The Trademark Trial and Appeal Board Publishes New Rules of Practice

Oct 2007 – Article
Managing Intellectual Property (MIP), Issue 173

On August 1, 2007, the U.S. Department of Commerce announced sweeping changes to the Rules of Practice in inter partes matters (oppositions, cancellation proceedings, and concurrent use proceedings) before the Trademark Trial and Appeal Board (the “Board”) of the U.S. Patent and Trademark Office (the “USPTO”). The implications of these changes are significant for any party (and its counsel) who litigates trademark registrability proceedings before the Board. According to the announcement in the Federal Register Notice (Fed. Reg. Vol. 72, No. 147, at pp. 42242-42264) the rules changes were promulgated to increase the efficiency of Board proceedings, enhance settlement possibilities, encourage greater disclosure of information, and promote procedural fairness. The rules changes, in their final form, are a pleasant far cry from the draconian changes originally proposed on January 17, 2006 (Fed. Reg. Vol. 71, No. 10, at pp. 2498-2509), due to significant comments from the bar and industry groups.