June 3 was the last date on which a would-be commenter could comment upon the TTAB’s proposed rules published April 4, 2016. I am pleased to be able to report that the E-Trademarks Listserv (ETL) was among the commenters. Other commenters included “the big four”, that is, IPO, ABA-IPL, INTA, and AIPLA. You can see all sixteen comments here. The ETL comments focused on three issues:
- whether it is a good idea for the TTAB to once again resume responsibility for carrying out service of process (a responsibility that had been shifted to the plaintiff in 2007);
- TTAB’s proposed requirement that the plaintiff figure out what email address the TTAB should use when carrying out service of process via email; and
- TTAB’s proposed limiting the number of Requests to Admit to 75.
I’ll summarize the positions taken by the various commenters on these three issues.
Whether it is a good idea for the TTAB to once again resume responsibility for carrying out service of process. Old-timers such as your scribe recall that years ago the burden fell upon the TTAB to carry out service of process. In 2007, apparently tired of the work involved in this thankless task, the TTAB shifted this burden to the plaintiff (the would-be opposer or petitioner-to-cancel). Now in 2016, apparently tired of the work involved in supervising the plaintiff’s service efforts and having to second-guess whether the plaintiff did or did not do a good enough job of carrying out service of process, the TTAB proposes to take this work back in-house.
No commenter objected to the TTAB taking this work back in-house. I think many practitioners are delighted at the thought of (a) no longer having to do the work of carrying out service of process and (b) no longer risking being blamed for supposedly not doing it well enough.
Most commenters were silent about this. IPO and ETL mentioned the proposed change and did not object to it. AIPLA supported it.
The proposed rules make clear that the TTAB hopes to shift from service by means of physical delivery of documents to the mere sending of an email message. Several commenters pointed out that emails get lost, that the recipient of an email might not fully appreciate the gravity of the situation, and that there are limits upon the size of permitted email attachments. These concerns, which are legitimate, are not necessarily linked to the specific proposal of shifting the service burden from the plaintiff to the TTAB. As I say, no commenter objected to the TTAB taking the service burden back in-house.
TTAB’s proposed requirement that the plaintiff figure out what email address the TTAB should use when carrying out service of process via email. While the proposed rules contemplate that the TTAB will take the service burden back in-house, and contemplate that the TTAB would carry out service by sending a simple email message, the proposed rules also appear to propose to burden the plaintiff with figuring out what email address the TTAB should use when it carries out service by sending an email message.
ETL, ABA-IPL, IPO, and AIPLA all jumped on this proposed burden. Here’s what ETL said:
For anyone carrying out service, the natural question is “upon whom should I serve?” The TTAB proposes to amend the rule to add that the petition for cancellation must indicate, to the best of plaintiff’s knowledge, a current email address of the current owner of the registration and of any attorney reasonably believed by the petitioner to be a possible representative of the owner in matters regarding the registration.
The proposed language recognizes (correctly) that in some cases the plaintiff may know of contact information of which the TTAB is unaware. For example the plaintiff may recently have been in direct communication with a representative of the defendant (such as an attorney or an individual at the defendant’s company) whose name does not appear anywhere in the application file at the USPTO.
This comment recommends, however, that the rule should make clear that it does not impose any burden upon the plaintiff to carry out any investigation about contact information for the registrant. Likewise the rule should make clear that the plaintiff is not obligated to go on a hunt for an email address if the plaintiff only knows other contact information such as a postal mailing address. The rule should make clear that the only burden on the plaintiff is to disclose any email address or other contact information already known to the plaintiff that is not already of record in the application file. If the registrant has designated a domestic representative, then the TTAB should simply carry out service upon the domestic representative without expecting the plaintiff to hunt for some other contact information.
ABA-IPL, IPO, and AIPLA largely agreed with ETL about this. The other commenters, most notably INTA, were silent about this.
TTAB’s proposed limiting the number of Requests to Admit to 75. The proposed rules would limit the number of RTAs to 75. Here is what the ETL said about this:
The TTAB proposes to limit requests for admission to 75. This comment strongly objects to this proposed limitation. The proposed limitation would eviscerate an effective discovery tool, particularly in cases with Section-44 and Section-66 filing bases. Such cases can identify many hundreds of items of goods and/or services. The proposed limit would deviate from federal court practice where there is no limit on such requests for admission. It should be appreciated that requests for admission promote the narrowing of issues and the simplification of the case for trial (or a summary judgment motion).
IPO, AIPLA, and practitioner Giordano largely agreed with ETL about this. INTA, ABA-IPL, and practitioner Pelton took the opposite position, supporting the limit of 75 RTAs. Other commenters were silent on this point.
The USPTO is doing something quite interesting about these comments. USPTO says:
On June 24, 2016, the USPTO will summarize and categorize the comments to the Trademark Trial and Appeal Board’s (TTAB’s) Notice of Proposed Rulemaking, for which the comment period [closed] June 3, 2016. The session will take place from 1-3 p.m. in the Global Intellectual Property Academy conference rooms at the USPTO main campus, 600 Dulany St., Alexandria, Va. 22314. Please RSVP to TTABRSVP@uspto.gov by June 15, 2016 and indicate whether you will be attending in person or via webcast. More information about this and the TTAB can be found on the USPTO website.