New TTAB Rules Go Into Effect November 1

Significant new rules applicable in Trademark Trial and Appeal Board proceedings will go into effect on November 1, 2007. These include a number of rules governing the parties' conduct at the very early stages of the proceeding. Some of the more important changes:

• The party in the position of plaintiff, not the TTAB, will be responsible for service of papers commencing the proceeding.
• The parties must confer no later than the opening of the discovery period to discuss the topics in Fed. R. Civ. P. 26(f), including settlement, discovery, disclosure, the protective order and similar issues. Both parties may request the participation of a Board professional at the conference and there are circumstances where it may be advisable to request this participation, such as proceedings where the adverse party is acting pro se.
• The parties must comply with the basic requirements of Fed. R. Civ. P. 26(a)(1)(A) and (B) regarding the disclosure of individuals with relevant knowledge and the existence and location of relevant documents within thirty (30) days after the opening of discovery.
• Absent the Board’s permission, a party may not seek discovery through traditional means or move for summary judgment, except on limited grounds, until after it has made its initial disclosures without the Board's permission.
• The new rules also impose requirements for disclosing expert witnesses prior to the close of discovery and the pre-trial disclosure of trial witnesses.

The new rules impose obligations that will require a level of early review and organization not previously required in Board proceedings.

Any proceeding commenced prior to November 1, 2007 will not be subject to the rules discussed above.