82 FR 33804 - Miscellaneous Changes to Trademark Trial and Appeal Board Rules of Practice; Clarification

DEPARTMENT OF COMMERCE
United States Patent and Trademark Office

Federal Register Volume 82, Issue 139 (July 21, 2017)

The United States Patent and Trademark Office (``USPTO'') published in the Federal Register on October 7, 2016 a final rule, which became effective on January 14, 2017, revising the Rules of Practice before the Trademark Trial and Appeal Board. This document clarifies certain provisions of the rules of practice regarding the deadlines for filing motions to compel discovery, motions to test the sufficiency of responses or objections to requests for admission, and motions for summary judgment. The clarification promotes clarity and reflects ongoing and current practice, in keeping with the goals of efficiency and predictability in the procedure and process of trial cases.

[Federal Register Volume 82, Number 139 (Friday, July 21, 2017)]
[Rules and Regulations]
[Pages 33804-33806]
From the Federal Register Online  [www.thefederalregister.org]
[FR Doc No: 2017-15346]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Part 2

[Docket No. PTO-T-2017-0025]
RIN 0651-AD22


Miscellaneous Changes to Trademark Trial and Appeal Board Rules 
of Practice; Clarification

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The United States Patent and Trademark Office (``USPTO'') 
published in the Federal Register on October 7, 2016 a final rule, 
which became effective on January 14, 2017, revising the Rules of 
Practice before the Trademark Trial and Appeal Board. This document 
clarifies certain provisions of the rules of practice regarding the 
deadlines for filing motions to compel discovery, motions to test the 
sufficiency of responses or objections to requests for admission, and 
motions for summary judgment. The clarification promotes clarity and 
reflects ongoing and current practice, in keeping with the goals of 
efficiency and predictability in the procedure and process of trial 
cases.

DATES: This rule is effective on July 21, 2017.

FOR FURTHER INFORMATION CONTACT: Cheryl Butler, Trademark Trial and 
Appeal Board, by email at [email protected], or by telephone at 
(571) 272-4259.

SUPPLEMENTARY INFORMATION: The USPTO issues this final rule to clarify 
the latest time in an inter partes proceeding that certain motions may 
be filed. The USPTO's October 7, 2016 final rule revising the Trademark 
Trial and Appeal Board Rules of Practice (81 FR 69950) (published under 
RIN 0651-AC35), effective January 14, 2017, required that any motion to 
compel discovery, Sec.  2.120(f)(1), motion to test the sufficiency of 
responses or objections to requests for admission, Sec.  2.120(i)(1), 
or motion for summary judgment, Sec.  2.127(e)(1), be filed prior to 
the deadline for pretrial disclosures for the first testimony period as 
set or as reset. The USPTO now amends the rules of practice to make 
clear that such motions must be filed before the day of the deadline 
for pretrial disclosures for the first testimony period as originally 
set or as reset.
    The amendments promote clarity in the regulations and further the 
objectives of the January 14, 2017 final rule. They advance the goals 
of efficiency of inter partes proceedings by streamlining discovery and 
pretrial procedure, particularly by signaling that the trial phase of 
the proceedings commences with the deadline for the first pretrial 
disclosure, by which juncture all discovery disputes will have been 
resolved or at least brought to the attention of the Board and all 
parties.

Discussion of Rule Changes

Discovery

    The USPTO is amending the third sentence of Sec.  2.120(f)(1) to 
indicate that a motion to compel discovery must be filed before the day 
of the deadline for pretrial disclosures for the first testimony period 
as originally set or as reset.
    The USPTO is amending the first sentence of Sec.  2.120(i)(1) to 
indicate that a motion to determine and test the sufficiency of an 
answer or objection to a request for admission must be filed before the 
day of the deadline for pretrial disclosures for the first testimony 
period as originally set or as reset.

Motions

    The USPTO is amending the second sentence of Sec.  2.127(e)(1) to 
indicate that a motion for summary judgment must be filed before the 
day of the deadline for pretrial disclosures for the first testimony 
period as originally set or as reset.

Rulemaking Considerations

    Administrative Procedure Act: The changes in this rulemaking 
involve rules of agency practice and procedure and/or interpretive 
rules. See Nat'l Org. of Veterans' Advocates v. Sec'y of Veterans 
Affairs, 260 F.3d 1365, 1375 (Fed. Cir. 2001) (Rule that clarifies 
interpretation of a statute is interpretive.); Bachow Communications 
Inc. v. FCC, 237 F.3d 683, 690 (D.C. Cir. 2001) (Rules governing an 
application process are procedural under the Administrative Procedure 
Act.); Inova Alexandria Hosp. v. Shalala, 244 F.3d 342, 350 (4th Cir. 
2001) (Rules for handling appeals were procedural where they did not 
change the substantive standard for reviewing claims.).
    Accordingly, prior notice and opportunity for public comment for 
the rule changes are not required pursuant to 5 U.S.C. 553(b) or (c), 
or any other law. See Perez v. Mortgage Bankers Ass'n, 135 S. Ct. 1199, 
1206 (2015) (Notice-and-comment procedures are required neither when an 
agency

[[Page 33805]]

``issue[s] an initial interpretive rule'' nor ``when it amends or 
repeals that interpretive rule.''); Cooper Techs. Co. v. Dudas, 536 
F.3d 1330, 1336-37 (Fed. Cir. 2008) (stating that 5 U.S.C. 553, and 
thus 35 U.S.C. 2(b)(2), does not require notice and comment rulemaking 
for ``interpretative rules, general statements of policy, or rules of 
agency organization, procedure, or practice'' (quoting 5 U.S.C. 
553(b)(A))).
    Similarly, the 30-day delay in effectiveness is not applicable 
because this rule is not a substantive rule. 5 U.S.C. 553(d). As 
discussed above, this rulemaking involves rules of agency practice and 
procedure, merely consisting of clarifications to the procedure and 
timing of filing certain motions in inter partes proceedings. These 
changes are procedural in nature and will have no impact on the 
substantive evaluation of a trademark application or registration.
    Regulatory Flexibility Act: The Deputy General Counsel for General 
Law of the United States Patent and Trademark Office has certified to 
the Chief Counsel for Advocacy of the Small Business Administration 
that this rule will not have a significant economic impact on a 
substantial number of small entities. See Regulatory Flexibility Act, 5 
U.S.C. 605(b).
    This rulemaking involves changes to a rule of agency practice and 
procedure in matters before the Trademark Trial and Appeal Board. The 
changes provide greater clarity as to certain deadlines in Board 
proceedings. This rule does not alter any substantive criteria used to 
decide cases.
    This rule will apply to all persons appearing before the Board. 
Applicants for a trademark and other parties to Board proceedings are 
not industry-specific and may consist of individuals, small businesses, 
non-profit organizations, and large corporations. The Office does not 
collect or maintain statistics in Board cases on small- versus large-
entity parties, and this information would be required in order to 
determine the number of small entities that would be affected by this 
rule.
    No additional burden is imposed by this rule change. This rule will 
benefit all the parties to proceedings by increasing certainty, 
efficiency and clarity in the process, and streamlining the procedures. 
Therefore, this action will not have a significant economic impact on a 
substantial number of small entities.
    Executive Order 12866: This rule has been determined not to be 
significant for purposes of Executive Order 12866.
    Executive Order 13563 (Improving Regulation and Regulatory Review): 
The Office has complied with Executive Order 13563 (Jan. 18, 2011). 
Specifically, the Office has, to the extent feasible and applicable: 
(1) Made a reasoned determination that the benefits justify the costs 
of the rule changes; (2) tailored the rule to impose the least burden 
on society consistent with obtaining the regulatory objectives; (3) 
selected a regulatory approach that maximizes net benefits; (4) 
specified performance objectives; (5) identified and assessed available 
alternatives; (6) provided the public with a meaningful opportunity to 
participate in the regulatory process, including soliciting the views 
of those likely affected prior to issuing a notice of proposed 
rulemaking, and provided online access to the rulemaking docket; (7) 
attempted to promote coordination, simplification, and harmonization 
across government agencies and identified goals designed to promote 
innovation; (8) considered approaches that reduce burdens and maintain 
flexibility and freedom of choice for the public; and (9) ensured the 
objectivity of scientific and technological information and processes, 
to the extent applicable.
    Executive Order 13771 (Reducing Regulation and Controlling 
Regulatory Costs): This rule is not an Executive Order 13771 regulatory 
action because this rule is not significant under Executive Order 
12866.
    Executive Order 13132: This rule does not contain policies with 
federalism implications sufficient to warrant preparation of a 
Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).
    Congressional Review Act: Under the Congressional Review Act 
provisions of the Small Business Regulatory Enforcement Fairness Act of 
1996 (5 U.S.C. 801 et seq.), prior to issuing any final covered rule, 
the Office will submit a report containing the final rule and other 
required information to the U.S. Senate, the U.S. House of 
Representatives, and the Comptroller General of the Government 
Accountability Office. The changes in this rule are not expected to 
result in an annual effect on the economy of 100 million dollars or 
more, a major increase in costs or prices, or significant adverse 
effects on competition, employment, investment, productivity, 
innovation, or the ability of U.S.-based enterprises to compete with 
foreign-based enterprises in domestic and export markets. Therefore, 
this rule change is not covered because it is not expected to result in 
a major rule as defined in 5 U.S.C. 804(2).
    Unfunded Mandate Reform Act of 1995: The Unfunded Mandates Reform 
Act (2 U.S.C. 1501 et seq.) requires that agencies prepare an 
assessment of anticipated costs and benefits before issuing any rule 
that may result in expenditure by State, local, and tribal governments, 
in the aggregate, or by the private sector, of $100 million or more 
(adjusted annually for inflation) in any given year. This rule will 
have no such effect on State, local, and tribal governments or the 
private sector.
    Paperwork Reduction Act: The Paperwork Reduction Act of 1995 (44 
U.S.C. 3501-3549) requires that the Office consider the impact of 
paperwork and other information collection burdens imposed on the 
public. This rule involves information collection requirements that are 
subject to review by the Office of Management and Budget (OMB) under 
the Paperwork Reduction Act of 1995 (44 U.S.C. 3501-3549). The 
collections of information involved in this rulemaking have been 
reviewed and previously approved by OMB under control numbers 0651-0040 
and 0651-0054. This rulemaking does not add any additional information 
requirements or fees for parties before the Board, and therefore, it 
does not change the information collection burdens approved under the 
OMB control numbers 0651-0040 and 0651-0054.
    Notwithstanding any other provision of law, no person is required 
to respond to, nor shall any person be subject to, a penalty for 
failure to comply with a collection of information subject to the 
requirements of the Paperwork Reduction Act unless that collection of 
information displays a currently valid OMB control number.

List of Subjects in 37 CFR Part 2

    Administrative practice and procedure, Trademarks.

    For the reasons given in the preamble and under the authority 
contained in 15 U.S.C. 1113, 15 U.S.C. 1123, and 35 U.S.C. 2, as 
amended, the Office is amending part 2 of title 37 as follows:

PART 2--RULES OF PRACTICE IN TRADEMARK CASES

0
1. The authority citation for part 2 continues to read as follows:

    Authority: 15 U.S.C. 1113, 15 U.S.C. 1123, 35 U.S.C. 2, Section 
10(c) of Pub. L. 112-29, unless otherwise noted.


0
2. Amend Sec.  2.120 by revising paragraphs (f)(1) and (i)(1) to read 
as follows:


Sec.  2.120  Discovery.

* * * * *
    (f) * * *

[[Page 33806]]

    (1) If a party fails to make required initial disclosures or expert 
testimony disclosure, or fails to designate a person pursuant to Rule 
30(b)(6) or Rule 31(a) of the Federal Rules of Civil Procedure, or if a 
party, or such designated person, or an officer, director or managing 
agent of a party fails to attend a deposition or fails to answer any 
question propounded in a discovery deposition, or any interrogatory, or 
fails to produce and permit the inspection and copying of any document, 
electronically stored information, or tangible thing, the party 
entitled to disclosure or seeking discovery may file a motion to compel 
disclosure, a designation, or attendance at a deposition, or an answer, 
or production and an opportunity to inspect and copy. A motion to 
compel initial disclosures must be filed within thirty days after the 
deadline therefor and include a copy of the disclosure(s), if any, and 
a motion to compel an expert testimony disclosure must be filed prior 
to the close of the discovery period. A motion to compel discovery must 
be filed before the day of the deadline for pretrial disclosures for 
the first testimony period as originally set or as reset. A motion to 
compel discovery shall include a copy of the request for designation of 
a witness or of the relevant portion of the discovery deposition; or a 
copy of the interrogatory with any answer or objection that was made; 
or a copy of the request for production, any proffer of production or 
objection to production in response to the request, and a list and 
brief description of the documents, electronically stored information, 
or tangible things that were not produced for inspection and copying. A 
motion to compel initial disclosures, expert testimony disclosure, or 
discovery must be supported by a showing from the moving party that 
such party or the attorney therefor has made a good faith effort, by 
conference or correspondence, to resolve with the other party or the 
attorney therefor the issues presented in the motion but the parties 
were unable to resolve their differences. If issues raised in the 
motion are subsequently resolved by agreement of the parties, the 
moving party should inform the Board in writing of the issues in the 
motion which no longer require adjudication.
* * * * *
    (i) * * *
    (1) Any motion by a party to determine the sufficiency of an answer 
or objection, including testing the sufficiency of a general objection 
on the ground of excessive number, to a request made by that party for 
an admission must be filed before the day of the deadline for pretrial 
disclosures for the first testimony period, as originally set or as 
reset. The motion shall include a copy of the request for admission and 
any exhibits thereto and of the answer or objection. The motion must be 
supported by a written statement from the moving party showing that 
such party or the attorney therefor has made a good faith effort, by 
conference or correspondence, to resolve with the other party or the 
attorney therefor the issues presented in the motion and has been 
unable to reach agreement. If issues raised in the motion are 
subsequently resolved by agreement of the parties, the moving party 
should inform the Board in writing of the issues in the motion which no 
longer require adjudication.
* * * * *

0
3. Amend Sec.  2.127 by revising paragraph (e)(1) to read as follows:


Sec.  2.127  Motions.

* * * * *
    (e)(1) A party may not file a motion for summary judgment until the 
party has made its initial disclosures, except for a motion asserting 
claim or issue preclusion or lack of jurisdiction by the Trademark 
Trial and Appeal Board. A motion for summary judgment must be filed 
before the day of the deadline for pretrial disclosures for the first 
testimony period, as originally set or as reset. A motion under Rule 
56(d) of the Federal Rules of Civil Procedure, if filed in response to 
a motion for summary judgment, shall be filed within thirty days from 
the date of service of the summary judgment motion. The time for filing 
a motion under Rule 56(d) will not be extended or reopened. If no 
motion under Rule 56(d) is filed, a brief in response to the motion for 
summary judgment shall be filed within thirty days from the date of 
service of the motion unless the time is extended by stipulation of the 
parties approved by the Board, or upon motion granted by the Board, or 
upon order of the Board. If a motion for an extension is denied, the 
time for responding to the motion for summary judgment may remain as 
specified under this section. A reply brief, if filed, shall be filed 
within twenty days from the date of service of the brief in response to 
the motion. The time for filing a reply brief will not be extended or 
reopened. The Board will consider no further papers in support of or in 
opposition to a motion for summary judgment.
* * * * *

    Dated: July 17, 2017.
Joseph D. Matal,
Performing the Functions and Duties of the Under Secretary of Commerce 
for Intellectual Property and Director of the United States Patent and 
Trademark Office.
[FR Doc. 2017-15346 Filed 7-20-17; 8:45 am]
 BILLING CODE 3510-16-P