Last call for comments on TTAB rule changes

May 22 2016

Gerard Rogers, Chief Administrative Trademark Judge at the Trademark Trial and Appeal Board, gave an update on the Board’s proposed rule changes yesterday during the USPTO Users’ Meeting.

Comments on the Notice of Proposed Rulemaking (which was published in April) are due June 3. Rogers said there were many reasons for considering the first rule changes to the TTAB since 2007, including case law, federal rule changes and technological advantages.

“The decision last year by the Supreme Court in B&B Hardware v. Hargis Industries has become involved in the conversation since our Notice of Proposed Rulemaking,” noted Rogers. “But I can assure you it was neither a reason for proposing it nor is it a reason for not proposing it. I know some of the comments we have received said maybe we shouldn’t be involved in this rulemaking after the Supreme Court ruling. We don’t see it that way. It was in the works already.”

One of the biggest focuses of the rule changes is to make the TTAB filing completely electronic. “If the system is down, you can still file on paper but it needs a petition to the Director attached,” said Rogers. “So the lesson there is to file early, and that way you won’t run up against such issues.” Rogers urged any registrants that want to comment on the notice to act fast. “What will ultimately be in the Notice of Final Rulemaking may change some so if you do want to comment you have got a week and a half,” he said. The final rules package is expected to be published in September.

The USPTO is scheduled to issue a report reviewing the comments received on June 24. That day is also the effective date of the Board’s new Standard Protective Order. It will apply to all pending cases with some limited exceptions. Mary Boney Denison, Commissioner for Trademarks at the USPTO also gave an update on several initiatives, including updating all the Office’s computer systems, TM5, a new online payment tool, outreach, the IP attaché program and the fees proposal. On the latter point, Denison said the USPTO is “trying to drive behavior away from paper” and that there should be a proposal in the Federal Register next month. She noted that about 84% of filing is done electronically now. Denison reported that filing this year is up 8% to 9%. “We are expecting filings to keep going,” she said.