The USPTO Made a New Years' Resolution & It Impacts You

The USPTO and Trademark Trial and Appeal Board (“TTAB”) joined the rest of us in attempting to improve with a New Year’s resolution. However, instead of already giving up on gym membership plans, the USPTO has taken 2017 by storm with an emphasis on digital efficiency, some rule changes, and everyone’s favorite, increased fees.  

Whether you are a seasoned practitioner, or an individual navigating the trademark thickets yourself, you should bookmark this page for reference now that January 14, 2017, rule changes are in effect.

Efficiency

It’s not very often that one hears the words “efficient” and “government” uttered in the same breath. But come January 14, we should have fewer action items when dealing with the USPTO and TTAB in general.

Thanks to the USPTO’s 2017 resolution to save the environment, or in the alternative, settle a grudge with the paper industry:

• E-Filing is no longer preferred, but expected and mandatory with the TTAB.
  • This requirement appears to only be waivable via petitioning the office.
  • This includes correspondence between the parties (i.e., say goodbye to the 5-day snail mail grace period and hello to composing, even more, e-mails).
• The TTAB is taking service requirements off our plates.
  • This thankfully relieves us of cancellation and opposition service duties for initial pleadings, replacing first-class mail with a link embedded in an e-mail sent to other parties to the matter.
  • This is also an opportunity to make sure that all of the contact information you may be responsible for is up-to-date.
• You and/or your clients get to give the government more money!
  • A total of 10 TTAB-related fees will be adjusted. Six fees for initiating a proceeding will increase, depending upon whether filed electronically or on paper.
  • After an initial request for extension, there are now four new fees established for electronic and paper-filed requests to further extend time to file a notice of opposition.
  • There are fees for extensions of time to oppose billed per application rather than per class.
  • Moreover, the per-class fee for an initial application for registration filed on paper is going from $375 to $600 per mark, per class (supporting anti-paper conspiracy theorists).
  • A full list of fee changes is provided here by the USPTO.

Testimony

Relevant to a smaller segment of readers but important nonetheless, there has been some tweaking to evidentiary procedure. One huge takeaway in this department is that witness testimony can now be submitted by affidavit alone. The hassles of live depositions should subside, however:

• Live depositions are still an available cross-examination tool for opposing parties in examining a witness affidavit;
• Notices of reliance have had their capacity expanded to record registrations and introduce supporting digital content;
• Of concern is that the efficiency seemingly sought after by the USPTO may be undermined by overwhelming amounts of evidence likely to now be submitted, delaying proceeding considerably.

Discovery

Gone are the days of unlimited requests. We now have the number “75” restraining our decision making when it comes time to talk document production and admission strategy, and further (likely in the name of efficiency), the discovery period is now a bright line six-month ordeal.

As always, you should carefully read or ask your local counsel about the new rules which can be found here in their entirety.

With the digitalization and constant technological progress of society, new and interesting trademark requests will continue to appear and challenge existing definitions and requirements. We at W. R. Samuels Law will continue to keep our ears pressed to the ground in order to detect new trends in trademark law before they have an impact on our clients. For more information, contact us.