsequent amendment. Concurrent use registrations are not available for applications based solely on 44 or 66(a). For 1(b) applications, concurrent use not available until allegation of use is filed. 1103.01(d)(1) Requirement that an Application for Concurrent Use Identify the Nature and Extent of the Restriction Involved New second paragraph explains that a concurrent use application must identify: o the concurrent lawful use of the mark by others, o their areas of use, o goods and/or services on or in connection with which their use is made, o mode of their use, o periods of their use, and o registrations issued to, or applications filed by concurrent users. 1103.03 Concurrent Use Applications Based on Court Determinations A concurrent use application based on a prior court determination must contain all elements required for a regular unrestricted registration. 1105 Applications and Registrations Not Subject to Proceeding A (1)b application cannot be amended to a concurrent use application during the opposition period. 1106.04 Preparing Concurrent Use Notices Concurrent use applicants no longer need to provide Board with copies of application for service on the other parties. When concurrent use proceeding is instituted solely to issue an order for registrant to
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show cause, Board will not set a trial schedule. 1106.05 Locating Excepted Users When registrant listed as an excepted user cannot be located, and concurrent use applicant successfully petitions for cancellation of registration on grounds of abandonment, applicant can then file a motion to delete reference to registrant in the application. If there are no other excepted users, applicant can move to amend its applicant to seek a normal, unrestricted registration. 1107 Answer and Default in a Concurrent Use Proceeding New second paragraph explains service obligations of a concurrent use applicant. 1108 The Issue to be Determined in a Concurrent Use Proceeding Common law territorial rights and the rights of parties listed as common law concurrent users are not before the Board. 1109 Conduct of a Concurrent Use Proceeding In certain cases involving default by failure to answer, Board may allow a party to prove its entitlement to registration through less formal procedures. A new second paragraph discusses ACR, but notes that in many cases concurrent use applicants will be better off seeking an informal ex parte type procedure (i.e., the less formal procedure addressed above). 1109.01 Sample Trial Schedules for Cases Commenced On or After November 1, 2007 (new subsection) Sets forth and explains three full trial schedules for such cases. 1109.02 Sample Trial Schedules for Cases Commenced Before November 1, 2007 (new subsection) Sets forth and explains two full trial schedules for such cases. 1110 Settlement Providing for a Concurrent Use Registration If Board finds a settlement agreement insufficient, it will typically allow the parties to submit an amended agreement. New second paragraph lists several types of provisions that can be included in a settlement agreement. New third paragraph provides examples of how concurrent use parties may avoid confusion caused by internet advertising. 1113.01 Conversion of an Opposition Proceeding to a Concurrent Use Proceeding After conversion of opposition to concurrent use proceeding, parties switch places opposition defendant becomes plaintiff, and opposition plaintiff becomes defendant.

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CHAPTER 1200 EX PARTE APPEALS 1201.02 Propriety of Appeal: Premature Final Action When examining attorney sets forth a new rationale for a previously made requirement or refusal, it does not constitute a new refusal to which applicant is entitled to reply. If appeal instituted in response to a premature final action, institution order will be vacated. 1201.05 Appeal vs. Petition Board only considers substantive issues and will not consider the issue of whether a refusal constitutes clear error. 1203.02(b) Time for Filing Examining Attorneys Brief Applicant is not entitled to approval simply because Ex. Atty. fails to file a brief. Examining Attorney can present new arguments or rationale for the existing refusals or requirements without requesting a remand. 1203.02(c) Time for Filing Applicants Reply Brief If applicants reply brief convinces Examining Attorney that approval of the application is warranted, Ex. Atty. no longer required to notify Board before approving the application. 1204 Effect of a Request for Reconsideration After Final Action If the Examining Attorney has already responded to a request or reconsideration after the appeal was filed, any subsequent request for reconsideration will be considered a request for remand, even in the event the request is filed within 6 months of the final refusal. 1205.01 Amending an Application During Appeal In General The Examining Attorney is allowed to submit evidence relevant to such an amendment. If applicant submits an amendment more than six months after the final office action, the Board will consider it a request for remand; request will only be granted upon showing good cause. What constitutes good cause will vary based on the stage of the appeal; section provides examples of when good cause may be found. 1205.02(a) Request to Divide an Application When the Notice of Appeal is Filed via ESTAA (new subsection) New subsection explains processes of filing electronically for a request for divide, both with and without a request for reconsideration. 1205.02(b) Request to Divide an Application When the Notice of Appeal is Filed on Paper (new subsection) New subsection explains processes of filing a request to divide on paper, both with and without a request for reconsideration. 1206.01 Amendment to Allege Use Clarifies that a new refusal can be issued in response to information contained within an amendment to allege use. 1207.01 Submission of Evidence During Appeal Normally, evidence cannot be introduced after appeal is filed. However, if either party introduced a portion of an article prior to appeal, the other party is permitted to introduce the entire article, even after the appeal is filed.

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1208.01 Treatment of Evidence From NEXIS Database or Publications The probative value of newswire evidence varies, depending on the extent to which consumers have been exposed to such articles. Board now considers foreign publications on a case-by-case basis. Examining Attorney can provide a limited number of articles as a sample of all the articles available, so long as list is representative; Ex. Atty. must identify samples as representative, otherwise the Board will assume that no other articles support Ex. Atty.s position. 1208.02 Third-Party Registration Evidence Explains that the Board generally will not take judicial notice of third party registrations during the course of an appeal, despite the Federal Circuit having done so in In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681 (Fed. Cir. 2010). Expired or cancelled registrations are generally only admissible to show that such registrations issued. 1208.03 Internet Evidence Website evidence should include URL from which and the date on which it was obtained. Internet evidence is admissible to show the translation of a word. Foreign website may be of some probative value, depending on the circumstances. Search engine results are of limited probative value. The mere fact that a particular search retrieves a long list of results has no probative value, and the Board will not take judicial notice of such searches. With respect to online dictionary definitions: o Acceptable as evidence, provided they are readily available and can be verified. o Board will only take judicial notice of such definitions if they are from references that are the electronic equivalent of a print dictionary or have regular fixed editions. Wikipedia evidence is acceptable, as long the other party has had a chance to rebut it. 1208.04 Judicial Notice The Board will consider definitions available only in electronic format if put in the record during the prosecution of the application. The Board will not take judicial notice of something if its source is unclear. 1208.05 Applicants Own Materials (new subsection) New subsection explains that such materials may be submitted even in the case of an intent-to-use application. 1216 Oral Hearing Explains what is required for an applicant to attend an oral hearing via videoconference. o If a party introduces documents at the oral hearing that were not already in the record, they will not be considered by the Board without the other partys consent. 1217 Final Decision In cases with multiple issues on appeal, the Board will normally consider each of them. However, in some circumstances it may choose to affirm one refusal of registration and decline to address the remaining issues. If the Board reverses the refusal of a 1(b) application, the Examining Attorney can still issue a later refusal based on the statement of use.
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