97-14711. Miscellaneous Changes to Trademark Trial and Appeal Board Rules

[Federal Register Volume 62, Number 108 (Thursday, June 5, 1997)]
[Proposed Rules]
[Pages 30802-30818]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 97-14711]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 2 and 3

[Docket No. 970428100-7100-01]
RIN 0651-AA87


Miscellaneous Changes to Trademark Trial and Appeal Board Rules

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rulemaking.

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SUMMARY: The Patent and Trademark Office (PTO) proposes to amend its 
rules governing practice before the Trademark Trial and Appeal Board 
(Board) to expedite inter partes proceedings. These proposed changes 
enlarge the time periods for discovery, testimony, and response to 
motions, and concomitantly limit the circumstances in which extensions 
may be obtained. In addition, they impose strict limitations on the 
number of written discovery requests which one party may serve upon 
another party in a proceeding. Other proposed inter partes rule 
amendments clarify the rules, conform the rules to current practice, 
simplify practice, and correct cross-references. Finally the PTO 
proposes to amend 37 CFR 2.76(a), 2.76(g), and 2.76(h), which affect 
practice in ex parte appeals to the Board, to conform these rules to 
current practice.

DATES: Written comments must be received on or before August 4, 1997 to 
ensure consideration. An oral hearing will not be conducted.

ADDRESSES: Written comments may be sent by mail addressed to Assistant 
Commissioner for Trademarks, Box TTAB--No Fee, 2900 Crystal Drive, 
Arlington, Virginia 22202-3513, marked to the attention of Ellen J. 
Seeherman. Written comments may also be sent by facsimile transmission 
to [phone], marked to the attention of Ellen J. Seeherman. 
Written comments will be available for public inspection in Suite 900, 
on the 9th Floor of the South Tower Building, 2900 Crystal Drive, 
Arlington, Virginia 22202-3513.

FOR FURTHER INFORMATION CONTACT: Ellen J. Seeherman, Administrative 
Trademark Judge, Trademark Trial and Appeal Board, by telephone at 
[phone], extension 206, or by mail marked to her attention and 
addressed to Assistant Commissioner for Trademarks, Box TTAB--No Fee, 
2900 Crystal Drive, Arlington, Virginia 22202-3513 or by facsimile 
transmission marked to her attention and sent to [phone].

SUPPLEMENTARY INFORMATION: This notice of proposed rulemaking is 
designed to improve practice and expedite proceedings in inter partes 
cases before the Trademark Trial and Appeal Board (Board). In addition, 
the proposed amendments codify and clarify certain practices of the 
Board and correct certain references to citations of the Trademark Act 
and the Code of Federal Regulations.
    The proposed amendments, and the reasons for the amendments, are 
discussed below.
    The Board's workload has increased dramatically in the last several 
years because of a rapid growth in the number of inter partes and ex 
parte proceedings filed with the Board. Along with this increase in the 
number of proceedings, there has been a marked increase in the number 
of motions and other papers filed in each inter partes case. It appears 
to the Board that this proliferation of papers has been due, in large 
part, to the fact that in recent years, many attorneys practicing 
before the Board in inter partes cases have taken an increasingly 
aggressive approach by filing every possible motion that may be filed 
and by responding to every paper filed to the point of sur-reply and 
sur-sur-reply briefs. It also appears that some of the papers filed are 
part of a strategy to bury the adverse party with paper, so that it 
becomes too expensive for that party to proceed with the case, and the 
party is forced to settle or capitulate. Whatever the reason, in many 
cases the number of papers filed goes far beyond what is reasonably 
needed for a Board proceeding. The filing of these papers causes 
needless work and expense for the parties and the Board. Moreover, the 
rapid growth in the number of papers filed has caused substantial 
delays in all phases of the Board's work, including the resolution of 
motions and the final determination of proceedings.
    A number of the rule amendments proposed in this notice, namely, 
the proposed amendments to Secs. 2.120(a), 2.120(d)(1), 2.120(d)(2), 
2.120(e), 2.120(h), 2.121(a)(1), 2.121(c), 2.127(a), 2.127(b), 
2.127(d), and 2.127(e)(1), are designed to address these problems by 
changing certain Board practices relating to discovery, testimony 
periods, and motions. In addition, Sec. 2.120(a) is proposed to be 
amended to clarify Board discovery practice in the wake of the December 
1, 1993 amendments to the Federal Rules of Civil Procedure.
    Other amendments proposed in this notice serve to clarify the 
rules, conform the rules to current Board practice, simplify practice, 
and correct certain cross-references in the rules. The rules affected 
by these proposed amendments are Secs. 2.76(a), 2.76(g), 2.76(h), 
2.85(e), 2.87(c), 2.101(d)(1), 2.102(d), 2.111(b), 2.111(c)(1), 
2.117(a), 2.117(b), 2.119(d), 2.120(g)(1), 2.121(d), 2.122(b)(1), 
2.122(d)(1), 2.123(b), 2.123(f), 2.125(c), 2.127(f), 2.134(a), and 
2.146(e)(1).

Proposed Amendments Relating to Discovery

    It is the experience of the Board that a large number of motions 
and requests are filed in connection with discovery. Many of these 
filings relate to repeated requests for extensions of time,

[[Page 30803]]

specifically, extensions of the discovery period and the time to 
respond to discovery requests.
    Moreover, at present, the Board sets the closing date for the 
taking of discovery, with the date set being 90 days after the date of 
the initial trial order. However, discovery in Board proceedings opens 
at the times specified in Rules 30, 33, 34, and 36 of the Federal Rules 
of Civil Procedure as they read prior to the December 1, 1993 
amendments to those rules. See ``Effect of December 1, 1993 Amendments 
to the Federal Rules of Civil Procedure on Trademark Trial and Appeal 
Board Inter Partes Proceedings,'' 1159 TMOG 14 (February 1, 1994). 
Thus, interrogatories, requests for production of documents and things, 
and requests for admission may be served upon the plaintiff after the 
proceeding commences (i.e., after the notice of opposition or petition 
for cancellation is filed in an opposition proceeding, and after the 
mailing by the Board of the notice of institution in an interference or 
concurrent use proceeding), and upon the defendant with or after 
service of the complaint by the Board. Discovery depositions generally 
may be taken by any party after commencement of the proceeding, except 
that the Board's permission must be obtained first in certain specified 
situations. Further, the Board still follows the practice embodied in 
Rules 33(a), 34(b), and 36(a) of the Federal Rules of Civil Procedure, 
as they read prior to the December 1, 1993 amendments, that a defendant 
may serve responses to interrogatories, requests for production of 
documents and things, and requests for admission either within 30 days 
after service of a discovery request (35 days if service of the request 
for discovery is made by first-class mail, ``Express Mail,'' or 
overnight courier--see Sec. 2.119(c)), or within 45 days after service 
of the complaint upon it by the Board, whichever is later. These 
practices relating to the opening of discovery and the time for the 
service of discovery responses by the defendant are complicated, and 
unpopular with practitioners.
    In order to simplify the opening of discovery, and reduce the 
number of motions to extend the discovery period and the time to 
respond to discovery requests, it is proposed to amend Sec. 2.120(a) to 
provide that the Board will specify the opening and closing dates for 
the taking of discovery, and that the discovery period will be set for 
a period of 180 days. The section is also proposed to be amended to 
include a provision that responses to interrogatories, requests for 
production of documents and things, and requests for admission must be 
served within 40 days from the date of service of such discovery 
requests.
    Because of the proposed enlargements of the discovery and response 
periods, it is also proposed to limit the circumstances in which 
extensions will be granted. Specifically, Sec. 2.120(a) is proposed to 
be amended to provide that extensions of the discovery period will be 
granted only upon stipulation of the parties approved by the Board, 
while the time to respond to interrogatories, requests for production 
of documents and things, and requests for admission may be extended 
only upon stipulation of the parties or upon motion showing 
extraordinary circumstances granted by the Board. (The Board, of 
course, retains its inherent power to sua sponte reset, and thereby 
extend, the discovery period and response times.) In addition, the 
section is proposed to be amended to include a provision (now found, in 
somewhat different form, in Sec. 2.121(a)(1)), that the resetting of a 
party's time to respond to an outstanding request for discovery will 
not result in the automatic rescheduling of the discovery and/or 
testimony periods, and that ``the discovery period will be rescheduled 
only upon stipulation of the parties approved by the Board, and 
testimony periods will be rescheduled only upon stipulation of the 
parties approved by the Board, or upon motion showing extraordinary 
circumstances approved by the Board.'' The quoted portion is somewhat 
different from its counterpart in present Sec. 2.121(a), but is 
consistent with the provisions of Sec. 2.121(a)(1) as proposed to be 
amended. Because of the proposed amendment of Sec. 2.120(a) to include 
provisions governing discovery response periods and extensions thereof, 
it is believed that Sec. 2.120(a), rather than Sec. 2.121(a)(1), which 
governs the scheduling and rescheduling of testimony periods, is the 
most logical place for the provision now proposed to be moved.
    The enlargement of the discovery period and of the time to respond 
to discovery requests, and the concomitant limitations on the 
situations in which extensions of these times will be granted, will 
reduce the number of extension requests filed, reduce delays in the 
service of discovery responses, and expedite proceedings before the 
Board.
    Another proposed change to Sec. 2.120(a) clarifies Board discovery 
practice in the wake of the December 1, 1993 amendments to the Federal 
Rules of Civil Procedure. Section 2.116(a) provides that, except as 
otherwise provided, and wherever applicable and appropriate, procedure 
and practice in Board inter partes proceedings shall be governed by the 
Federal Rules of Civil Procedure. Section 2.120(a) provides, in part, 
that the provisions of the Federal Rules of Civil Procedure relating to 
discovery shall apply in opposition, cancellation, interference, and 
concurrent use registration proceedings except as otherwise provided in 
Sec. 2.120; and that the opening of discovery is governed by the 
Federal Rules of Civil Procedure. Thus, where the Board has its own 
rule concerning a particular matter of practice or procedure, that rule 
governs; if there is no Board rule concerning the matter, the Federal 
Rules of Civil Procedure apply, where applicable and appropriate.
    The December 1, 1993 amendments to the Federal Rules of Civil 
Procedure substantially changed discovery procedures in civil actions. 
The amended rules included provisions which, inter alia, mandated 
automatic disclosure, scheduling conferences, conferences to discuss 
settlement and to develop a plan for discovery, and transmission to the 
court of a written report outlining the discovery plan. Moreover, under 
the amended Federal Rules, the commencement of discovery hinged upon 
completion of the mandated discovery plan conference. The PTO concluded 
that the application of these provisions in inter partes proceedings 
before the Board would increase the complexity and cost of the 
proceedings and be unduly burdensome to the parties and the Board. 
Therefore, in a notice published in the Official Gazette, the 
Commissioner stated that these provisions were not appropriate for, and 
would not be applicable in, Board proceedings. See ``Effect of December 
1, 1993 Amendments to the Federal Rules of Civil Procedure on Trademark 
Trial and Appeal Board Inter Partes Proceedings,'' 1159 TMOG 14 
(February 1, 1994). The Commissioner also stated that the PTO would, in 
due course, publish a notice of proposed rulemaking to amend, as might 
be necessary, the trademark rules governing practice and procedure in 
inter partes proceedings before the Board. Accordingly, Sec. 2.120(a) 
is proposed to be amended to specify that the provisions of the Federal 
Rules relating to automatic disclosure, scheduling conferences, 
conferences to discuss settlement and to develop a discovery plan, and 
transmission to the court of a written report outlining the discovery 
plan, do not apply to Board proceedings, and that the Board will 
specify the opening and closing dates

[[Page 30804]]

for the taking of discovery. In addition, the first sentence of the 
section, which specifies that the provisions of the Federal Rules of 
Civil Procedure shall apply in opposition, cancellation, interference, 
and concurrent use registration proceedings, except as otherwise 
provided in Sec. 2.120, is proposed to be amended to include the 
prefatory words ``Wherever appropriate.'' The proposed amendment is 
consistent with an analogous provision in Sec. 2.116(a), and makes it 
clear that even when there is no provision in Sec. 2.120 relating to a 
particular discovery matter, the provisions of the Federal Rules of 
Civil Procedure relating to that matter apply only if they are 
appropriate for Board proceedings.
    Another of the proposed amendments to Sec. 2.120(a) would require 
that interrogatories, requests for production of documents and things, 
and requests for admission be served in sufficient time for responses 
to fall due prior to the close of the discovery period, and that 
discovery depositions be noticed and taken prior to the close of the 
discovery period. It is believed that the proposed 180-day discovery 
period will allow more than sufficient time for the service of 
discovery requests to be made early enough in the discovery period so 
that responses to such requests will fall due prior to the close of 
discovery. Moreover, as indicated hereafter, Sec. 2.120(e) is proposed 
to be amended to provide that a motion to compel discovery must be 
filed within 30 days after the close of the discovery period, as 
originally set or as reset. The proposed requirement that discovery 
requests be served in sufficient time for responses to fall due prior 
to the close of discovery will enable the propounding party to file a 
motion to compel, if such a motion is deemed necessary, within 30 days 
after the close of the discovery period. Litigants should note that if 
they agree to an extension of time to respond to discovery requests, 
such that the responses would be due shortly before or after the due 
date for any motion to compel, then they should also stipulate to 
reschedule the closing date of the discovery period, if the propounding 
party wishes to preserve its time to file a motion to compel.
    The Board has observed that parties misuse the discovery process 
for purposes of harassing their adversaries, resulting in numerous 
motions to compel and motions for protective orders. Section 2.120(d) 
was amended effective November 16, 1989, to restrict to 75 (counting 
subparts) the total number of interrogatories a party may serve, in a 
proceeding, upon another party. The final rule notice was published in 
the Federal Register on August 22, 1989, at 54 FR 34886 and in the 
Patent and Trademark Office Official Gazette of September 12, 1989, at 
1106 TMOG 26. It is the Board's experience that, despite that 
limitation, parties continue to serve interrogatories, as well as other 
written discovery requests, which are irrelevant, unnecessary, and/or 
harassing. In view thereof, and given the restricted scope of Board 
proceedings, and the availability of the discovery deposition as an 
alternate and/or additional discovery device, it is the Board's belief 
that the total number of discovery requests which one party may serve 
upon another party in a proceeding should be limited to 25 
interrogatories (counting subparts), 15 requests for production of 
documents and things (counting subparts), and 25 requests for admission 
(counting subparts). Sections 2.120(d)(1), 2.120(d)(2), and 2.120(h) 
are proposed to be amended to state such limitations. Moreover, because 
it is believed that 25 interrogatories are an adequate number for a 
proceeding before the Board, the motion procedure for obtaining leave 
to serve interrogatories in excess of the limit set forth in 
Sec. 2.120(d)(1) is proposed to be deleted. Similarly, no such 
procedure is proposed to be provided for requests for production of 
documents and things and requests for admission. The provisions 
proposed to be added to Secs. 2.120(d)(2) and 2.120(f), including 
provisions governing the action which may be taken by a party served 
with discovery requests which it believes to be excessive in number, 
parallel those of Sec. 2.120(d)(1), as proposed to be amended. It is 
believed that the proposed limitations on the number of 
interrogatories, document production requests, and requests for 
admission that may be served will reduce the number of motions to 
compel filed, since the parties presumably will use the more limited 
number of discovery requests for only relevant and appropriate 
inquiries, and not for purposes of harassment. A reduction in the 
number of motions to compel filed will serve to expedite proceedings.
    The first sentence of Sec. 2.120(h), which provides that requests 
for admission shall be governed by Rule 36 of the Federal Rules of 
Civil Procedure, except that the Board does not have authority to award 
any expenses to any party, is proposed to be deleted. The sentence 
suggests that the only provision in Federal Rule 36 which does not 
apply in Board proceedings is that pertaining to the awarding of 
expenses. However, there are also other provisions in Rule 36 which do 
not apply in Board proceedings. For example, the provision of Rule 
36(a), that without leave of court or written stipulation, requests for 
admission may not be served before the time specified in Rule 26(d) of 
the Federal Rules of Civil Procedure, is not applicable in Board 
proceedings. See ``Effect of December 1, 1993 Amendments to the Federal 
Rules of Civil Procedure in Trademark Trial and Appeal Board Inter 
Partes Proceedings,'' supra. Moreover, Sec. 2.120(a), as proposed to be 
amended, specifies that wherever appropriate, the provisions of the 
Federal Rules of Civil Procedure relating to discovery shall apply in 
opposition, cancellation, interference, and concurrent use registration 
proceedings, except as otherwise provided in Sec. 2.120. Further, 
Secs. 2.120(g)(1) and 2.127(f), as proposed to be amended, provide that 
the Board will not hold any person in contempt or award any expenses to 
any party. Accordingly, the first sentence of Sec. 2.120(h) is proposed 
to be deleted because it is redundant and confusing.
    Section 2.120(h) is also proposed to be amended to provide that a 
motion to test the sufficiency of an answer or objection to a request 
for admission must be filed within 30 days after the close of the 
discovery period, as originally set or as reset. In addition, the 
section is proposed to be amended to specify that when a party files a 
motion to test the sufficiency of an answer or objection to a request 
for admission, the case will be suspended by the Board with respect to 
all matters not germane to the motion, and no party should file any 
paper which is not germane to the motion, except as otherwise specified 
in the Board's suspension order. These proposed provisions correspond 
to similar provisions proposed to be added to Sec. 2.120(e), which 
governs motions to compel discovery. It is the intention of the Board, 
when setting trial dates in cases arising under these rules as proposed 
to be amended, to schedule an interval of 60 days between the closing 
date of the discovery period and the opening date of the first 
testimony period. The motion to compel and the motion to test the 
sufficiency of an answer or objection to a request for admission deal 
with pre-trial matters and should, therefore, be filed and determined 
prior to trial. The proposed provisions governing the time for filing 
these motions and the suspension of proceedings pending the 
determination thereof, coupled with the Board's intention to schedule 
an interval of 60 days between the close of the discovery period and 
the opening of the first

[[Page 30805]]

testimony period, will provide for a more orderly administration of the 
proceeding and allow parties more certainty in scheduling testimony. 
Moreover, the proposed amendment to Sec. 2.120(a) to set the discovery 
period for 180 days, and to require that discovery requests be served 
in sufficient time for responses to the requests to fall due prior to 
the close of the discovery period, will enable the propounding party to 
file a motion to compel or a motion to test the sufficiency of an 
answer or objection to a request for admission, if such a motion is 
deemed necessary, within 30 days after the close of the discovery 
period.
    Section 2.120(h) is proposed to be further amended to provide that 
the filing of a motion to determine the sufficiency of an answer or 
objection to a request for admission shall not toll the time for a 
party to respond to any outstanding discovery requests or to appear for 
any noticed deposition. The proposed provision corresponds to similar 
provisions proposed to be added to Sec. 2.120(e), with respect to 
motions to compel, and to Sec. 2.127(d), with respect to motions for 
summary judgment, and is explained in greater detail in our discussion 
of the proposed amendments to the latter rule.
    Finally, because of the length and complexity of Sec. 2.120(h), as 
proposed to be amended, the present paragraph is proposed to be 
redesignated as (h)(2) and revised; the provisions governing the 
proposed limitation on the number of requests for admission which may 
be served by one party upon another are proposed to be included in a 
new paragraph designated (h)(1); and the proposed provisions relating 
to the suspension of proceedings when a motion to test the sufficiency 
of an answer or objection to a request for admission is filed are 
proposed to be included in a new paragraph designated (h)(3).
    Section 2.120(e) is proposed to be amended to provide that a motion 
to compel discovery must be filed within 30 days after the close of the 
discovery period, as originally set or as reset; that when a party 
files a motion to compel discovery, the case will be suspended by the 
Board with respect to all matters not germane to the motion and no 
party should file any paper which is not germane to the motion, except 
as otherwise specified in the Board's suspension order; and that the 
filing of a motion to compel shall not toll the time for a party to 
respond to any outstanding discovery requests or to appear for any 
noticed discovery deposition. These proposed provisions correspond to 
similar provisions proposed to be added to Sec. 2.120(h). The latter 
proposed provision also corresponds to a similar provision proposed to 
be added to Sec. 2.127(d) and is explained in greater detail in our 
discussion of the proposed amendments to that rule.

Proposed Amendments Relating to Testimony Periods

    It has come to the attention of the Board that trial is sometimes 
delayed because an adverse party feels compelled to stipulate to 
reschedule or extend testimony periods, knowing that to oppose such a 
request and await the Board's decision on the contested motion will 
create a greater delay than if the party were to consent to the 
rescheduling or extension. In order to remedy this problem, the third 
sentences in Secs. 2.121(a)(1) and 2.121(c) are proposed to be amended 
to provide that testimony periods may be rescheduled 
(Sec. 2.121(a)(1)), or extended (Sec. 2.121(c)), only by stipulation of 
the parties approved by the Board, or upon motion showing extraordinary 
circumstances granted by the Board, and that if such a motion is 
denied, the testimony periods will remain as set. At the same time, 
Sec. 2.121(c) is proposed to be amended to lengthen the testimony 
period for the plaintiff and defendant to present their cases in chief 
from 30 to 60 days, and to lengthen the period for the plaintiff to 
present evidence in rebuttal from 15 to 30 days. The enlargement of 
testimony periods should, in general, eliminate the number of extension 
requests filed by parties and expedite the disposition of proceedings. 
Moreover, the enlargement of the testimony periods should lessen any 
inconvenience to the parties from the elimination of the ``good cause'' 
standard for obtaining extensions of time.
    Those portions of Secs. 2.121(a)(1) and 2.121(c) which refer to the 
rescheduling or extension of testimony periods ``by order of the 
Board'' are proposed to be deleted to clarify that a party may not 
simply make a motion that the Board order the resetting of testimony 
periods. That is, parties may move to reschedule or extend testimony 
periods only upon consent, or upon motion showing extraordinary 
circumstances. The Board still retains its authority to sua sponte 
reschedule or extend testimony periods.
    As indicated above, under the heading ``Proposed Amendments 
Relating to Discovery,'' the last sentence of Sec. 2.121(a)(1), which 
now provides that the resetting of a party's time to respond to an 
outstanding request for discovery will not result in the automatic 
rescheduling of the discovery and/or testimony periods, and that such 
dates will be rescheduled only upon stipulation of the parties approved 
by the Board, or upon motion granted by the Board, or by order of the 
Board, is proposed to be moved to the end of Sec. 2.120(a), as proposed 
to be amended. It is believed that Sec. 2.120(a), as proposed to be 
amended, is the most logical place for this sentence. In addition, the 
latter part of the sentence is proposed to be revised to read ``the 
discovery period will be rescheduled only upon stipulation of the 
parties approved by the Board, and testimony periods will be 
rescheduled only upon stipulation of the parties approved by the Board, 
or upon motion showing extraordinary circumstances granted by the 
Board.'' The proposed revision of the latter part of the sentence is 
consistent with the third sentence of Sec. 2.121(a)(1), as proposed to 
be amended.

Proposed Amendments Relating to Motion Practice

    Section 2.127(a) is proposed to be amended to clarify Board 
practice with respect to the filing of reply briefs and additional 
papers in support of or in opposition to motions. The rule as now 
written makes no reference to such papers. As a result, parties often 
file reply briefs on motions, sur-reply briefs, responses to sur-reply 
briefs, and motions for leave to file, as well as motions to strike, 
such papers. It has been the Board's experience that reply briefs may 
be helpful in deciding a motion, but that additional papers generally 
consist of reargument. Moreover, the filing of such additional papers 
often escalates as each party wishes to have the last word. The result 
is needless expense to the parties, additional work for the Board, and 
delays in rendering decisions. Accordingly, the rule is proposed to be 
amended to provide for the filing of a reply brief, if desired, within 
15 days from the date of service of the brief in response to the 
motion; and to specify that the time for filing a reply brief will not 
be extended, and that additional papers in support of or in opposition 
to a motion will be given no consideration. The proposed time limit for 
the filing of a reply brief on a motion applies to all types of motions 
except motions for summary judgment. Section 2.127(e)(1), which governs 
the time for filing a motion for summary judgment, is proposed to be 
amended, as indicated hereafter, to allow 30 days for this purpose in 
the case of a reply brief on a motion for summary judgment.
    Section 2.127(a) is also proposed to be amended to enlarge the time 
for responding to a motion from 15 to 30

[[Page 30806]]

days. The proposed time limit applies to all types of motions except 
motions for summary judgment. Section 2.127(e)(1) is proposed to be 
amended to allow 60 days for the filing of a brief in response to a 
motion for summary judgment.
    Concomitantly, Sec. 2.127(a) is proposed to be amended to provide 
that extensions of time for filing a brief in opposition to a motion 
will be granted only upon stipulation of the parties approved by the 
Board, or upon motion showing extraordinary circumstances granted by 
the Board, and that, ``if such a motion for an extension is denied, the 
time for responding to the motion remains as specified under this 
section.'' A similar provision is proposed to be included in 
Sec. 2.127(e)(1) regarding extensions of time for filing a brief in 
opposition to a motion for summary judgment. It is believed that 30 
days (or 60 days in the case of a summary judgment motion) is a 
sufficient time to respond to a motion. Moreover, this enlargement of 
the response time, coupled with the requirement that extension requests 
be made with consent or show extraordinary circumstances, and the 
accompanying provision leaving the time for responding to a motion 
unchanged if a motion to extend is denied, will reduce the number of 
extension requests filed, expedite the disposition of proceedings, and 
prevent parties from using the delays inherent in the filing and 
deciding of motions to enlarge their time to respond to motions.
    Section 2.127(a) is proposed to be further amended to impose a page 
limit for briefs and reply briefs on motions, namely, 25 pages for 
briefs in support of and in opposition to motions, and 10 pages for 
reply briefs, and to specify form requirements for such briefs. It is 
believed that the proposed page limitations are more than sufficient 
for parties to adequately argue motions in proceedings before the 
Board.
    Section 2.127(b) is proposed to be amended to change the 
specification of the time period for filing a request for 
reconsideration or modification of an order or decision on a motion 
from ``thirty days'' to ``one month.'' The proposed amendment conforms 
the time period with that specified in Sec. 2.129(c), which governs 
requests for reconsideration or modification of a decision after final 
hearing.
    Certain modifications are proposed to be made to the rules 
governing summary judgment motions. It appears that in some cases, 
parties that have been served with discovery requests, and know that it 
is Board policy to suspend proceedings once a summary judgment motion 
has been filed, move for summary judgment in an effort to avoid having 
to make timely response to the discovery requests. Accordingly, the PTO 
proposes to amend Sec. 2.127(d), which concerns suspension of 
proceedings when a potentially dispositive motion has been filed, to 
specify that the filing of a summary judgment motion shall not toll the 
time for the moving party to respond to any outstanding discovery 
requests or to appear at a noticed discovery deposition, but that it 
shall toll the time for the nonmoving party to respond to outstanding 
discovery requests or to appear at a noticed deposition. The nonmoving 
party's time to respond is proposed to be tolled because a party which 
files a motion for summary judgment is, by its motion, asserting that 
it needs no further evidence to demonstrate that it is entitled to 
judgment. The proposed amendment will eliminate the noted abuse of the 
summary judgment procedure. Moreover, it may also reduce the number of 
motions for discovery filed pursuant to Rule 56(f) of the Federal Rules 
of Civil Procedure because parties opposing motions for summary 
judgment will be able to receive responses to outstanding discovery 
requests prior to the time for responding to the summary judgment 
motion.
    The first sentence of Sec. 2.127(d), which provides, in essence, 
that when any party files a potentially dispositive motion, the case 
will be suspended by the Board with respect to all matters not germane 
to the motion, and no party should file any paper which is not germane 
thereto, is proposed to be amended by adding to the end thereof the 
phrase ``except as otherwise specified in the Board's suspension 
order.'' The proposed amendment clarifies the rule.
    Section 2.127(e)(1), which governs the time for filing a motion for 
summary judgment, is proposed to be amended to specify that a motion 
for summary judgment may not be filed until notification of the 
proceeding has been sent to the parties by the Board. This proposed 
amendment codifies current Board practice, as set forth in Nabisco 
Brands Inc. v. Keebler Co., 28 USPQ2d 1237 (TTAB 1993). In Board 
opposition and cancellation proceedings, as under the Federal Rules, 
the proceeding commences with the filing of the complaint, i.e., the 
notice of opposition or the petition for cancellation. See 
Secs. 2.101(a) and 2.111(a). However, in Board proceedings, formal 
service of the complaint upon the defendant is made by the Board, not 
by the plaintiff. Further, the Board does not serve the complaint upon 
the defendant until after the Board has first examined the complaint to 
determine whether it has been filed in proper form, with the required 
fee, and, then, if so, has (1) obtained the application or registration 
file which is the subject of the proceeding, (2) set up a proceeding 
file with an assigned proceeding number, and (3) entered information 
concerning the proceeding in the electronic records of the PTO. Thus, 
there is a time gap between the filing of a notice of opposition or 
petition for cancellation and the issuance of the Board's action 
notifying the defendant of the filing of the proceeding, notifying both 
parties of the institution of the proceeding, and forwarding a copy of 
the complaint to defendant. Although a plaintiff may send a courtesy 
copy of the complaint to the defendant, the defendant does not know 
that the complaint has been filed in proper form, and that the 
proceeding has been instituted by the Board, unless and until it 
receives from the Board the notice of institution along with a copy of 
the complaint. Accordingly, the Board considers a motion for summary 
judgment filed prior to the issuance of the notice of institution to be 
premature. Moreover, the filing of a motion for summary judgment prior 
to the Board's formal institution of the proceeding may cause 
administrative difficulties for the Board, particularly where the Board 
has not yet assigned a proceeding number to the case.
    Section 2.127(e)(1) is proposed to be further amended to add new 
provisions governing the time for filing papers in response to a motion 
for summary judgment, as well as the time for filing a reply brief 
thereon. Specifically, the section is proposed to be amended to provide 
that a motion under Rule 56(f) of the Federal Rules of Civil Procedure 
(that is, a motion by the nonmoving party for discovery necessary to 
enable it to respond to the motion for summary judgment), if filed, 
shall be filed within 30 days from the date of service of the motion 
for summary judgment; that the time for filing a Rule 56(f) motion will 
not be extended; that if no Rule 56(f) motion is filed, a brief in 
response to the motion for summary judgment shall be filed within 60 
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 showing extraordinary circumstances granted by the Board; that, 
if such a motion for an extension is denied, the time for responding to 
the motion for summary judgment will remain as specified in the 
section; that a reply brief, if filed, shall be filed within 30

[[Page 30807]]

days from the date of service of the brief in response to the motion; 
that the time for filing a reply brief will not be extended; and that 
no further papers in support of or in opposition to a motion for 
summary judgment will be considered by the Board. With two exceptions, 
these proposed provisions parallel certain of the provisions of 
Sec. 2.127(a), as proposed to be amended. The first exception is the 
provision relating to a Rule 56(f) motion. No parallel provision is 
proposed to be included in Sec. 2.127(a) because a Rule 56(f) motion 
may be filed only in response to a motion for summary judgment, and 
Sec. 2.127(a) contains provisions relating to the filing of motions in 
general. The second exception is the length of time proposed to be 
allowed for filing a brief in response to a motion for summary 
judgment, and for filing a reply brief. These proposed times are 60 
days and 30 days, respectively. In the case of other types of motions, 
the times proposed in Sec. 2.127(a) are 30 days and 15 days. The 
additional time is proposed to be allowed in the case of summary 
judgment motions because the gathering of evidence to respond to such a 
motion, or to support a reply brief, is time-consuming, and because the 
summary judgment motion is potentially dispositive in nature. It is 
believed that 60 days is a sufficient time to respond to a motion for 
summary judgment, and that this enlargement of the response time, 
coupled with the requirement that extension requests be made with 
consent or show extraordinary circumstances, and the accompanying 
provision leaving the time for responding to the summary judgment 
motion unchanged if a motion to extend is denied, will reduce the 
number of extension requests filed, and expedite the disposition of 
proceedings.

Corrections of Cross-References

    Sections 2.101(d)(1), 2.111(c)(1), 2.122(d)(1) and 3.41, as now 
written, all contain cross-references to subsections of Sec. 2.6. 
Subsections of Sec. 2.6 were renumbered by a notice of final rulemaking 
published in the Federal Register on December 24, 1991, at 56 FR 66670 
(amended at 57 FR 38196, August 21, 1992) and in the Official Gazette 
on December 24, 1991, at 1133 TMOG 61 (amended at 1141 TMOG 40, August 
18, 1992). Accordingly, these sections are proposed to be amended to 
correct the cross-references to subsections of Sec. 2.6.
    Section 2.111(b) is proposed to be amended to correct cross-
references to subsections of Section 14 of the Trademark Act, 15 U.S.C. 
1064. The subsections were renumbered by the Trademark Law Revision Act 
of 1988 (Title 1 of Pub. L. 100-667, 102 Stat. 3935 (15 U.S.C. 1051)).
    Section 2.119(d), which governs the appointment of domestic 
representatives by foreign parties involved in inter partes proceedings 
before the Board, provides, in pertinent part, that the mere 
designation of a domestic representative does not authorize the person 
designated to prosecute the proceeding ``unless qualified under 
Sec. 10.14(a), or qualified under paragraph (b) or (c) of Sec. 10.14 
and authorized under Sec. 2.17(b).'' The section is proposed to be 
amended to delete the reference to domestic representatives who are 
qualified under Sec. 10.14(c). As indicated in Sec. 2.119(d), a 
domestic representative must be a person ``resident in the United 
States.'' Persons who are qualified under Sec. 10.14(c) are not 
residents of the United States and therefore cannot be domestic 
representatives.
    Section 2.134(a) is proposed to be amended to correct the cross-
reference to Section 7(d) of the Act of 1946. That section of the Act 
was renumbered as ``7(e)'' by the Trademark Law Revision Act of 1988.

Other Proposed Amendments

    Section 2.76(a) now provides, in pertinent part, that an 
application under Sec. 1(b) of the Act (i.e., an intent-to-use 
application) may be amended to allege use of the mark in commerce under 
Sec. 1(c) of the Act at any time between the filing of the application 
and the date the examiner approves the mark for publication or the date 
of expiration of the six-month period after issuance of a final action; 
and that thereafter, an allegation of use may be submitted only as a 
statement of use after issuance of a notice of allowance. The section 
is proposed to be amended to eliminate the time limit for filing an 
amendment to allege use after issuance of a final action.
    The purpose of the time limit for filing an amendment to allege use 
after issuance of a final action was to avoid the submission of 
extraneous papers which would disrupt the appeal process. However, the 
time limit had a detrimental effect not foreseen by the PTO. In many 
instances, where an intent-to-use application was on appeal from a 
final refusal on the ground of mere descriptiveness, for example, and 
no acceptable amendment to allege use had yet been filed, the owner of 
the application would seek, after the expiration of the six-month 
period following issuance of the final refusal, to overcome the refusal 
to register by amending its application to the Supplemental Register. 
However, an intent-to-use application cannot be amended to the 
Supplemental Register until an acceptable amendment to allege use or a 
statement of use has been filed. See 37 CFR Sec. 2.75(b). Thus, 
although an amendment to the Supplemental Register might have obviated 
the refusal of registration, such an amendment could not be approved 
because the intent-to-use applicant was prohibited by the time limit of 
Sec. 2.76(a) from contemporaneously filing an amendment to allege use.
    In order to remedy the situation, the Assistant Commissioner for 
Trademarks, by notice published in the Official Gazette, waived the 
portion of Sec. 2.76(a) which prohibited the filing of an amendment to 
allege use more than six months after issuance of a final refusal. See 
``Waiver of Trademark Rule 2.76(a),'' 1156 TMOG 12 (November 2, 1993). 
The proposed rule change merely incorporates in the rule the more 
liberal practice set forth in the Official Gazette notice.
    Similarly, Sec. 2.76(g), which concerns the correction of an 
amendment to allege use which does not meet the minimum requirements 
for such an amendment, and Sec. 2.76(h), which concerns withdrawal of 
an amendment to allege use, are proposed to be amended to delete the 
``expiration of the six-month response period after issuance of a final 
action'' time limit.
    Section 2.85(e) specifies the consequences for the payment of an 
insufficient fee, with respect to an application or registration having 
multiple classes, for certain types of filings, including a petition 
for cancellation. The section is proposed to be amended to delete the 
reference to an insufficient fee for a petition for cancellation, 
because this situation is covered, in greater detail, by 
Sec. 2.111(c)(1). Further, in view of this proposed amendment, 
Sec. 2.111(c)(1) is proposed to be amended to delete the cross-
reference to Sec. 2.85(e).
    Section 2.87(c), which now provides, in pertinent part, that a 
request to divide an application may be filed during an opposition, 
upon motion granted by the Board, is proposed to be amended to also 
specify that a request to divide may be filed during a concurrent use 
or an interference proceeding, upon motion granted by the Board. The 
proposed change corrects an oversight in the rule and codifies current 
Office practice.
    Section 2.102(d) now provides that a party filing a request for an 
extension of time to oppose must submit an original plus two copies. 
The section is proposed to be amended to eliminate the requirement for 
the filing of the

[[Page 30808]]

``original'' and two copies, and substitute a requirement that the 
request be submitted in triplicate. The Board has no need for an 
original, and the proposed change codifies current Office practice.
    Section 2.117(a), as now written, provides that, when parties to a 
case pending before the Board are engaged in a civil action which may 
be dispositive of the case, proceedings before the Board may be 
suspended until termination of the civil action. The section is 
proposed to be amended to codify the Board's current policy of 
suspending proceedings whenever either or both of the parties are 
involved in a civil action or Board proceeding which may have a bearing 
on the proceeding.
    Section 2.117(b) now provides that when there is pending, at the 
time when the question of suspension of proceedings is raised, a motion 
which is potentially dispositive of the case, the motion may be decided 
before the question of suspension is considered. The section is 
proposed to be amended to clarify that the Board may decide the 
potentially dispositive motion before the question of suspension is 
considered, regardless of the order in which they were raised. The 
proposed change codifies current Office practice.
    Section 2.120(g)(1), which governs the imposition of sanctions when 
a party fails to comply with an order of the Board relating to 
discovery, now includes the phrase ``the Board does not have authority 
to hold any person in contempt or to award any expenses to any party.'' 
The phrase is proposed to be amended to read ``the Board will not hold 
any person in contempt or award any expenses to any party.'' The Board 
has long taken the position that it does not have authority to award 
expenses or attorney fees. See MacMillan Bloedel Ltd. v. Arrow-M Corp., 
203 USPQ 952, 954 (TTAB 1979); Fisons Ltd. v. Capability Brown Ltd., 
209 USPQ 167, 171 (TTAB 1980); Anheuser-Busch, Inc. v. Major Mud & 
Chemical Co., 221 USPQ 1191, 1195 n. 9 (TTAB 1984); Luehrmann v. Kwik 
Kopy Corp., 2 USPQ2d 1303, 1305 n.4 (TTAB 1987); Fort Howard Paper Co. 
v. G.V. Gambina Inc., 4 USPQ2d 1552, 1554 (TTAB 1987); Nabisco Brands 
Inc. v. Keebler Co., 28 USPQ2d 1237, 1238 (TTAB 1993). Cf. Driscoll v. 
Cebalo, 5 USPQ2d 1477, 1481 (Bd. Pat. Int. 1982), aff'd in part, rev'd 
in part, 731 F.2d 878, 221 USPQ 745 (Fed. Cir. 1984); Clevenger v. 
Martin, 1 USPQ2d 1793, 1797 (Bd. Pat. App. & Int. 1986). However, in 
1995 the PTO, by final rule notice published in the Federal Register of 
March 17, 1995, at 60 FR 14488, and in the Official Gazette of April 
11, 1995, at 1173 TMOG 36, amended Patent Rule 1.616, 37 CFR 
Sec. 1.616, which concerns the imposition of sanctions in proceedings 
before the Board of Patent Appeals and Interferences (Patent Board), to 
provide for the imposition of a sanction in the form of compensatory 
expenses and/or compensatory attorney fees. 37 CFR 1.616(a)(5) and 
1.616(b). The notice of final rulemaking acknowledged the foregoing 
decisions but concluded, based on a detailed analysis of the 
Commissioner's authority to issue regulations imposing sanctions, that 
the Commissioner has the authority to promulgate a rule authorizing 
imposition of compensatory monetary sanctions. It is believed that the 
adoption of a rule authorizing the Board to impose a sanction in the 
form of compensatory expenses and/or compensatory attorney fees would 
result in an increase in the number of papers and motions filed in 
proceedings before the Board. In view thereof, and in order to 
harmonize Sec. 2.120(g)(1) with Sec. 1.616, Sec. 2.120(g)(1) is 
proposed to be amended to substitute a statement that the Board ``will 
not'' hold any person in contempt or award any expenses to any party, 
for the statement that the Board ``does not have authority'' to hold 
any person in contempt or award any expenses to any party. Section 
2.127(f), which now states in pertinent part that the Board ``does not 
have authority to hold any person in contempt, or to award attorneys' 
fees or other expenses to any party,'' is proposed to be amended in the 
same manner.
    Section 2.121(d), which now requires that a stipulation or 
consented motion for the rescheduling of testimony periods or of the 
closing date for discovery be submitted in one original and as many 
photocopies as there are parties, is proposed to be amended to 
eliminate the requirement that parties file the ``original'' as well as 
copies of stipulations and consented motions. Instead, the proposed 
rule requires that the stipulation or consented motion be submitted in 
a number of copies equal to the number of parties to the proceeding 
plus one copy for the Board. The Board has no need for an original, and 
the proposed change codifies current Office practice.
    Section 2.122(b)(1), which now provides, in pertinent part, that 
the file of each application or registration specified in ``a 
declaration of interference'' forms part of the record of the 
proceeding without any action by the parties, is proposed to be amended 
to clarify the rule by substituting the word ``notice'' for the word 
``declaration.'' A declaration of an interference is issued by the 
Commissioner upon the granting of a petition filed pursuant to 
Sec. 2.91. An interference proceeding declared by the Commissioner does 
not commence until the Examining Attorney has determined that all of 
the subject marks are registrable; all of the marks have been published 
in the Official Gazette for opposition; and the Board mails a ``notice 
of interference'' notifying the parties that the interference 
proceeding is thereby instituted. In the interim between the 
Commissioner's declaration of an interference and the institution of 
the proceeding by the Board, some of the applications mentioned in the 
declaration of interference may become abandoned for one reason or 
another. When the Board institutes the proceeding, it is only the 
surviving applications which are specified in the notice of 
interference, and it is only those application files which form part of 
the record of the proceeding without any action by the parties.
    Section 2.123(b) now provides, in pertinent part, that by agreement 
of the parties, the testimony of any witness may be submitted in the 
form of an affidavit by that witness, and that the parties may 
stipulate what a particular witness would testify to if called, or may 
stipulate the facts in the case. The section is proposed to be amended 
to clarify that such agreement or stipulation must be in writing.
    Section 2.123(f) now provides, in pertinent part, that the officer 
certifying a testimony deposition shall, without delay, forward the 
evidence, notices, and paper exhibits to the Commissioner of Patents 
and Trademarks. This section is proposed to be amended to state that 
either the officer or the party taking the testimony deposition, or its 
attorney or other authorized representative, should forward this 
material to the Commissioner. The proposed amendment makes it clear 
that once the officer has certified the deposition, sealed the evidence 
in an envelope or package, and inscribed thereon a certificate giving 
the number and title of the case, the name of each witness, and the 
date of sealing, either the officer or the party taking the deposition, 
or its attorney or other authorized representative, may file the 
deposition. That is, if the officer sends the envelope or package to 
the party taking the deposition, or to its attorney or other authorized 
representative, the party, or its attorney or other authorized 
representative, need not return the envelope or package to the officer 
for filing with the PTO, but rather may send it directly to the PTO. 
Concomitant with this proposed amendment, the title of

[[Page 30809]]

Sec. 2.123(f), which now reads ``Certification and filing by officer,'' 
is proposed to be amended to read ``Certification and filing of 
deposition.''
    Section 2.123(f) is proposed to be further amended to eliminate the 
present requirement that the material be forwarded to the Commissioner 
of Patents and Trademarks ``without delay.'' The proposed amendment 
conforms the section to current Board practice. While the Board prefers 
that testimony depositions be submitted promptly, and such depositions 
are normally filed with the Board at the same time that they are served 
on the adverse party or parties to the proceeding, it is Board practice 
to accept transcripts of testimony depositions at any time prior to the 
rendering of a final decision on the case. The proposed amendment does 
not affect the requirement of Sec. 2.125(a) that one copy of the 
testimony transcript, together with copies of documentary exhibits and 
duplicates or photographs of physical exhibits, be served on each 
adverse party within thirty days after completion of the taking of that 
testimony.
    Similarly, Sec. 2.125(c), which now provides that certified 
transcripts of testimony depositions, and exhibits thereto, are to be 
filed promptly with the Board, is proposed to be amended to delete the 
requirement for prompt filing with the Board. The proposed amendment 
conforms the section to current Board practice.
    Section 2.127(f) now provides, in part, that the Board ``does not 
have authority'' to hold any person in contempt, or to award attorneys' 
fees or other expenses to any party. The rule is proposed to be amended 
to provide instead that the Board ``will not'' hold any person in 
contempt, or award attorneys' fees or other expenses to any party. This 
proposed provision corresponds to a similar provision in 
Sec. 2.120(g)(1), as proposed to be amended, and is explained in more 
detail in our discussion of Sec. 2.120(g)(1) above, under this same 
heading.
    Section 2.146(e)(1), as now written, provides for the filing of a 
petition to the Commissioner from the denial of a request for an 
extension of time to file a notice of opposition. This section is 
proposed to be amended to provide also that an applicant may petition 
the Commissioner from a decision granting such a request. The proposed 
amendment codifies current practice and clarifies the rule.

Discussion of Specific Rules

    Section 2.76(a) now provides, in relevant part, that an amendment 
to allege use may be filed in an application under Section 1(b) of the 
Act ``at any time between the filing of the application and the date 
the examiner approves the mark for publication or the date of 
expiration of the six-month response period after issuance of a final 
action.'' The section is proposed to be amended to delete the phrase 
``or the date of expiration of the six-month response period after 
issuance of a final action.'' The proposed amendment reflects current 
practice, as stated in ``Waiver of Trademark Rule 2.76(a),'' 1156 TMOG 
12 (November 2, 1993).
    Section 2.76(g) provides, in relevant part, that if an amendment to 
allege use does not meet the minimum requirements specified in 
Sec. 2.76(e), the deficiency may be corrected provided the mark has not 
been approved for publication or the six-month response period after 
issuance of a final action has not expired; and that if an acceptable 
amendment to correct the deficiency is not filed prior to approval of 
the mark for publication or prior to expiration of the six-month 
response period after issuance of a final action, the amendment will 
not be examined. The section is proposed to be amended to delete the 
phrases ``or the six-month response period after issuance of a final 
action has not expired'' and ``or prior to the expiration of the six-
month response period after issuance of a final action.'' The proposed 
amendment reflects current practice.
    Section 2.76(h), which provides that an amendment to allege use may 
be withdrawn for any reason prior to approval of a mark for publication 
or expiration of the six-month response period after issuance of a 
final action, is proposed to be amended to delete the phrase ``or 
expiration of the six-month response period after issuance of a final 
action.'' The proposed amendment reflects current practice.
    Section 2.85(e) pertains to the filing of certain specified papers, 
including a petition for cancellation, with a fee which is insufficient 
because multiple classes in an application or registration are 
involved. The section is proposed to be amended to delete the 
references to a petition for cancellation, because the matter of an 
insufficient fee for a petition to cancel a registration having 
multiple classes is covered, in greater detail, in Sec. 2.111(c)(1).
    Section 2.87(c), which specifies that a request to divide an 
application may be filed, inter alia, ``during an opposition, upon 
motion granted by the Trademark Trial and Appeal Board,'' is proposed 
to be amended to insert, after the words ``during an opposition,'' the 
additional words ``or concurrent use or interference proceeding.'' The 
proposed amendment codifies current practice and corrects an oversight 
in the rule.
    Section 2.101(d)(1), which now includes a cross-reference to 
``Sec. 2.6(1),'' is proposed to be amended to correct the cross-
reference to ``Sec. 2.6(a)(17).''
    Section 2.102(d), which now provides that every request to extend 
the time for filing a notice of opposition should be submitted ``in 
triplicate (original plus two copies),'' is proposed to be amended to 
delete the words ``(original plus two copies).'' The proposed amendment 
eliminates the requirement to file ``original'' extension of time 
requests. The Board has no need for the original.
    Section 2.111(b), which now includes a cross-reference to ``section 
14(c) or (e)'' of the Act, is proposed to be amended to correct the 
cross-reference to ``section 14(3) or (5)''. The subsections of Section 
14 of the Act were renumbered by the Trademark Law Revision Act of 
1988.
    Section 2.111(c)(1), which now includes a cross-reference to 
``Sec. Sec. 2.6(1) and 2.85(e),'' is proposed to be amended to correct 
the first cross-reference to Sec. 2.6(a)(16) and to delete the cross-
reference to Sec. 2.85(e).
    Section 2.117(a) now provides that whenever it shall come to the 
attention of the Board ``that parties to a pending case are engaged in 
a civil action which may be dispositive of the case, proceedings before 
the Board may be suspended until termination of the civil action.'' The 
section is proposed to be amended to insert the words ``a party or'' 
before the word ``parties,'' insert the words ``or a Board proceeding'' 
after the first appearance of the words ``civil action,'' and 
substitute the words ``have a bearing on'' for the words ``be 
dispositive of.'' The proposed amendments clarify the rule and codify 
current practice.
    Section 2.117(b) now provides that ``Whenever there is pending, at 
the time when the question of the suspension of proceedings is raised, 
a motion which is potentially dispositive of the case, the motion may 
be decided before the question of suspension is considered.'' The 
section is proposed to be amended to read ``Whenever there is pending 
before the Board both a motion to suspend and a motion which is 
potentially dispositive of the case, the potentially dispositive motion 
may be decided before the question of suspension is considered, 
regardless of the order in which the motions were filed.'' The proposed 
amendment clarifies the rule and codifies current practice.

[[Page 30810]]

    Section 2.119(d) provides, in pertinent part, that the mere 
designation of a domestic representative does not authorize the person 
designated to prosecute the proceeding unless qualified under 
Sec. 10.14(a), or qualified under paragraphs (b) or (c) of 
Sec. 10.14(c) and authorized under Sec. 2.17(b). The section is 
proposed to be amended to delete the reference to Sec. 10.14(c). That 
section refers to nonresidents, who cannot be domestic representatives. 
The proposed amendment corrects an inadvertent error in the rule.
    Section 2.120(a) now provides that the provisions of the Federal 
Rules of Civil Procedure relating to discovery shall apply in 
opposition, cancellation, interference, and concurrent use registration 
proceedings except as otherwise provided in Sec. 2.120; that the Board 
will specify the closing date for the taking of discovery; and that the 
opening of discovery is governed by the Federal Rules of Civil 
Procedure. The section is proposed to be amended to (1) preface the 
first sentence with the qualifying words ``Wherever appropriate, the''; 
(2) include a new sentence stating that the provisions of the Federal 
Rules of Civil Procedure relating to automatic disclosure scheduling 
conferences, conferences to discuss settlement and to develop a 
discovery plan, and transmission to the court of a written report 
outlining the discovery plan, are not applicable to Board proceedings; 
(3) state that the Board will specify the opening (as well as the 
closing) date for the taking of discovery; (4) delete the provision 
that the opening of discovery is governed by the Federal Rules of Civil 
Procedure; (5) specify that the discovery period will be set for a 
period of 180 days; (6) provide that interrogatories, requests for 
production of documents and things, and requests for admission must be 
served in sufficient time that responses will fall due prior to the 
close of the discovery period, and that discovery depositions must be 
noticed and taken prior to the close of the discovery period; (7) 
specify that extensions of the discovery period will be granted only 
upon stipulation of the parties approved by the Board, and that the 
parties may stipulate to a shortening of the discovery period; (8) 
provide that responses to interrogatories, requests for production of 
documents and things, and requests for admission must be served within 
40 days from the date of service of such discovery requests; (9) 
specify that the time to respond may be extended upon stipulation of 
the parties, or upon motion showing extraordinary circumstances 
approved by the Board; and (10) provide that the resetting of a party's 
time to respond to an outstanding request for discovery will not result 
in the automatic rescheduling of the discovery and/or testimony 
periods, and that the discovery period will be rescheduled only upon 
stipulation of the parties approved by the Board, and testimony periods 
will be rescheduled only upon stipulation of the parties approved by 
the Board, or upon motion showing extraordinary circumstances granted 
by the Board.
    Section 2.120(d)(1) now provides, in pertinent part, that the total 
number of written interrogatories which a party may serve upon another 
party pursuant to Rule 33 of the Federal Rules of Civil Procedure, in a 
proceeding, shall not exceed 75, counting subparts, except that the 
Board, in its discretion, may allow additional interrogatories upon 
motion showing good cause, or upon stipulation of the parties; and that 
a motion for leave to file additional interrogatories must be filed and 
granted prior to the service of the proposed additional 
interrogatories, and must be accompanied by a copy of the 
interrogatories, if any, which have already been served by the moving 
party, and by a copy of the interrogatories proposed to be served. The 
section is proposed to be amended to lower the interrogatory number 
limit from 75, counting subparts, to 25, counting subparts, and to 
delete the references to a motion for leave to serve additional 
interrogatories. However, the provision allowing additional 
interrogatories upon stipulation of the parties is proposed to be 
retained.
    Section 2.120(d)(2), which now includes only a provision concerning 
the place for production of documents and things, is proposed to be 
amended to limit the number of requests for production of documents and 
things which a party may serve upon another party, in a proceeding, to 
15, counting subparts. Specifically, the section is proposed to be 
amended to include new sentences providing that the total number of 
requests for production of documents and things which a party may serve 
upon another party pursuant to Rule 34 of the Federal Rules of Civil 
Procedure, in a proceeding, shall not exceed 15, counting subparts, 
except upon stipulation of the parties; that if a party upon which 
requests for production of documents and things have been served 
believes that the number of requests served exceeds the limitation 
specified in the paragraph, and is not willing to waive this basis for 
objection, the party shall, within the time for (and instead of) 
serving answers and specific objections to the requests, serve a 
general objection on the ground of their excessive number; and that if 
the inquiring party, in turn, files a motion to compel discovery, the 
motion must be accompanied by a copy of the set(s) of requests which 
together are said to exceed the limitation, and must otherwise comply 
with the requirements of Sec. 2.120(e). These proposed provisions 
parallel the provisions of Sec. 2.120(d)(1), which limit the number of 
interrogatories which a party may serve upon another party in a 
proceeding.
    Section 2.120(e), which governs motions to compel discovery, is 
proposed to be amended by redesignating the present paragraph as 
(e)(1), and amending that paragraph to insert, after the first 
sentence, a new sentence specifying that a motion to compel must be 
filed within 30 days after the close of the discovery period, as 
originally set or as reset. In addition, Sec. 2.120(e) is proposed to 
be amended to include a new paragraph, designated (e)(2), specifying 
that when a party files a motion for an order to compel discovery, the 
case will be suspended by the Board with respect to all matters not 
germane to the motion, and no party should file any paper which is not 
germane to the motion, except as otherwise specified in the Board's 
suspension letter. The proposed new paragraph also provides that the 
filing of a motion to compel shall not toll the time for a party to 
respond to any outstanding discovery requests or to appear for any 
noticed discovery deposition.
    Section 2.120(g)(1), which now states, in pertinent part, that 
``the Board does not have authority to hold any person in contempt or 
to award any expenses to any party,'' is proposed to be amended to 
state that ``the Board will not hold any person in contempt or award 
any expenses to any party.''
    Section 2.120(h), which concerns requests for admission, is 
proposed to be amended to redesignate the present paragraph as (h)(2); 
delete the first sentence, which reads ``Requests for admissions shall 
be governed by Rule 36 of the Federal Rules of Civil Procedure except 
that the Trademark Trial and Appeal Board does not have authority to 
award any expenses to any party.''; add to the beginning a new sentence 
reading ``Any motion by a party to determine the sufficiency of an 
answer or objection to a request made by that party for an admission 
must be filed within 30 days after the close of the discovery period, 
as originally set or as reset.''; and revise the beginning of the 
second sentence, which now reads, ``A motion by a party to determine 
the sufficiency of an answer or objection to a request made

[[Page 30811]]

by that party for an admission shall * * *,'' to read ``The motion 
shall * * *.'' The section is proposed to be further amended to add a 
new paragraph, designated (h)(1), limiting the number of requests for 
admission which a party may serve upon another party, in a proceeding, 
to 25, counting subparts. Specifically, the proposed new paragraph 
provides that the total number of requests for admission which a party 
may serve upon another party pursuant to Rule 36 of the Federal Rules 
of Civil Procedure, in a proceeding, shall not exceed 25, counting 
subparts, except upon stipulation of the parties; that if a party upon 
which requests for admission have been served believes that the number 
of requests served exceeds the limitation specified in the paragraph, 
and is not willing to waive this basis for objection, the party shall, 
within the time for (and instead of) serving answers and specific 
objections to the requests, serve a general objection on the ground of 
their excessive number; and that if the inquiring party, in turn, files 
a motion to determine the sufficiency of the objection, the motion must 
be accompanied by a copy of the set(s) of requests for admission which 
together are said to exceed the limitation, and must otherwise comply 
with the requirements of paragraph (h)(2) of the section. The proposed 
provisions parallel the provisions of Sec. 2.120(d)(1), which limit the 
number of interrogatories which a party may serve upon another party in 
a proceeding. Finally, Sec. 2.120(h) is proposed to be amended to add 
another new paragraph, designated (h)(3), which provides for the 
suspension of proceedings when a motion to determine the sufficiency of 
an answer or objection to a request for admission is filed. 
Specifically, the proposed new paragraph provides that when a party 
files a motion to determine the sufficiency of an answer or objection 
to a request made by that party for an admission, the case will be 
suspended by the Board with respect to all matters not germane to the 
motion, and no party should file any paper which is not germane to the 
motion, except as otherwise specified in the Board's suspension order. 
The proposed new paragraph also provides that the filing of a motion to 
determine the sufficiency of an answer or objection to a request for 
admission shall not toll the time for a party to respond to any 
outstanding discovery requests or to appear for any noticed discovery 
deposition. The provisions of proposed new Sec. 2.120(h)(3) parallel 
the provisions of proposed new Sec. 2.120(e) and Sec. 2.127(d), as 
proposed to be amended.
    Section 2.121(a)(1) is proposed to be amended by revising the third 
sentence, which now provides that testimony periods may be rescheduled 
``by stipulation of the parties approved by the Board, or upon motion 
granted by the Board, or by order of the Board,'' to provide that 
testimony periods may be rescheduled ``by stipulation of the parties 
approved by the Board, or upon motion showing extraordinary 
circumstances granted by the Board.'' The sentence is proposed to be 
further amended to specify that ``if such a motion is denied, the 
testimony periods will remain as set.'' In addition, the last sentence 
of the section, which now reads ``The resetting of a party's time to 
respond to an outstanding request for discovery will not result in the 
automatic rescheduling of the discovery and/or testimony periods; such 
dates will be rescheduled only upon stipulation of the parties approved 
by the Board, or upon motion granted by the Board, or by order of the 
Board,'' is proposed to be deleted. The sentence is proposed to be 
added to Sec. 2.120(a), with the latter part of the sentence being 
modified to read ``the discovery period will be rescheduled only upon 
stipulation of the parties approved by the Board, and testimony periods 
will be rescheduled only upon stipulation of the parties approved by 
the Board, or upon motion showing extraordinary circumstances granted 
by the Board.'' The proposed modification is consistent with the third 
sentence of Sec. 2.121(a)(1), as proposed to be amended.
    Section 2.121(c), which governs the length of the testimony 
periods, is proposed to be amended to enlarge the rebuttal testimony 
period from 15 to 30 days, and to enlarge all other testimony periods 
from 30 to 60 days. In addition, the last sentence of the section, 
which now provides that the periods may be extended ``by stipulation of 
the parties approved by the Trademark Trial and Appeal Board, or upon 
motion granted by the Board, or by order of the Board,'' is proposed to 
be amended to provide that the periods may be extended ``by stipulation 
of the parties approved by the Trademark Trial and Appeal Board, or 
upon motion showing extraordinary circumstances granted by the Board.'' 
The sentence is proposed to be further amended to specify that ``if 
such a motion is denied, the testimony periods will remain as set.'' 
The proposed amendments to this sentence parallel the proposed 
amendment to the third sentence of Sec. 2.121(a)(1).
    Section 2.121(d) now provides, in pertinent part, that when parties 
stipulate to the rescheduling of testimony periods or to the 
rescheduling of the closing date for discovery and the rescheduling of 
testimony periods, a stipulation ``submitted in one original plus as 
many photocopies as there are parties'' will, if approved, be so 
stamped, signed, and dated, and the copies will be promptly returned to 
the parties. The section is proposed to be amended by revising the 
quoted section to read ``submitted in a number of copies equal to the 
number of parties to the proceeding plus one copy for the Board.''
    Section 2.122(b)(1), which now provides, in pertinent part, that 
each application or registration file specified in a declaration of 
interference forms part of the record of the proceeding without any 
action by the parties, is proposed to be amended by substituting the 
word ``notice'' for the word ``declaration.''
    Section 2.122(d)(1), which now includes a cross-reference to 
``Sec. 2.6(n),'' is proposed to be amended to correct the cross-
reference to ``Sec. 2.6(b)(4).''
    Section 2.123(b) now provides, in its second sentence, that by 
agreement of the parties, the testimony of any witness or witnesses of 
any party may be submitted in the form of an affidavit by such witness 
or witnesses. The sentence is proposed to be amended by inserting the 
word ``written'' between the words ``by'' and ``agreement.'' The third 
sentence of the section now provides that the parties may stipulate 
what a particular witness would testify to if called, or the facts in 
the case of any party may be stipulated. The sentence is proposed to be 
amended by inserting the words ``in writing'' after the word 
``stipulate'' and after the word ``stipulated.''
    Section 2.123(f) pertains to the certification and filing of a 
deposition by the officer before whom the deposition was taken. The 
third sentence of the second paragraph of the section now reads, 
``Unless waived on the record by an agreement, he shall then, without 
delay, securely seal in an envelope all the evidence, notices, and 
paper exhibits, inscribe upon the envelope a certificate giving the 
number and title of the case, the name of each witness, and the date of 
sealing, address the package, and forward the same to the Commissioner 
of Patents and Trademarks.'' The sentence is proposed to be amended to 
delete the words ``without delay,'' to put a period after the word 
``sealing,'' and to convert the remainder of the present sentence into 
a new sentence which reads, ``The officer or the party taking the 
deposition, or its attorney or other authorized representative, shall 
then

[[Page 30812]]

address the package and forward the same to the Commissioner of Patents 
and Trademarks.'' The fourth sentence of the paragraph now reads, ``If 
the weight or bulk of an exhibit shall exclude it from the envelope, it 
shall, unless waived on the record by agreement of all parties, be 
authenticated by the officer and transmitted in a separate package 
marked and addressed as provided in this section.'' The sentence is 
proposed to be amended to insert, after the word ``transmitted,'' the 
phrase ``by the officer or the party taking the deposition, or its 
attorney or other authorized representative.'' Finally, in view of the 
proposed amendments to the third and fourth sentences, the title of the 
section, which now reads ``Certification and filing by officer,'' is 
proposed to be amended to read ``Certification and filing of 
deposition.''
    Section 2.125(c), which now provides that one certified transcript 
(of a testimony deposition) and exhibits shall be filed ``promptly,'' 
with the Board, is proposed to be amended to delete the word 
``promptly.''
    Section 2.127(a), which governs the filing of briefs on motions, is 
proposed to be amended to (1) enlarge the time for filing a brief in 
response to a motion from 15 days to 30 days, and preface the time 
provision with the phrase ``Except as provided in paragraph (e)(1) of 
this section, a''; (2) delete, from the second sentence, a provision 
for extension of this time by ``order of the Board on motion for good 
cause'' and substitute a provision for an extension by ``stipulation of 
the parties approved by the Board, or upon motion showing extraordinary 
circumstances granted by the Board,'' with the added provision that, 
``if such a motion for an extension is denied, the time for responding 
to the motion remains as specified under this section''; (3) add a new 
provision to specify that a reply brief, if filed, shall be filed 
within 15 days from the date of service of the brief in response to the 
motion, and preface this new provision with the phrase ``Except as 
provided in paragraph (e)(1) of this section, a''; (4) specify that the 
time for filing a reply brief will not be extended, and that no further 
papers in support of or in opposition to a motion will be considered by 
the Board; (5) add form requirements for briefs, i.e., that they shall 
be submitted in typewritten or printed form, double spaced, in at least 
pica or eleven-point type, on letter-size paper; (6) add a page 
limitation for briefs, namely, 25 pages for a brief in support of or in 
response to a motion and 10 pages for a reply brief; and (7) specify 
that exhibits submitted in support of or in opposition to a motion 
shall not be deemed to be part of the brief for purposes of determining 
the length of the brief.
    Section 2.127(b), which now provides, in pertinent part, that any 
request for reconsideration or modification of an order or decision 
issued on a motion must be filed within thirty days from the date 
thereof, is proposed to be amended to change the specification of the 
time period for requesting reconsideration or modification from 
``thirty days'' to ``one month.''
    Section 2.127(d) provides, in its first sentence, that when any 
party files a motion which is potentially dispositive of a proceeding, 
the case will be suspended by the Board with respect to all matters not 
germane to the motion, and no party should file any paper which is not 
germane to the motion. The sentence is proposed to be amended to add to 
the end of the sentence the phrase ``except as otherwise specified in 
the Board's suspension order.'' The section is proposed to be further 
amended to add, immediately after the first sentence, a new sentence 
providing that filing a summary judgment motion shall not toll the time 
for the moving party to respond to any outstanding discovery requests 
or to appear at a noticed discovery deposition, but it shall toll the 
time for the nonmoving party to serve such responses or to appear for 
such deposition.
    Section 2.127(e)(1), which governs the time for filing a motion for 
summary judgment, is proposed to be amended to add, at the beginning of 
the section, a provision that a motion for summary judgment may not be 
filed until notification of the proceeding has been sent to the parties 
by the Board. In addition, the section is proposed to be amended to add 
to the end thereof provisions specifying that (1) a motion under Rule 
56(f) of the Federal Rules of Civil Procedure, if filed in response to 
a motion for summary judgment, shall be filed within 30 days from the 
date of service of the summary judgment motion; (2) the time for filing 
a motion under Rule 56(f) will not be extended; (3) if no motion under 
Rule 56(f) is filed, a brief in response to the motion for summary 
judgment shall be filed within 60 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 showing extraordinary 
circumstances granted by the Board and that, if such a motion for an 
extension is denied, the time for responding to the motion for summary 
judgment remains as specified under this section; (4) a reply brief, if 
filed, shall be filed within 30 days from the date of service of the 
brief in response to the motion; (5) the time for filing a reply brief 
will not be extended; and (6) no further papers in support of or in 
opposition to a motion for summary judgment will be considered by the 
Board.
    Section 2.127(f), which now states that ``The Board does not have 
authority to hold any person in contempt, or to award attorneys' fees 
or other expenses to any party,'' is proposed to be amended to state 
instead that ``The Board will not hold any person in contempt, or award 
attorneys'' fees or other expenses to any party.''
    Section 2.134(a), which now includes a cross-reference to ``section 
7(d)'' of the Act of 1946, is proposed to be amended to correct the 
cross-reference to ``section 7(e).''
    Section 2.146(e)(1), which now provides for filing a petition to 
the Commissioner from the denial of a request for an extension of time 
to file a notice of opposition, is proposed to be amended to provide 
also for filing a petition from the grant of such a request. 
Specifically, the first sentence of the section now provides that a 
petition from the denial of a request for an extension of time to file 
a notice of opposition shall be filed within fifteen days from the date 
of mailing of the denial of the request and shall be served on the 
attorney or other authorized representative of the applicant, if any, 
or on the applicant. The sentence is proposed to be revised to read, 
``A petition from the grant or denial of a request for an extension of 
time to file a notice of opposition shall be filed within fifteen days 
from the date of mailing of the grant or denial of the request. A 
petition from the grant of a request shall be served on the attorney or 
other authorized representative of the potential opposer, if any, or on 
the potential opposer. A petition from the denial of a request shall be 
served on the attorney or other authorized representative of the 
applicant, if any, or on the applicant.'' In addition, the present 
third sentence of the section, which provides, in pertinent part, that 
the applicant may file a response within fifteen days from the date of 
service of the petition and shall serve a copy of the response on the 
petitioner, is proposed to be amended by revising the beginning of the 
sentence to read, ``The potential opposer or the applicant, as the case 
may be, may file a response within fifteen days * * *.''
    Section 3.41, which now includes a cross-reference to 
``Sec. 2.6(q),'' is proposed to be amended to correct the cross-
reference to ``Sec. 2.6(b)(6).''

[[Page 30813]]

Environmental, Energy, and Other Considerations

    The proposed rule changes are in conformity with the requirements 
of the Regulatory Flexibility Act (5 U.S.C. 601 et seq.), Executive 
Order 12612, and the Paperwork Reduction Act of 1995 (PRA) (44 U.S.C. 
3501 et seq.). The proposed changes have been determined to be not 
significant for purposes of Executive Order 12866.
    The Assistant General Counsel for Legislation and Regulation of the 
Department of Commerce has certified to the Chief Counsel for Advocacy, 
Small Business Administration, that the proposed rule changes will not 
have a significant impact on a substantial number of small entities 
(Regulatory Flexibility Act, 5 U.S.C. 605(b)). The principal effect of 
this rule change is to improve practice and expedite proceedings in 
inter partes cases before the Board.
    The PTO has determined that the proposed rule changes have no 
Federalism implications affecting the relationship between the National 
Government and the States as outlined in Executive Order 12612.
    This rule involves the Petition to Cancel requirement which has not 
been previously approved by the OMB under the PRA. A request to collect 
this information has been submitted to OMB for review and approval. The 
reporting burden for this collection of information is estimated to be 
20 minutes per response, including the time for reviewing instructions, 
searching existing data sources, gathering and maintaining the data 
needed, and completing and reviewing the collection of information. 
Comments are invited on: (a) whether the collection of information is 
necessary for proper performance of the functions of the agency; (b) 
the accuracy of the agency's estimate of the burden; (c) ways to 
enhance the quality, utility, and clarity of the information to be 
collected; and (d) ways to minimize the burden of the collection of 
information to respondents. This rule also involves information 
requirements associated with filing an Opposition to the Registration 
of a Mark, Amendment to Allege Use, and dividing an application. These 
requirements have been previously approved by the OMB under control 
number 0651-0009. Send comments regarding the burden estimate or any 
other aspects of the information requirements, including suggestions 
for reducing the burden, to the Assistant Commissioner for Trademarks, 
Box TTAB--No Fee, 2900 Crystal Drive, Arlington, VA 22202-3513, marked 
to the attention of Ellen J. Seeherman, and to the Office of 
Information and Regulatory Affairs, Office of Management and Budget, 
Washington, DC 20503 (Attention: PTO Desk Officer).
    Notwithstanding any other provision of law, no person is required 
to respond to, nor shall a person be subject to a penalty for failure 
to comply with, a collection of information, subject to the 
requirements of the PRA, unless that collection of information displays 
a currently valid Office of Management and Budget (OMB) control number.

List of Subjects

37 CFR Part 2

    Administrative practice and procedure, Courts, Lawyers, Trademarks.

37 CFR Part 3

    Administrative practice and procedure, Patents, Trademarks.

    For the reasons given in the preamble and pursuant to the authority 
contained in Sec. 41 of the Trademark Act of July 5, 1946, as amended, 
the Patent and Trademark Office proposes to amend Part 2 and Part 3 of 
Title 37 of the Code of Federal Regulations by amending or revising 
Secs. 2.76, 2.85, 2.87, 2.101, 2.102, 2.111, 2.117, 2.119, 2.120, 
2.121, 2.122, 2.123, 2.125, 2.127, 2.134, 2.146 and 3.41, as set forth 
below. Additions are indicated by arrows and deletions by brackets.

PART 2--RULES OF PRACTICE IN TRADEMARK CASES

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

    Authority: 15 U.S.C. 1123; 35 U.S.C. 6, unless otherwise noted.

    1a. Section 2.76 is proposed to be amended by revising paragraphs 
(a), (g), and (h) to read as follows:


Sec. 2.76  Amendment to allege use.

    (a) An application under section 1(b) of the Act may be amended to 
allege use of the mark in commerce under section 1(c) of the Act at any 
time between the filing of the application and the date the examiner 
approves the mark for publication [or the date of expiration of the 
six-month response period after issuance of a final action]. 
Thereafter, an allegation of use may be submitted only as a statement 
of use under Sec. 2.88 after the issuance of a notice of allowance 
under section 13(b)(2) of the Act. If an amendment to allege use is 
filed outside the time period specified in this paragraph, it will be 
returned to the applicant.
* * * * *
    (g) If the amendment to allege use is filed within the permitted 
time period but does not meet the minimum requirements specified in 
paragraph (e) of this section, applicant will be notified of the 
deficiency. The deficiency may be corrected provided the mark has not 
been approved for publication [or the six-month response period after 
issuance of a final action has not expired]. If an acceptable amendment 
to correct the deficiency is not filed prior to approval of the mark 
for publication [or prior to the expiration of the six-month response 
period after issuance of a final action], the amendment will not be 
examined.
    (h) An amendment to allege use may be withdrawn for any reason 
prior to approval of a mark for publication [or expiration of the six-
month response period after issuance of a final action].
    2. Section 2.85 is proposed to be amended by revising paragraph (e) 
to read as follows:


Sec. 2.85  Classification schedules.

* * * * *
    (e) Where the amount of the fee received on filing an appeal in 
connection with an application or on an application for renewal [or in 
connection with a petition for cancellation] is sufficient for at least 
one class of goods or services but is less than the required amount 
because multiple classes in an application or registration are 
involved, the appeal or renewal application [or petition for 
cancellation] will not be refused on the ground that the amount of the 
fee was insufficient if the required additional amount of the fee is 
received in the Patent and Trademark Office within the time limit set 
forth in the notification of this defect by the Office, or if action is 
sought only for the number of classes equal to the number of fees 
submitted.
* * * * *
    3. Section 2.87 is proposed to be amended by revising paragraph (c) 
to read as follows:


Sec. 2.87  Dividing an application.

* * * * *
    (c) A request to divide an application may be filed at any time 
between the filing of the application and the date the Trademark 
Examining Attorney approves the mark for publication or the date of 
expiration of the six-month response period after issuance of a final 
action; or during an opposition >or concurrent use or interference 
proceeding<, upon="" motion="" granted="" by="" the="" trademark="" trial="" and="" appeal="" board.="" [[page="" 30814]]="" additionally,="" a="" request="" to="" divide="" an="" application="" under="" section="" 1(b)="" of="" the="" act="" may="" be="" filed="" with="" a="" statement="" of="" use="" under="" sec.="" 2.88="" or="" at="" any="" time="" between="" the="" filing="" of="" a="" statement="" of="" use="" and="" the="" date="" the="" trademark="" examining="" attorney="" approves="" the="" mark="" for="" registration="" or="" the="" date="" of="" expiration="" of="" the="" six-month="" response="" period="" after="" issuance="" of="" a="" final="" action.="" *="" *="" *="" *="" *="" 4.="" section="" 2.101="" is="" proposed="" to="" be="" amended="" by="" revising="" paragraph="" (d)(1)="" to="" read="" as="" follows:="" sec.="" 2.101="" filing="" an="" opposition.="" *="" *="" *="" *="" *="" (d)(1)="" the="" opposition="" must="" be="" accompanied="" by="" the="" required="" fee="" for="" each="" party="" joined="" as="" opposer="" for="" each="" class="" in="" the="" application="" for="" which="" registration="" is="" opposed="" (see="" sec.="">2.6(a)(17)< [2.6(1)].="" if="" no="" fee,="" or="" a="" fee="" insufficient="" to="" pay="" for="" one="" person="" to="" oppose="" the="" registration="" of="" a="" mark="" in="" at="" least="" one="" class,="" is="" submitted="" within="" thirty="" days="" after="" publication="" of="" the="" mark="" to="" be="" opposed="" or="" within="" an="" extension="" of="" time="" for="" filing="" an="" opposition,="" the="" opposition="" will="" not="" be="" refused="" if="" the="" required="" fee(s)="" is="" submitted="" to="" the="" patent="" and="" trademark="" office="" within="" the="" time="" limit="" set="" in="" the="" notification="" of="" this="" defect="" by="" the="" office.="" *="" *="" *="" *="" *="" 5.="" section="" 2.102="" is="" proposed="" to="" be="" amended="" by="" revising="" paragraph="" (d)="" to="" read="" as="" follows:="" sec.="" 2.102="" extension="" of="" time="" for="" filing="" an="" opposition.="" *="" *="" *="" *="" *="" (d)="" every="" request="" to="" extend="" the="" time="" for="" filing="" a="" notice="" of="" opposition="" should="" be="" submitted="" in="" triplicate="" [(original="" plus="" two="" copies)].="" 6.="" section="" 2.111="" is="" proposed="" to="" be="" amended="" by="" revising="" paragraphs="" (b)="" and="" (c)(1)="" to="" read="" as="" follows:="" sec.="" 2.111="" filing="" petition="" for="" cancellation.="" *="" *="" *="" *="" *="" (b)="" any="" entity="" which="" believes="" that="" it="" is="" or="" will="" be="" damaged="" by="" a="" registration="" may="" file="" a="" petition,="" which="" should="" be="" addressed="" to="" the="" trademark="" trial="" and="" appeal="" board,="" to="" cancel="" the="" registration="" in="" whole="" or="" in="" part.="" the="" petition="" need="" not="" be="" verified,="" and="" may="" be="" signed="" by="" the="" petitioner="" or="" the="" petitioner's="" attorney="" or="" other="" authorized="" representative.="" the="" petition="" may="" be="" filed="" at="" any="" time="" in="" the="" case="" of="" registrations="" on="" the="" supplemental="" register="" or="" under="" the="" act="" of="" 1920,="" or="" registrations="" under="" the="" act="" of="" 1881="" or="" the="" act="" of="" 1905="" which="" have="" not="" been="" published="" under="" section="" 12(c)="" of="" the="" act,="" or="" on="" any="" ground="" specified="" in="" section="" 14="">(3)< [(c)]="" or="">(5)< [(e)]="" of="" the="" act.="" in="" all="" other="" cases="" the="" petition="" and="" the="" required="" fee="" must="" be="" filed="" within="" five="" years="" from="" the="" date="" of="" registration="" of="" the="" mark="" under="" the="" act="" or="" from="" the="" date="" of="" publication="" under="" section="" 12(c)="" of="" the="" act.="" (c)(1)="" the="" petition="" must="" be="" accompanied="" by="" the="" required="" fee="" for="" each="" class="" in="" the="" registration="" for="" which="" cancellation="" is="" sought="" (see="" sec.="" [sec.="" ]="">2.6(a)(16)< [2.6(1)="" and="" 2.85(e)]).="" if="" the="" fees="" submitted="" are="" insufficient="" for="" a="" cancellation="" against="" all="" of="" the="" classes="" in="" the="" registration,="" and="" the="" particular="" class="" or="" classes="" against="" which="" the="" cancellation="" is="" filed="" are="" not="" specified,="" the="" office="" will="" issue="" a="" written="" notice="" allowing="" petitioner="" until="" a="" set="" time="" in="" which="" to="" submit="" the="" required="" fee(s)="" (provided="" that="" the="" five-year="" period,="" if="" applicable,="" has="" not="" expired)="" or="" to="" specify="" the="" class="" or="" classes="" sought="" to="" be="" cancelled.="" if="" the="" required="" fee(s)="" is="" not="" submitted,="" or="" the="" specification="" made,="" within="" the="" time="" set="" in="" the="" notice,="" the="" cancellation="" will="" be="" presumed="" to="" be="" against="" the="" class="" or="" classes="" in="" ascending="" order,="" beginning="" with="" the="" lowest="" numbered="" class,="" and="" including="" the="" number="" of="" classes="" in="" the="" registration="" for="" which="" the="" fees="" submitted="" are="" sufficient="" to="" pay="" the="" fee="" due="" for="" each="" class.="" *="" *="" *="" *="" *="" 7.="" section="" 2.117="" is="" proposed="" to="" be="" amended="" by="" revising="" paragraphs="" (a)="" and="" (b)="" to="" read="" as="" follows:="" sec.="" 2.117="" suspension="" of="" proceedings.="" (a)="" whenever="" it="" shall="" come="" to="" the="" attention="" of="" the="" trademark="" trial="" and="" appeal="" board="" that="">a party or< parties="" to="" a="" pending="" case="" are="" engaged="" in="" a="" civil="" action="">or a Board proceeding< which="" may="">have a 
bearing on< [be="" dispositive="" of]="" the="" case,="" proceedings="" before="" the="" board="" may="" be="" suspended="" until="" termination="" of="" the="" civil="" action.="" (b)="" whenever="" there="" is="" pending="">before the Board both a motion to 
suspend and< [,="" at="" the="" time="" when="" the="" question="" of="" the="" suspension="" of="" proceedings="" is="" raised,]="" a="" motion="" which="" is="" potentially="" dispositive="" of="" the="" case,="" the="">potentially dispositive< motion="" may="" be="" decided="" before="" the="" question="" of="" suspension="" is="" considered="">regardless of the order in 
which the motions were filed<. *="" *="" *="" *="" *="" 8.="" section="" 2.119="" is="" proposed="" to="" be="" amended="" by="" revising="" paragraph="" (d)="" to="" read="" as="" follows:="" 2.119="" service="" and="" signing="" of="" papers.="" *="" *="" *="" *="" *="" (d)="" if="" a="" party="" to="" an="" inter="" partes="" proceeding="" is="" not="" domiciled="" in="" the="" united="" states="" and="" is="" not="" represented="" by="" an="" attorney="" or="" other="" authorized="" representative="" located="" in="" the="" united="" states,="" the="" party="" must="" designate="" by="" written="" document="" filed="" in="" the="" patent="" and="" trademark="" office="" the="" name="" and="" address="" of="" a="" person="" resident="" in="" the="" united="" states="" on="" whom="" may="" be="" served="" notices="" or="" process="" in="" the="" proceeding.="" in="" such="" cases,="" official="" communications="" of="" the="" patent="" and="" trademark="" office="" will="" be="" addressed="" to="" the="" domestic="" representative="" unless="" the="" proceeding="" is="" being="" prosecuted="" by="" an="" attorney="" at="" law="" or="" other="" qualified="" person="" duly="" authorized="" under="" sec.="" 10.14(c)="" of="" this="" subchapter.="" the="" mere="" designation="" of="" a="" domestic="" representative="" does="" not="" authorize="" the="" person="" designated="" to="" prosecute="" the="" proceeding="" unless="" qualified="" under="" sec.="" 10.14(a),="" or="" qualified="" under="" [paragraph="" (b)="" or="" (c)="" of]="" sec.="" 10.14="">(b)< and="" authorized="" under="" sec.="" 2.17(b).="" *="" *="" *="" *="" *="" 9.="" section="" 2.120="" is="" proposed="" to="" be="" amended="" by="" redesignating="" current="" paragraphs="" (e)="" and="" (h)="" as="" (e)(1)="" and="" (h)(2),="" respectively;="" adding="" new="" paragraphs="" (e)(2),="" (h)(1),="" and="" (h)(3);="" and="" revising="" paragraphs="" (a),="" (d),="" and="" (g)(1)="" and="" redesignated="" paragraphs="" (e)(1)="" and="" (h)(2)="" to="" read="" as="" follows:="" sec.="" 2.120="" discovery.="" (a)="" in="" general.="">Wherever appropriate, the< [the]="" provisions="" of="" the="" federal="" rules="" of="" civil="" procedure="" relating="" to="" discovery="" shall="" apply="" in="" opposition,="" cancellation,="" interference="" and="" concurrent="" use="" registration="" proceedings="" except="" as="" otherwise="" provided="" in="" this="" section.="">The 
provisions of the Federal Rules of Civil Procedure relating to 
automatic disclosure, scheduling conferences, conferences to discuss 
settlement and to develop a discovery plan, and transmission to the 
court of a written report outlining the discovery plan, are not 
applicable to Board proceedings.< the="" trademark="" trial="" and="" appeal="" board="" will="" specify="" the="">opening and< closing="" date="">s for< the="" taking="" of="" discovery.="">The discovery period will be set for a period of 180 days. 
Interrogatories, requests for production of documents and things, and 
requests for admission must be served in sufficient time that responses 
will fall due prior to the close of the discovery period. Discovery 
depositions must be noticed and taken prior to the close of the 
discovery period. Extensions of the discovery period will be granted 
only upon stipulation of the parties approved by the Board. The parties 
may stipulate to a shortening of the discovery period. Responses to 
interrogatories, requests for production of documents and things, and 
requests for admission must be served within 40 days from the date of 
service of such discovery requests. The

[[Page 30815]]

time to respond may be extended upon stipulation of the parties, or 
upon motion showing extraordinary circumstances granted by the Board. 
The resetting of a party's time to respond to an outstanding request 
for discovery will not result in the automatic rescheduling of the 
discovery and/or testimony periods; the discovery period will be 
rescheduled only upon stipulation of the parties approved by the Board, 
and testimony periods will be rescheduled only upon stipulation of the 
parties approved by the Board, or upon motion showing extraordinary 
circumstances granted by the Board.< [the="" opening="" of="" discovery="" is="" governed="" by="" the="" federal="" rules="" of="" civil="" procedure.]="" *="" *="" *="" *="" *="" (d)="" interrogatories;="" request="" for="" production.="" (1)="" the="" total="" number="" of="" written="" interrogatories="" which="" a="" party="" may="" serve="" upon="" another="" party="" pursuant="" to="" rule="" 33="" of="" the="" federal="" rules="" of="" civil="" procedure,="" in="" a="" proceeding,="" shall="" not="" exceed="">25< [seventy-five],="" counting="" subparts,="" except="" [that="" the="" trademark="" trial="" and="" appeal="" board,="" in="" its="" discretion,="" may="" allow="" additional="" interrogatories="" upon="" motion="" therefor="" showing="" good="" cause,="" or]="" upon="" stipulation="" of="" the="" parties.="" [a="" motion="" for="" leave="" to="" serve="" additional="" interrogatories="" must="" be="" filed="" and="" granted="" prior="" to="" the="" service="" of="" the="" proposed="" additional="" interrogatories;="" and="" must="" be="" accompanied="" by="" a="" copy="" of="" the="" interrogatories,="" if="" any,="" which="" have="" already="" been="" served="" by="" the="" moving="" party,="" and="" by="" a="" copy="" of="" the="" interrogatories="" proposed="" to="" be="" served.]="" if="" a="" party="" upon="" which="" interrogatories="" have="" been="" served="" believes="" that="" the="" number="" of="" interrogatories="" served="" exceed="">s< the="" limitation="" specified="" in="" this="" paragraph,="" and="" is="" not="" willing="" to="" waive="" this="" basis="" for="" objection,="" the="" party="" shall,="" within="" the="" time="" for="" (and="" instead="" of)="" serving="" answers="" and="" specific="" objections="" to="" the="" interrogatories,="" serve="" a="" general="" objection="" on="" the="" ground="" of="" their="" excessive="" number.="" if="" the="" inquiring="" party,="" in="" turn,="" files="" a="" motion="" to="" compel="" discovery,="" the="" motion="" must="" be="" accompanied="" by="" a="" copy="" of="" the="" set(s)="" of="" interrogatories="" which="" together="" are="" said="" to="" exceed="" the="" limitation,="" and="" must="" otherwise="" comply="" with="" the="" requirements="" of="" paragraph="" (e)="" of="" this="" section.="" (2)="">The total number of requests for production of documents and 
things which a party may serve upon another party pursuant to Rule 34 
of the Federal Rules of Civil Procedure, in a proceeding, shall not 
exceed 15, counting subparts, except upon stipulation of the parties. 
If a party upon which requests for production of documents and things 
have been served believes that the number of requests served exceeds 
the limitation specified in this paragraph, and is not willing to waive 
this basis for objection, the party shall, within the time for (and 
instead of) serving answers and specific objections to the requests, 
serve a general objection on the ground of their excessive number. If 
the inquiring party, in turn, files a motion to compel discovery, the 
motion must be accompanied by a copy of the set(s) of requests which 
together are said to exceed the limitation, and must otherwise comply 
with the requirements of paragraph (e) of this section.< the="" production="" of="" documents="" and="" things="" under="" the="" provisions="" of="" rule="" 34="" of="" the="" federal="" rules="" of="" civil="" procedure="" will="" be="" made="" at="" the="" place="" where="" the="" documents="" and="" things="" are="" usually="" kept,="" or="" where="" the="" parties="" agree,="" or="" where="" and="" in="" the="" manner="" which="" the="" trademark="" trial="" and="" appeal="" board,="" upon="" motion,="" orders.="" (e)="" motion="" for="" an="" order="" to="" compel="" discovery.="">(1)< if="" a="" party="" 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="" or="" thing,="" the="" party="" seeking="" discovery="" may="" file="" a="" motion="" before="" the="" trademark="" trial="" and="" appeal="" board="" for="" an="" order="" to="" compel="" a="" designation,="" or="" attendance="" at="" a="" deposition,="" or="" an="" answer,="" or="" production="" and="" an="" opportunity="" to="" inspect="" and="" copy.="">The motion must be filed within 30 days after the close of 
the discovery period, as originally set or as reset.< the="" motion="" shall="" include="" a="" copy="" of="" the="" request="" for="" designation="" 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="" or="" things="" that="" were="" not="" produced="" for="" inspection="" and="" the="" documents="" or="" things="" that="" were="" not="" produced="" for="" inspection="" and="" copying.="" the="" motion="" must="" be="" supported="" by="" a="" written="" statement="" 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="" 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.="">(2) When a party files a motion for an order to compel discovery, 
the case will be suspended by the Trademark Trial and Appeal Board with 
respect to all matters not germane to the motion, and no party should 
file any paper which is not germane to the motion, except as otherwise 
specified in the Board's suspension order. The filing of a motion to 
compel shall not toll the time for a party to respond to any 
outstanding discovery requests or to appear for any noticed discovery 
deposition.< *="" *="" *="" *="" *="" (g)="" sanctions.="" (1)="" if="" a="" party="" fails="" to="" comply="" with="" an="" order="" of="" the="" trademark="" trial="" and="" appeal="" board="" relating="" to="" discovery,="" including="" a="" protective="" order,="" the="" board="" may="" make="" any="" appropriate="" order,="" including="" any="" of="" the="" orders="" provided="" in="" rule="" 37(b)(2)="" of="" the="" federal="" rules="" of="" civil="" procedure,="" except="" that="" the="" board="" [does="" not="" have="" authority="" to]="">will not< hold="" any="" person="" in="" contempt="" or="" [to]="" award="" any="" expenses="" to="" any="" party.="" the="" board="" may="" impose="" against="" a="" party="" any="" of="" the="" sanctions="" provided="" by="" this="" subsection="" in="" the="" event="" that="" said="" party="" or="" any="" attorney,="" agent,="" or="" designated="" witness="" of="" that="" party="" fails="" to="" comply="" with="" a="" protective="" order="" made="" pursuant="" to="" rule="" 26(c)="" of="" the="" federal="" rules="" of="" civil="" procedure.="" *="" *="" *="" *="" *="" (h)="" request="">s< for="" admission[s].="">(1)< [requests="" for="" admissions="" shall="" be="" governed="" by="" rule="" 36="" of="" the="" federal="" rules="" of="" civil="" procedure="" except="" that="" the="" trademark="" trial="" and="" appeal="" board="" does="" not="" have="" authority="" to="" award="" any="" expenses="" to="" any="" party.]="">The total number of 
requests for admission which a party may serve upon another party, 
pursuant to Rule 36 of the Federal Rules of Civil Procedure, in a 
proceeding, shall not exceed 25, counting subparts, except upon 
stipulation of the parties. If a party upon which requests for 
admission have been served believes that the number of requests served 
exceeds the limitation specified in this paragraph, and is not willing 
to waive this basis for objection, the party shall, within the time for 
(and instead of) serving answers and specific objections to the 
requests, serve a general objection on the ground of their excessive 
number. If the inquiring party, in turn, files a motion to determine 
the sufficiency of the objection, the motion must be accompanied by a 
copy of the

[[Page 30816]]

set(s) of requests for admission which together are said to exceed the 
limitation, and must otherwise comply with the requirements of 
paragraph (h)(2) of this section.
    (2) Any < [a]="" motion="" by="" a="" party="" to="" determine="" the="" sufficiency="" of="" an="" answer="" or="" objection="" to="" a="" request="" made="" by="" that="" party="" for="" an="" admission="">must be filed within 30 days after the close of the discovery 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="" 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.="">(3) When a party files a motion to determine the sufficiency of an 
answer or objection to a request made by that party for an admission, 
the case will be suspended by the Trademark Trial and Appeal Board with 
respect to all matters not germane to the motion, and no party should 
file any paper which is not germane to the motion, except as otherwise 
specified in the Board's suspension order. The filing of a motion to 
determine the sufficiency of an answer or objection to a request for 
admission shall not toll the time for a party to respond to any 
outstanding discovery requests or to appear for any noticed discovery 
deposition.< *="" *="" *="" *="" *="" 10.="" section="" 2.121="" is="" proposed="" to="" be="" amended="" by="" revising="" paragraphs="" (a)(1),="" (c)="" and="" (d)="" to="" read="" as="" follows:="" sec.="" 2.121="" assignment="" of="" times="" for="" taking="" testimony.="" (a)(1)="" the="" trademark="" trial="" and="" appeal="" board="" will="" issue="" a="" trial="" order="" assigning="" to="" each="" party="" the="" time="" for="" taking="" testimony.="" no="" testimony="" shall="" be="" taken="" except="" during="" the="" times="" assigned,="" unless="" by="" stipulation="" of="" the="" parties="" approved="" by="" the="" board,="" or,="" upon="" motion,="" by="" order="" of="" the="" board.="" testimony="" periods="" may="" be="" rescheduled="" by="" stipulation="" of="" the="" parties="" approved="" by="" the="" board,="" or="" upon="" motion="">showing 
extraordinary circumstances< granted="" by="" the="" board;="">if such a motion is 
denied, the testimony periods will remain as set< [,="" or="" by="" order="" of="" the="" board].="" the="" resetting="" of="" the="" closing="" date="" for="" discovery="" will="" result="" in="" the="" rescheduling="" of="" the="" testimony="" periods="" without="" action="" by="" any="" party.="" [the="" resetting="" of="" a="" party's="" time="" to="" respond="" to="" an="" outstanding="" request="" for="" discovery="" will="" not="" result="" in="" the="" automatic="" rescheduling="" of="" the="" discovery="" and/or="" testimony="" periods;="" such="" dates="" will="" be="" rescheduled="" only="" upon="" stipulation="" of="" the="" parties="" approved="" by="" the="" board,="" or="" upon="" motion="" granted="" by="" the="" board,="" or="" by="" order="" of="" the="" board.]="" *="" *="" *="" *="" *="" (c)="" a="" testimony="" period="" which="" is="" solely="" for="" rebuttal="" will="" be="" set="" for="">30< [fifteen]="" days.="" all="" other="" testimony="" periods="" will="" be="" set="" for="">60< [thirty]="" days.="" the="" periods="" may="" be="" extended="" by="" stipulation="" of="" the="" parties="" approved="" by="" the="" trademark="" trial="" and="" appeal="" board,="" or="" upon="" motion="">showing extraordinary circumstances< granted="" by="" the="" board;="">if 
such a motion is denied, the testimony periods will remain as set< [,="" or="" by="" order="" of="" the="" board].="" (d)="" when="" parties="" stipulate="" to="" the="" rescheduling="" of="" testimony="" periods="" or="" to="" the="" rescheduling="" of="" the="" closing="" date="" for="" discovery="" and="" the="" rescheduling="" of="" testimony="" periods,="" a="" stipulation="" presented="" in="" the="" form="" used="" in="" a="" trial="" order,="" signed="" by="" the="" parties,="" or="" a="" motion="" in="" said="" form="" signed="" by="" one="" party="" and="" including="" a="" statement="" that="" every="" other="" party="" has="" agreed="" thereto,="" and="" submitted="">in a number of copies equal to the 
number of parties to the proceeding plus one copy for the Board< [in="" one="" original="" plus="" as="" many="" photocopies="" as="" there="" are="" parties],="" will,="" if="" approved,="" be="" so="" stamped,="" signed,="" and="" dated,="" and="">a copy< [the="" copies]="" will="" be="" promptly="" returned="" to="">each of< the="" parties.="" 11.="" section="" 2.122="" is="" proposed="" to="" be="" amended="" by="" revising="" paragraphs="" (b)(1)="" and="" (d)(1)="" to="" read="" as="" follows:="" sec.="" 2.122="" matters="" in="" evidence.="" *="" *="" *="" *="" *="" (b)="" application="" files.="" (1)="" the="" file="" of="" each="" application="" or="" registration="" specified="" in="" a="">notice< [declaration]="" of="" interference,="" of="" each="" application="" or="" registration="" specified="" in="" the="" notice="" of="" a="" concurrent="" use="" registration="" proceeding,="" of="" the="" application="" against="" which="" a="" notice="" of="" opposition="" is="" filed,="" or="" of="" each="" registration="" against="" which="" a="" petition="" or="" counterclaim="" for="" cancellation="" is="" filed="" forms="" part="" of="" the="" record="" of="" the="" proceeding="" without="" any="" action="" by="" the="" parties="" and="" reference="" may="" be="" made="" to="" the="" file="" for="" any="" relevant="" and="" competent="" purpose.="" *="" *="" *="" *="" *="" (d)="" registrations.="" (1)="" a="" registration="" of="" the="" opposer="" or="" petitioner="" pleaded="" in="" an="" opposition="" or="" petition="" to="" cancel="" will="" be="" received="" in="" evidence="" and="" made="" part="" of="" the="" record="" if="" the="" opposition="" or="" petition="" is="" accompanied="" by="" two="" copies="" of="" the="" registration="" prepared="" and="" issued="" by="" the="" patent="" and="" trademark="" office="" showing="" both="" the="" current="" status="" of="" and="" current="" title="" to="" the="" registration.="" for="" the="" cost="" of="" a="" copy="" of="" a="" registration="" showing="" status="" and="" title,="" see="">Sec. 2.6(b)(4)< [sec.="" 2.6(n)].="" *="" *="" *="" *="" *="" 12.="" section="" 2.123="" is="" proposed="" to="" be="" amended="" by="" revising="" paragraphs="" (b)="" and="" (f)="" as="" follows:="" sec.="" 2.123="" trial="" testimony="" in="" inter="" partes="" cases.="" *="" *="" *="" *="" *="" (b)="" stipulations.="" if="" the="" parties="" so="" stipulate="" in="" writing,="" depositions="" may="" be="" taken="" before="" any="" person="" authorized="" to="" administer="" oaths,="" at="" any="" place,="" upon="" any="" notice,="" and="" in="" any="" manner,="" and="" when="" so="" taken="" may="" be="" used="" like="" other="" depositions.="" by="">written< agreement="" of="" the="" parties,="" the="" testimony="" of="" any="" witness="" or="" witnesses="" of="" any="" party,="" may="" be="" submitted="" in="" the="" form="" of="" an="" affidavit="" by="" such="" witness="" or="" witnesses.="" the="" parties="" may="" stipulate="">in writing< what="" a="" particular="" witness="" would="" testify="" to="" if="" called,="" or="" the="" facts="" in="" the="" case="" of="" any="" party="" may="" be="" stipulated="">in writing<. *="" *="" *="" *="" *="" (f)="" certification="" and="" filing="">of deposition< [by="" officer].="" the="" officer="" shall="" annex="" to="" the="" deposition="" his="" certificate="" showing:="" (1)="" due="" administration="" of="" the="" oath="" by="" the="" officer="" to="" the="" witness="" before="" the="" commencement="" of="" his="" deposition;="" (2)="" the="" name="" of="" the="" person="" by="" whom="" the="" deposition="" was="" taken="" down,="" and="" whether,="" if="" not="" taken="" down="" by="" the="" officer,="" it="" was="" taken="" down="" in="" his="" presence;="" (3)="" the="" presence="" or="" absence="" of="" the="" adverse="" party;="" (4)="" the="" place,="" day,="" and="" hour="" of="" commencing="" and="" taking="" the="" deposition;="" (5)="" the="" fact="" that="" the="" officer="" was="" not="" disqualified="" as="" specified="" in="" rule="" 28="" of="" the="" federal="" rules="" of="" civil="" procedure.="" if="" any="" of="" the="" foregoing="" requirements="" are="" waived,="" the="" certificate="" shall="" so="" state.="" the="" officer="" shall="" sign="" the="" certificate="" and="" affix="" thereto="" his="" seal="" of="" office,="" if="" he="" has="" such="" a="" seal.="" unless="" waived="" on="" the="" record="" by="" an="" agreement,="" he="" shall="" then="" [,="" without="" delay,]="" securely="" seal="" in="" an="" envelope="" all="" the="" evidence,="" notices,="" and="" paper="" exhibits,="" inscribe="" upon="" the="" envelope="" a="" certificate="" giving="" the="" number="" and="" title="" of="" the="" case,="" the="" name="" of="" each="" witness,="" and="" the="" date="" of="" sealing="">. The officer 
or the party taking the deposition, or its attorney or other authorized 
representative, shall then< [,]="" address="" the="" package,="" and="" forward="" the="" same="" to="" the="" commissioner="" of="" patents="" and="" trademarks.="" if="" the="" weight="" or="" bulk="" of="" [[page="" 30817]]="" an="" exhibit="" shall="" exclude="" it="" from="" the="" envelope,="" it="" shall,="" unless="" waived="" on="" the="" record="" by="" agreement="" of="" all="" parties,="" be="" authenticated="" by="" the="" officer="" and="" transmitted="">by the officer or the party taking the 
deposition, or its attorney or other authorized representative< in="" a="" separate="" package="" marked="" and="" addressed="" as="" provided="" in="" this="" section.="" *="" *="" *="" *="" *="" 13.="" section="" 2.125="" is="" proposed="" to="" be="" amended="" by="" revising="" paragraph="" (c)="" to="" read="" as="" follows:="" sec.="" 2.125="" filing="" and="" service="" of="" testimony.="" *="" *="" *="" *="" *="" (c)="" one="" certified="" transcript="" and="" exhibits="" shall="" be="" filed="" [promptly]="" with="" the="" trademark="" trial="" and="" appeal="" board.="" notice="" of="" such="" filing="" shall="" be="" served="" on="" each="" adverse="" party="" and="" a="" copy="" of="" each="" notice="" shall="" be="" filed="" with="" the="" board.="" *="" *="" *="" *="" *="" 14.="" section="" 2.127="" is="" proposed="" to="" be="" amended="" by="" revising="" paragraphs="" (a),="" (b),="" (d),="" (e)(1)="" and="" (f)="" to="" read="" as="" follows:="" sec.="" 2.127="" motions.="" (a)="" every="" motion="" shall="" be="" made="" in="" writing,="" shall="" contain="" a="" full="" statement="" of="" the="" grounds,="" and="" shall="" embody="" or="" be="" accompanied="" by="" a="" brief.="">Except as provided in paragraph (e)(1) of this section a< [a]="" brief="" in="" response="" to="" a="" motion="" shall="" be="" filed="" within="">30< [fifteen]="" days="" from="" the="" date="" of="" service="" of="" the="" motion="" unless="" another="" time="" is="" specified="" by="" the="" trademark="" trial="" and="" appeal="" board="" or="" the="" time="" is="" extended="" by="">stipulation of the parties approved by the Board, or upon motion 
showing extraordinary circumstances granted by the Board; if such a 
motion for an extension is denied, the time for responding to the 
motion remains as specified under this section< [order="" of="" the="" board="" on="" motion="" for="" good="" cause].="">Except as provided in paragraph (e)(1) of this 
section, a reply brief, if filed, shall be filed within 15 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. No further papers in 
support of or in opposition to a motion will be considered by the 
Board. Briefs shall be submitted in typewritten or printed form, double 
spaced, in at least pica or eleven-point type, on letter-size paper. 
The brief in support of the motion and the brief in response to the 
motion shall not exceed 25 pages in length; and a reply brief shall not 
exceed 10 pages in length. Exhibits submitted in support of or in 
opposition to the motion shall not be deemed to be part of the brief 
for purposes of determining the length of the brief. When a party fails 
to file a brief in response to a motion, the Board may treat the motion 
as conceded. An oral hearing will not be held on a motion except on 
order by the Board.
    (b) Any request for reconsideration or modification of an order or 
decision issued on a motion must be filed within >one month< [thirty="" days]="" from="" the="" date="" thereof.="" a="" brief="" in="" response="" must="" be="" filed="" within="">15< [fifteen]="" days="" from="" the="" date="" of="" service="" of="" the="" request.="" *="" *="" *="" *="" *="" (d)="" when="" any="" party="" files="" a="" motion="" to="" dismiss,="" or="" a="" motion="" for="" judgment="" on="" the="" pleadings,="" or="" a="" motion="" for="" summary="" judgment,="" or="" any="" other="" motion="" which="" is="" potentially="" dispositive="" of="" a="" proceeding,="" the="" case="" will="" be="" suspended="" by="" the="" trademark="" trial="" and="" appeal="" board="" with="" respect="" to="" all="" matters="" not="" germane="" to="" the="" motion="" and="" no="" party="" should="" file="" any="" paper="" which="" is="" not="" germane="" to="" the="" motion="">except as otherwise specified 
in the Board's suspension order. The filing of a summary judgment 
motion shall not toll the time for the moving party to respond to any 
outstanding discovery requests or to appear for any noticed discovery 
deposition, but it shall toll the time for the nonmoving party to serve 
such responses or to appear for such deposition<. if="" the="" case="" is="" not="" disposed="" of="" as="" a="" result="" of="" the="" motion,="" proceedings="" will="" be="" resumed="" pursuant="" to="" an="" order="" of="" the="" board="" when="" the="" motion="" is="" decided.="" (e)(1)="">A motion for summary judgment may not be filed until 
notification of the proceeding has been sent to the parties by the 
Trademark Trial and Appeal Board.< a="" motion="" for="" summary="" judgment="">, if 
filed,< should="" be="" filed="" prior="" to="" the="" commencement="" of="" the="" first="" testimony="" period,="" as="" originally="" set="" or="" as="" reset,="" and="" the="" board,="" in="" its="" discretion,="" may="" deny="" as="" untimely="" any="" motion="" for="" summary="" judgment="" filed="" thereafter.="">A motion under Rule 56(f) of the Federal Rules of Civil 
Procedure, if filed in response to a motion for summary judgment, shall 
be filed within 30 days from the date of service of the summary 
judgment motion. The time for filing a motion under Rule 56(f) will not 
be extended. If no motion under Rule 56(f) is filed, a brief in 
response to the motion for summary judgment shall be filed within 60 
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 
showing extraordinary circumstances granted by the Board; if such a 
motion for an extension is denied, the time for responding to the 
motion for summary judgment remains as specified under this section. A 
reply brief, if filed, shall be filed within 30 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. No further papers in support of or in 
opposition to a motion for summary judgment will be considered by the 
Board.< *="" *="" *="" *="" *="" (f)="" the="" board="" [does="" not="" have="" authority="" to]="">will not< hold="" any="" person="" in="" contempt,="" or="" [to]="" award="" attorneys'="" fees="" or="" other="" expenses="" to="" any="" party.="" 15.="" section="" 2.134="" is="" proposed="" to="" be="" amended="" by="" revising="" paragraph="" (a)="" to="" read="" as="" follows:="" sec.="" 2.134="" surrender="" or="" voluntary="" cancellation="" of="" registration.="" (a)="" after="" the="" commencement="" of="" a="" cancellation="" proceeding,="" if="" the="" respondent="" applies="" for="" cancellation="" of="" the="" involved="" registration="" under="" section="">7(e)< [7(d)]="" of="" the="" act="" of="" 1946="" without="" the="" written="" consent="" of="" every="" adverse="" party="" to="" the="" proceeding,="" judgment="" shall="" be="" entered="" against="" the="" respondent.="" the="" written="" consent="" of="" an="" adverse="" party="" may="" be="" signed="" by="" the="" adverse="" party="" or="" by="" the="" adverse="" party's="" attorney="" or="" other="" authorized="" representative.="" *="" *="" *="" *="" *="" 16.="" section="" 2.146="" is="" proposed="" to="" be="" amended="" by="" revising="" paragraph="" (e)(1)="" to="" read="" as="" follows:="" sec.="" 2.146="" petitions="" to="" the="" commissioner.="" *="" *="" *="" *="" *="" (e)(1)="" a="" petition="" from="" the="">grant or< denial="" of="" a="" request="" for="" an="" extension="" of="" time="" to="" file="" a="" notice="" of="" opposition="" shall="" be="" filed="" within="" fifteen="" days="" from="" the="" date="" of="" mailing="" of="" the="">grant or< denial="" of="" the="" request="">. A petition from the grant of a request< [and]="" shall="" be="" served="" on="" the="">attorney or other authorized representative of the potential 
opposer, if any, or on the potential opposer. A petition from the 
denial of a request shall be served on the< attorney="" or="" other="" authorized="" representative="" of="" the="" applicant,="" if="" any,="" or="" on="" the="" applicant.="" proof="" of="" service="" of="" the="" petition="" shall="" be="" made="" as="" provided="" by="" sec.="" 2.119(a).="" the="">potential opposer or< the="" applicant="">, as the 
case may be,< may="" file="" a="" response="" within="" fifteen="" days="" from="" the="" date="" of="" service="" of="" the="" petition="" and="" shall="" serve="" a="" copy="" of="" the="" response="" on="" the="" petitioner,="" with="" proof="" of="" service="" as="" provided="" by="" sec.="" 2.119(a).="" no="" further="" paper="" relating="" to="" the="" petition="" shall="" be="" filed.="" *="" *="" *="" *="" *="" part="" 3--assignment,="" recording="" and="" rights="" of="" assignee="" 17.="" the="" authority="" citation="" for="" part="" 3="" continues="" to="" read="" as="" follows:="" authority:="" 15="" u.s.c.="" 1123;="" 35="" u.s.c.="" 6.="" 17a.="" section="" 3.41="" is="" proposed="" to="" be="" revised="" to="" read="" as="" follows:="" [[page="" 30818]]="" sec.="" 3.41="" recording="" fees.="" all="" requests="" to="" record="" documents="" must="" be="" accompanied="" by="" the="" appropriate="" fee.="" a="" fee="" is="" required="" for="" each="" application,="" patent="" and="" registration="" against="" which="" the="" document="" is="" recorded="" as="" identified="" in="" the="" cover="" sheet.="" the="" recording="" fee="" is="" set="" in="" sec.="" 1.21(h)="" of="" this="" chapter="" for="" patents="" and="" in="">Sec. 2.6(b)(6)< [sec.="" 2.6(q)]="" of="" this="" chapter="" for="" trademarks.="" dated:="" may="" 30,="" 1997.="" bruce="" a.="" lehman,="" assistant="" secretary="" of="" commerce="" and="" commissioner="" of="" patents="" and="" trademarks.="" [fr="" doc.="" 97-14711="" filed="" 6-4-97;="" 8:45="" am]="" billing="" code="" 3510-16-p="">