What You Need to Know: Major Changes to the TTAB Rules of Practice

AuthorPatricia S. Smart
PositionPatricia S. Smart is a partner of Smart & Bostjancich in Chicago, Illinois. The firm specializes in intellectual property and related counseling and litigation, with an emphasis on trademark law.
Published in Landslide® magazine, Volume 9, Number 4, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2017 by the American Bar Association. Reproduced with permission. All rights reserved. This
information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
On January14, 2017, revised rules of pro-
cedure went into effect for all opposition
and cancellation proceedings—both newly
led proceedings and those already pending
before the Trademark Trial and Appeal Board
(TTAB). Many of the revisions to the TTAB Rules of Prac-
tice, 37 C.F.R. §§2.91 et seq., add clarity by codifying case
law and the TTAB’s practices. Other revisions, however,
make signicant changes to TTAB practice, some of which
require that we rethink the approaches we have used in these
proceedings. There are numerous revisions, including an
expanded requirement of electronic ling, a requirement of
service by e-mail, new limits on written discovery requests,
earlier deadlines for the ling of many motions, and the pre-
sentation of trial testimony by declaration. Some of the most
far-reaching changes are highlighted here—and all can be
found in the Miscellaneous Changes to Trademark Trial and
Appeal Board Rules of Practice in the Federal Register.1
Requirement of Electronic Filing
Most of us have been accustomed to relying on the TTAB’s
online ling system, Electronic System for Trademark Tri-
als and Appeals (ESTTA), exclusively or almost exclusively.
But for most submissions, we also had the option of making a
paper ling if we chose to do so. Under the revised rules, the
option of paper ling is now virtually eliminated.
As before, ling through ESTTA is required, without excep-
tion, for a notice of opposition to a section 66 application or an
extension of time to oppose a section 66 application.2
With very narrow exceptions, electronic ling now is also
mandatory for all other submissions.3 Filing of a pleading,
request for extension of time to oppose, motion, brief, or other
written document by paper rather than through ESTTA is per-
mitted only if ESTTA is unavailable due to technical difculties
or when “extraordinary circumstances are present.”4 Any paper
ling of an extension of time to oppose, notice of opposition,
petition to cancel, or answer must be accompanied by a peti-
tion to the director of the U.S. Patent and Trademark Ofce
(USPTO) establishing circumstances justifying a paper ling,
and the required fees.5 Paper lings of any other submission
must include a written explanation of the technical problems or
extraordinary circumstances.6 Whether in a petition or written
explanation, parties should be prepared to identify the under-
lying facts that led to an inability to le through ESTTA or the
extraordinary circumstances, rather than making a conclusory
statement of such problems or circumstances.7
A separate exception exists for exhibits, such as CDs or
DVDs, which cannot be submitted through ESTTA. The com-
ments to the rules changes note that those materials may
continue to be led by mail.8
Changes to Service Requirements
Under the new rules, practitioners no longer need to serve
a copy of a notice of opposition or petition to cancel. The
TTAB will serve the applicant or registrant when it issues the
order instituting the proceeding.9
For service of all other papers during the course of the
opposition or cancellation, e-mail is the new norm. Under the
By PatriciaS. Smart
Patricia S. Smart is a partner of Smart & Bostjancich in Chicago,
Illinois. The rm specializes in intellectual property and related
counseling and litigation, with an emphasis on trademark law.
What You
Need to Know
Major Changes to the
TTAB Rules of Practice

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