The US Patent and Trademark Office (USPTO) has adopted sweeping new procedural rules that will apply to all actions before the Trademark Trial and Appeal Board (Board) that are filed on or after November 1, 2007.[i] If a trademark owner believes that a pending application for a new mark is confusingly similar to or dilutive of its prior mark, or if it believes that a registered mark should be cancelled, it may bring an opposition or cancellation proceeding to either prevent the registration of the mark or cancel the existing registration. Although of relatively narrow scope, these Board proceedings before a panel of administrative law judges involve a discovery period, testimony period and trial brief schedule. The new rules significantly change the discovery process in these proceedings by largely incorporating Rule 26 of the Federal Rules of Civil Procedure into its own procedural rules. The USPTO posits that the new rules will "increase efficiency by which discovery and pretrial information is exchanged" and will "enhance settlement processes."

Like the 1993 amendments to the Federal Rules of Civil Procedure, the 2007 amendments to the Trademark Trial and Appeal Board Manual of Procedure require litigants to disclose information and documents before service of discovery requests and to meet and confer to discuss settlement options and plans for disclosure. According to the Board, the new rules impose less of a burden on a litigant than that imposed in federal cases because the nature of the proceedings are more limited--i.e., the Board's jurisdiction is limited to determining the right of a party to obtain or retain a registration and there are fewer available claims and defenses.

The more significant procedural changes are highlighted below:

· Commencement of Proceedings: Under the new rules, a person seeking to oppose a pending trademark application, or to cancel an issued trademark registration, must file and concurrently serve a copy of the Notice of Opposition/Petition for Cancellation on the applicant or registration owner at the address on file with the USPTO (under the old rules, the Board served the initial pleading). If a service copy is returned as undeliverable, the opposer/petitioner must notify the Board within 10 days of receipt of the returned service copy. The opposer/petitioner is under no obligation to search for a current address or undertake any investigation of the defendant's whereabouts.

· Protective Order: The Board's standard protective order is automatically applicable in all cases; however, the parties are still free to modify its language.

· Adoption of a Disclosure Model: A particularly significant change is that, within 30 days from when the answer is due, the parties must have a discovery/settlement conference and must discuss the topics outlined in Rule 26(f) of the Federal Rules of Civil Procedure. The parties must also make Rule 26(a) initial disclosures within 30 days from the opening of the discovery period. Like a federal action, a party may not seek discovery through traditional devices until after it has made its initial disclosures, and it may not move for summary judgment until after it has made its initial disclosure (except on the grounds of claim/issue preclusion or lack of jurisdiction). It is worth noting that the Board responded to criticism of the initial proposed rules and ultimately decided not to reduce the number of interrogatories from 75 to 25, the number permitted under federal practice.

· Expert Testimony: The parties are required to disclose expert testimony in the manner and sequence provided for in Rule 26(a)(2) of the Federal Rules of Civil Procedure with the deadline for such disclosure of 30 days prior to the close of discovery. At the discovery/settlement conference, the parties are required to discuss whether they intend to alter the sequence and timing of expert disclosure. The Board may also issue an order regarding expert discovery and/or set a deadline for rebuttal experts.

· Registration in Evidence: A party no longer needs to file two copies of a pleaded registration in order to show status and title. Instead, a party has the option of filing copies of records from the USPTO electronic databases to provide proof of status and title.