TBMP - 2017-01

TBMP Section:	Nature of Change:

	THROUGHOUT MANUAL
	Updated to reflect amendments to the TTAB Rules of Practice that are effective Jan. 14, 2017. Updated to reflect mandatory electronic filing throughout. Updated to reflect increased and new fees in accordance with the Trademark Fee Adjustment, effective Jan. 14, 2017. Spacing, punctuation and formatting corrections as needed for consistency. Corrections to order of citations where appropriate in accordance with citation and manual protocols; pin point cites and parenthetical information added to cases brought forward from previous editions where appropriate. Citations to McCarthy’s checked and year updated (2016). (McCarthy is referenced in Chapters 300 and 600). Citations to Wright & Miller Federal Practice and Procedure (FPP) checked and year updated (2016). (Referenced in Chapters 300, 400, 500, 700). Check, and update as necessary, the Trademark Rules of Practice, Federal Rules of Civil Procedure, Federal Rules of Evidence, Federal Circuit Rules, TMEP cross references; TBMP cross references

	CHAPTER 100

THROUGHOUT CHAPTER	Reorganized subchapters as needed to emphasize mandatory ESTTA filing over paper filing. Reorganized and added footnotes as needed. Added language to emphasize mandatory use of ESTTA and limited availability of paper filing. Retained detailed subchapters discussing paper filings with added language throughout stressing that paper filing is only available in limited circumstances. Noted that because Trademark Rule 2.119(c) has been amended to provide 20 days for response, extra five days previously available for taking action after service by mail is no longer available. Emphasized that ex parte appeals may no longer be filed by facsimile (fax) transmission and that fax transmissions are not acceptable in filings before the Board. Deleted references to certificate of fax transmission.
101.02	Amend text of rule
101.03	3d para: clarifying language regarding Fed. Cir. precedent Note 1: add statutory references
102.03	3d & 4th paras: clarifying and explanatory language added New Note 7
104	Amend text of rule Emphasized mandatory filing via ESTTA and encouraged filing via TEAS.
106.02	Amend text of rule 2.119(e)
106.03	Amend text of rule Substantial revision and reorganization to emphasize mandatory filing via ESTTA.
107	Change title by substituting "Submissions" for "Papers" Amend text of rule Deletion of references to availability of filing by facsimile, emphasize ESTTA filing.
109	Deletion of references to availability of filing by facsimile.
110	Restructured to focus on electronic filing (ESTTA) Former 110.09 et seq renumbered
111	Restructure: 111.01 focuses on PRIORITY MAIL EXPRESS®; 111.02 focuses on Certificate Of Mailing Procedures
111.02	New 111.02 - Former 110.01 Deletion of references to availability of filing by facsimile.
111.02(a)	New 111.02(a) – Former 110.02 Deletion of references to availability of filing by facsimile.
111.02(b)	New 111.02(b) – Former 110.03 Deletion of suggested format for certificate of transmission.
111.02(e)	New 111.02(e) – Former 110.06 Deletion of references to availability of filing by facsimile, emphasize ESTTA filing and stress limited availability of paper filing.
111.02(f)	New 111.02(f) – Former 110.07 Updated language regarding mandatory ESTTA filing of submissions related to Section 66(a) applications to track wording of Rules.
111.02(g)	New 111.02(g) – Former 110.08 Deletion of references to certificate of facsimile transmission.
112	Clarifying language Note 1: changed signal for National Football League v. DNH Mgmt. LLC; add Please Note information
113	Amend text of rule
113.01	Change title by substituting "Submissions" for "Papers"
113.03	Amend text in suggested format for Certificate of Service
113.04	Emphasized requirement for service by email Note 2: delete Musical Directions v. McHugh New Note 3
113.05	Emphasized amendment of fifteen day response from date of service to twenty days, elimination of extra five days after service by mail New Note 4
114	Amend text of rule
114.07	Amend text of rule 2.119(d)
115.02	Amend text of rules 2.193, 11.18, 11.20
115.03	Amend text of rule
117	Add subsection (c) for rule 2.18 and delete subsection (d) Amend text of rule 2.119(d)
117.01	Delete Note 3; renumber remaining note
117.02	9th para: update with clarifying and explanatory language
117.07	Paras. 1-3: update with clarifying and explanatory language New Note 1
118.02	Substantial revision of applicable Rule; add new rules about fees New subsection 118.02(a) New subsection 118.02(b); amend text of rules
118.03	Amend text of rule, restructure paragraphs and add clarifying language
118.04	Update system references; add clarifying language
119.02	Add clarifying language about electronic filing
119.03	Add clarifying and explanatory language
120.01	Re-written to reflect current retention practices
120.02	Add clarifying language; delete out-of-date information
120.03	Re-written to reflect current retention practices
121	Changes to reflect current retention practices Delete Notes 3 & 4

	CHAPTER 200

201	37 CFR §§ 2.101 & 2.102 updated; 3d para revised to reflect required ESTTA filing and exceptions New notes 4 & 5
202.01	37 CFR §§ 2.102(c) & (d) updated 2d para: new to reflect required ESTTA filing, paper exceptions, and timeliness Notes 2-6 contain updated content Old Note 7 deleted Former notes 8-12 renumbered as 7-11
202.03	Information about ESTTA added
202.04	Information about ESTTA added
203.01(a)	37 CFR §§ 2.102 & 2.126 updated 1st & 2d paras re-written 3d para: new 4th para: new sentence preceding Note 6. New Note 6 Notes 7-9 renumbered
203.1(b)	1st para: new information on ESTTA New note 2; remaining note renumbered
203.02(a)	1st para: information about ESTTA added
203.02(b)	1st para: information about ESTTA fields added
203.03	37 CFR § 2.102(a) updated 1st para: added information about required signature New 3d para
203.04	Former Note 2 deleted; remaining notes renumbered
203.05	2d para rewrittedn; Note 1 deleted
204	Completely new information about new fees
205	2d para rewritten
206	37 CFR § 2.102 updated
206.01	2d para reworded
206.02	1st para reworded
206.03	2d para reworded
207	37 CFR§ 2.102(c) updated
207.03	5th para slightly reworded 6th para: new
208	1st para: clarifying language regarding ESTTA 2d & 3rd paras: slightly rewrittedn
209.02	New 1st, 5th, 6th paras; paras 7-9 modified to explain paper filings; last para on ESTTA filing deleted
210	Last para: new
211.01	Last para: new
212.05	Last para reworded to emphasize required ESTTA filing
217	Last para: new

	CHAPTER 300

301.02	Add text to paragraph 1.
302	Amended rule excerpts 37 CFR §§ 2.101(a), 2.111(a) and 2.116(c) to reflect amended rules, delete text, paragraphs 1 and 2; deleted notes 2, 3, and 5; renumbered notes 4 and 6, to notes 2 and 3. Added new paragraph 6 and new note 5.
302.01	New subsection
303.05	Amended rule excerpts 37 CFR §§ 2.102(a) and 2.102(b) to reflect amended rules.
303.05(b)	Add pinpoint cite to Raker Paint Factory, note 3.
303.05(c)	Added pinpoint cite to Cass Logistics, note 1.
303.06	Note 1, amended rule cites to reflect renumbering.
304	Deleted text, paragraph 1. Added new note 3 with rule reference; renumbered note 3 as note 4.
305	Amended rule reference 37 CFR § 2.112(b) to reflect amended rule.
305.02	Deleted text from paragraph 1, created paragraph 2; deleted paragraph 4. Added new notes 3 and 4; renumbered note 3 as note 5.
306.01	Amended rule excerpts 37 CFR §§ 101(b)(1)-(3), and (4) to reflect rule amendments; text amended or deleted, paragraphs 2-6; new notes 2 and 5; renumbered notes 2-4 to notes 3, 4 and 6; renumbered notes 5-8 to notes 7-10; deleted note 9. Renumbered notes referencing rule reflect amendments, renumbered note 10, delete reference to Schott.
306.03	Amended paragraph 2.
306.04	Moved paragraph 2 and amended text. Amended text, paragraph 3 (now paragraph 2).
307	Amended rule excerpts to reflect rule amendments. 37 CFR §§ 2.111.
307.01	Amended text paragraph 3; new note 10; amended rule reference to note 9.
307.02(a)	Amended text paragraphs 7 and 8; old note 13 deleted, new notes 10 and 12, notes 10 and 11 renumbered as 11 and 13 and amended.
307.02(c)(3)	New subsection.
307.03	Amended text paragraph 2.
307.04	Amended text paragraph 2.
308.01(a)	Amended text rule excerpts 37 CFR § 2.101 to reflect rule amendments; amended text, paragraph 1; new note 2; notes 2 and 3 renumbered as note 4; note 3, added text.
308.01(b)	Amended or deleted text paragraphs 1, 3, and 4; added new note 3; renumbered note 3 and note 4 and note 4 as note 5. Notes 1 and renumbered note 5, rule references amended to reflect renumbering.
308.02(a)	Amended text of rule excerpts 37 CFR § 2.111 to reflect amended rules; text in paragraph 1 amended; note 2 added. Former note 2 renumbered as note 3. Notes 1 and 3, rule references amended to reflect renumbering.
308.02(b)	Amended text paragraph 1, 3 and 4; deleted note 4; added rule reference to notes 1 and 2; renumbered notes 5 and 6 as 4 and 5 to reflect deletion of note 4.
308.03	Added text to paragraph 1; added new note 4; notes 1 and 2 rule cites amended to reflect renumbering; note 3, added amended rule reference.
308.04	Added text, paragraph 1; notes 1 and 2, amended rules to reflect renumbering; note 3 added
308.05	Added text, paragraph 2; added new notes 4 and 5; renumbered note 4 as note 6;
309.01	Amended rule excerpt text, 37 CFR §§ 2.101(b), 2.111(b), 2.119(e) 2.126, and added 37 CFR §§ 2.111(c)(1) and (c)(2); amended text paragraph 1. Added new notes 1, 2, 3, 6 and 8. Renumbered note 1 as note 4, 2 as note 5, 3 as note 7; note 4 renumbered as note 9. Amended renumbered notes 1 (now 4), 2 (now 5), 3 (now 7) to reflect rules amendments. Added text
309.02	Amended text first and second paragraphs. New note 2; renumbered note 2 as note 3 and note 3 as note 4. Note 1, amended rules reflected and added; note 2 amended rules reflected and added; note 3 referenced 37 CFR § 2.111(c)(1); note 4 referenced 4. 37 CFR § 2.101(b)(3) and 37 CFR § 2.101(b)(2) and 37 CFR § 2.111(c)(2).
309.02(a)	Amended text, first paragraph, added new notes 1 and 2; paragraph 3, added new note 4; amended text, paragraph 3, renumbered notes 1 as not 3, renumbered notes 2-5 as notes 5-8. Renumbered note 3 added reference to notice of final rules, 2016; renumbered note 7, deleted reference to 37 CFR § 2.112(b). Added new notes 9-11 and new text under "Registrant information in petition to cancel."
309.02(b)	Note 3, added reference to notice of final rules, 2016.
309.02(c)	Paragraphs 1 and 2, text amended; note 1, rule renumbering reflected, deleted reference to notice of final rules, 2007; note 2, added references to rules 37 CFR § 2.105(a) and 37 CFR § 2.111(a); deleted reference to notice of final rules 2007, added reference to notice of final rules 2016.
309.02(c)(1)	37 CFR § 2.015 excerpt added to reflect rule change, 37 CFR § 2. 101 excerpt amended to reflect rule change; text in paragraphs 1 and 2 amended; paragraphs 3-8 deleted; paragraph 9 added, paragraph 10 text amended; paragraph 11 added text; note 1, amended rule to reflect renumbering; note 2, amended rule to reflect renumbering, reference to notice of final rules, 2016 added, delete notes 3-17; new note 3; note 18 renumbered as note 4, case reference deleted; notes 19-22 renumbered as notes 5-8.
309.02(c)(2)	Rule excerpt 37 CFR §§ 2.111 amended, 2.113 added to reflected amended rules; paragraphs 1 and 2 text amended; please note amended; paragraphs 3-7 deleted; paragraph 8 added, paragraph 9 amended; paragraph 10 added; note 2 amended to reflect rule renumbering, reference to notice of final rules, 2016; note 3, added, note 3 renumbered as note 4, case reference and rule reference deleted, reference to notice of final rules, 2016 added; notes 4-20 deleted; notes 21-24 renumbered as notes 5-8.
309.03	Added reference to 37 CFR § 2.104(a) which was missing from quoted rule excerpt; amended text in rule excerpt 37 CFR § 2.112(a) to reflect amended rule
309.03(a)(1)	Added 37 CFR § 2.104(c) to notes 3 & 4; added reference to Final Rule, 2016
309.03(a)(2)	Added Wise F&I, LLC v. Allstate Ins. Co, Note 6.
309.03(b)	Note 9, added case cite Ayoub Inc.
309.03(c)	Note 30, added Omega SA (Omega AG) (Omega Ltd. case); Note 48, amended rule to reflect renumbering. Note 27, added Noble House Home Furnishings LLC; Note 33, added case cite Daniel Quirk, Inc. Note 35, added case cite, NH Beach Pizza LLC; added case cite, Chutter Inc.
309.03(d)	Note 19, amended rule to reflect renumbering.
309.04	Added new first paragraph; added new paragraph 7, amended paragraph 3-6, added new paragraphs 8 and 9, amended paragraphs 10-12; New note 1, rule cite; added rule cite to note 2; new note 3, rule cite; note 4, added rule cite.
310.01	Amended excerpts of rules to conform to amendments; amended or added wording to paragraphs 1 through 8 (para 8 is now para 9); new paragraph 5; Note 1, renumbered rule to reflect amendment, note 2 and 4, added Research in Motion and Liberty & Co., added new notes 7, 8, 9, 12 and 13; renumbered notes 7-16, now 7-21; added final rules references to renumbered notes 11 and 14.
310.02	Amended excerpts of rules to conform to amendments, amended text paragraph 1 and 2; Note 1, added reference to 2016 and 2007 Final Rules.
310.03(a)	Amended excerpts of rules to conform to amendments; amended text in paragraphs 1, 2 and 3.
310.03(b)	Deleted section due to elimination of 5 day addition for 2.119. Reserved.
310.03(c)	Added rule excerpt . 37 CFR § 2.126. Paragraph 2 deleted text; paragraph 3, added text; new note 2.
311.01	Amended rule excerpt to reflect amendments; amended paragraph 2 added reference to 37 CFR § 2.106(b)(1) and 37 CFR § 2.114(b)(1); note 2 amended rule reference to reflect renumbering.
311.01(a)	Amended first paragraph.
311.01(b)	Moved second paragraph to position of third paragraph; amended text in paragraph 1, paragraph 3 (former paragraph 2); paragraph 4. Notes 2 and 3 are now renumbered as notes 3 and 4; note 4 is now renumbered as note 2; renumbered note 3, added reference to 2016 final rules notice.
311.01(c)	Added quotations of excerpts of 37 CFR § 2.106(b) and 37 CFR § 2.114 and 37 CFR § 2.119; split paragraph 1 into paragraphs 1 and 2, added new text. Added new notes 1, 2, 4, 5 and 6. Renumbered note 1 as note 3 and added additional reference to 37 CFR § 2.119(b).
311.02	Amended references to 37 CFR § 2.106(b) and 37 CFR § 2.114(b), to reflect amended text and renumbering. Added paragraph under this section and notes 1 and 2. Reference to TBMP § 311.02(a)
311.02(a)	Amended references to 37 CFR § 2.106(b) and 37 CFR § 2.114(b), notes 1 and 2 to reflect renumbering of amended rules
311.02 (b)	Amended references to 37 CFR § 2.106(b) and 37 CFR § 2.114(b) paragraph 10, notes 1, 2, 16, and 21 to reflect renumbering of amended rules; added reference to Hornby v. TJX Companies Inc. note 2; added NH Beach Pizza LLC and Urock Network, LLC, and Stephen Slesinger Inc. note 2.
311.02(c)	Added reference to Omega SA (Omega AG) (Omega Ltd.) v. Alpha Phi Omega, note 1.
311.03	Note 1, renumbered 37 CFR § 2.106(b) and 37 CFR § 2.114(b) references to reflect renumbering in amended rules.
312
312.01	Amend text of rules 37 CFR § 2.106(a) and 37 CFR § 2.114(a) to conform to amended rule; amended paragraph 4 to reflect rule change regarding service; new paragraph 5, with new notes 5 and 6; "Please note" paragraph to reflect amended rules 37 CFR § 2.106(a) and 37 CFR § 2.114(a); notes 5 and 6 renumbered as notes 7 and 8; renumbered note 5 (now note 6) amended to conform to amended rules 37 CFR § 2.106(a) and 37 CFR § 2.114(a), to add a Federal Register reference. Added to note 8, reference to 37 CFR § 2.106(b)(3)(iv).
313.01	Amended text of rules 37 CFR § 2.106(b)(3) and 37 CFR § 2.114(b)(3) to conform to amended rules and renumbering; amended paragraph 2 text to conform to rule renumbering; added text paragraph 6; amended notes 1, 11 and 13 to conform to rule renumbering; added 37 CFR §§ 2.106 and 2.114 reference to note 12.
313.02	Amended text of rules 37 CFR § 2.106(b)(3)(iii) and 37 CFR § 2.114(b)(3)(iii) to conform to amended rules; added excerpt of 37 CFR § 2.111(d); amended paragraph 2 to reflect rule amendments; added new notes 3 and 4; amended note 1 to reflect rule renumbering and added citation to rule 37 CFR § 2.111(d); amended note 2 to reflect rule renumbering.
313.03	Added rule reference 37 CFR § 2.119 before text. Deleted text paragraph 2; deleted note 1; renumbered notes 2 through 5 as 1 through 4; note 4 added Ashland Licensing & Intellectual Property LLC v. Sunpoint International Group USA Corp.; reworded parenthetical note 4.
313.04	Amended text of rules 37 CFR § 2.106(b)(3)(i) and 37 CFR § 2.114(b)(3)(i) to reflect amendment and rule numbers (to reflect renumbering); amended text paragraph 1; added new paragraph 5 and new note 7. Amended notes 1 and 6 (now note 7) to reflect renumbering of rules. Added new note 4, renumbered notes 4-7 as 5-8
313.05	Amended paragraph to reflect rule change; amended note 2 to reflect amended rule and renumbering; amended note 1 to reflect rule renumbering. Added text after Note 2. Added new notes 3 and 4. Added reference to TBMP § 313.03.
313.06	Amended excerpted text of rules, 37 CFR §§ 2.106(b) and 2.114(a)-(b); added additional excerpts of rules, 37 CFR §§ 2.106(a), 2.106(b)(3)(iv), 2.114(b)(3)(iv), amendments also reflect rule renumbering; amended text in paragraph 1.
314	Amended paragraph 4 to conform to wording in amended rules 37 CFR §§ 2.107(a)-(b). Added Omega SA (Omega AG) (Omega Ltd.) v. Alpha Phi Omega, note 5.
315	Amended text of rule 37 CFR §§ 2.107(a)-(b) to conform to amended rule; amended paragraph 1 to conform to amended rule 37 CFR §§ 2.107(a)-(b). Note 2, added reference to 2016 final rules notice; note 3, added parenthetical to Drive Trademark Holdings, added Syngenta Crop Protection as reference, added reference to 2016 final rules notice; notes 4, 5 and 6 added reference to 37 CFR § 2.107(b) and reference to 2016 final rules notice.
316	Amended text in "Please Note" paragraph to conform to amended rule 37 CFR § 2.127(d); added 37 CFR § 2.127(d) reference to note 2.
317	Amended text of rules 37 CFR § 2.122(c) and 37 CFR § 2.122(d) to conform to amended rule; amended third and fourth paragraphs to conform to wording in amended rule 37 CFR § 2.122(d). Note 6 added Chutter Inc. v. Great Concepts.

	CHAPTER 400

401	Amended text of rule 37 CFR § 2.120(a)(1) to conform to amended rule; amended note 2 to reflect rule renumbering.
401.01	Amended text of rule 37 CFR § 2.120(a)(1) and 37 CFR § 2.120(a)(2)(i) to conform to amended rules; amended text and footnotes to reflect rule renumbering; amended text regarding the preferred procedure for requesting Board participation in the parties’ discovery conference; added citations in notes 2, 4, and 11.
401.02	Amended text and footnotes to reflect rule renumbering; amended text in paragraph 8 regarding the timing of a motion to compel initial disclosures; add citations in notes 9, 10, 14, 16, and 17.
401.03	Amended text and numbering of rule 37 CFR § 2.120(a)(2)(iii) to conform to amended rule; amended text and footnotes to reflect rule renumbering; amended text in paragraph 1, 5, and 7 to reflect rule changes; add citations in notes 3, 13, 18, 25, 28, 29, and 30.
401.04	Amended text and numbering of rule 37 CFR § 2.120(a)(2)(iv) to conform to amended rule; amended text and footnotes to reflect rule renumbering; amended text in paragraph 1 to reflect rule change that expert disclosure deadline must always be scheduled prior to the close of the discovery period; add citations in notes 2, 4, and 6.
401.05	No changes.
401.06	Amended text and footnotes to reflect rule renumbering; amended text in paragraph 2 and note 6 to reflect rule change; add citations in notes 1 and 3.
402.01	Amended to add reference to 37 C.F.R. §2.120(a)(1); amended text and footnotes to reflect rule renumbering; added citations notes 1–3, 5, 7, 9, and 10.
402.02	Amended n.2 to revise order of cited authorities; amended n. 4 to conform to current rules; added citation in n. 11.
403.01	Amended text and numbering of rule 37 C.F.R. § 2.120(a), including subparts, to conform to amended rule; amended text in paragraphs 1–3 to reflect rule changes; amended footnotes to reflect rules renumbering; added citations to notes 3–4 and 6–8.
403.02	Amended text of rule 37 C.F.R. § 2.120(a)(3) to conform to amended rule; amended text in paragraph 1; amended text in n.1 to reflect rules changes; amended to add citations to notes 5 and 6.
403.03	Amended text of rule 37 C.F.R. § 2.120(a)(3) to conform to amended rule; amended text in paragraphs 1–2 and 3–4; amended notes to reflect rules renumbering; amended cites in notes 1–4.
403.04	Amended text and numbering of 37 C.F.R. § 2.120(a)(2)(iv) to conform to amended rule; amended text and numbering of 37 C.F.R. § 2.120(a)(3) to conform to amended rule; amended text of 37 C.F.R. § 2.121(d) to conform to amended rule; amended text to conform to amended rules; amended notes to reflect rules renumbering; amended cites in notes 1, 3, 5, 6, 8.
403.05(a)	Amended text to conform to amended rules.
403.05(b)	Amended text and numbering of 37 C.F.R. § 2.120(i); 37 C.F.R. § 2.122(g); and 37 C.F.R. § 2.120(k)(3)(ii) to conform to amended rules; amended text of 37 C.F.R. § 2.122(e) to conform to amended rule; amended text to conform to amended rules; amended citations in n.1 and n.3.
404.01	Amended text and n.1
404.02	Amended text of Fed. R. Civ. P. 30(a).
404.03(a)	Amended text to conform to rule changes. Amended punctuation in n.1.
404.03(b)	Amended text of 37 C.F.R. § 2.120(c). Amended text in paragraph 3.
404.03(c)(2)	Amended Black’s Law Dictionary cite in paragraph 2. Amended text of paragraphs 5 and 7. Amended website in paragraph 9. Amended cites in n.5 and n.6. Amended text in n.8
404.03(d)	Amended text of 37 C.F.R. § 2.120(c)(2). Amended text in paragraph 2 to reflect rule changes. Added n.3.
404.04	Amended text of Fed. R. Civ. P. 28. Amended cite in n.2.
404.05	Amended text of 37 C.F.R. § 2.124(b)(2). Amended text of paragraph 3 to reflect rule changes. Added citation of 37 C.F.R. § 2.120(a)(3) in n.8.
404.06(a)	Amended citation in n.2.
404.06(b)	Amended citation in n.2, n.3, and n.5. Amended text of n.5
404.06(d)	Amended text of Fed. R. Civ. P. 30(a).
404.07(b)	Amended text of 37 C.F.R. § 2.120(a)(3).
404.07(d)	Amended text of 37 C.F.R. 2.124(b)(2), 2.124(d)(1). Added 37 C.F.R. 2.124(d)(3).
404.07(e)	Amended text of 37 C.F.R. § 2.124(d)(1). Added 37 C.F.R. § 2.124(d)(3). Amended text throughout to reflect rule changes. Amended n.1 and n.2. Added n. 6.
404.07(f)	Amended text of 37 C.F.R. § 2.124(d)(1). Added 37 C.F.R. § 2.124(d)(3).
404.07(i)	Amended text of 37 C.F.R. § 2.124(f). Amended text in paragraph 2 to reflect change in 37 C.F.R. § 2.120. Amended citation in n.3.
404.07(j)	Amended citation in n.1.
404.08(c)	Amended text of Fed. R. Civ. P. 30(c) and 32(d). Amended text in paragraph 4 to reflect change in 37 C.F.R. § 2.120. Amended citations in n. 6.
404.09	Amended citations in n.2, n.9, n.13, and n.15.
405.01	Amended text and n.2 to reflect changes in 37 C.F.R. § 2.120; added n.2 and amended citation in n.3.
405.03(a)	Amended text and numbering of 37 C.F.R. § 2.120(d); added n.2.
405.03(b)	Amended numbering of 37 C.F.R. § 2.120(d).
405.03(c)	Amended numbering of 37 C.F.R. § 2.120(d).
405.03(d)	Amended numbering of 37 C.F.R. § 2.120(d).
405.03(e)	Amended text and numbering of 37 C.F.R. § 2.120(d); amended text to reflect renumbering of rules and to conform with amended rules; amended notes to reflect renumbering of rules; amend citation in n.5 to add 37 C.F.R. § 2.120(a)(3).
405.04(a)	Amended text to reflect changes in 37 CFR § 2.120(a)(3) and 37 CFR § 2.119(b)(1) – 37 CFR § 2.119(b)(4); amended citations in notes 1–4.
405.04(b)	Amended text and n.2 to reflect renumbering of rules.
406.01	Amended text to conform with amended 37 CFR § 2.120(a)(3); amended citations in n.2 and n.4.
406.03	Amended citations in n.1.
406.04	Amended text to reflect current practice; added citation in n.2.
406.04(a)	Amended text in paragraph 1 and 2 to conform to amended rules; amended citations in notes 1–5.
406.04(b)	Amended text and numbering of 37 C.F.R. § 2.120(e) to reflect amended rule; amended text in paragraph 1 to conform to amended 37 C.F.R. § 2.120(e); amended text in paragraph 2 to reflect renumbering of rule; amended citations in notes 1–3 and 5–6.
406.04(c)	Amended text in paragraph 1 to conform reflect current practice in view of 2015 amendment of the Federal Rules of Civil Procedure; amend citations in n.2, n.4, and n.9.
406.05	Added section 406.05 (§§ 406.05(a) – 406.05(e)), addressing limitations on number of requests for production of documents in things under amended 37 C.F.R. § 2.120(e).
407.01	Amended text to conform to amended 37 C.F.R. § 2.120(a)(3) and 37 C.F.R. § 2.120(i); amended citations in notes 1–3.
407.02	Amended text and citations to reflect current precedent and practice.
407.03(a)	Amended text in paragraph 1 and 2 to conform to amended rules; amended citations in notes 1–5.
407.03(b)	Deleted text to conform to amended rules.
407.05	Added section 407.05 (§§ 407.05(a) – 407.05(e)), addressing limitations on number of requests for admission under amended 37 C.F.R. § 2.120(i).
408.01	Added and amended case citations in n.1; added new case Emilio Pucci International BV v. Sachdev to n.1. Amended case citations in n.2.
408.01(a)	Amended text to reflect changes in 37 C.F.R. § 2.120. Added citations to n.2 and n.7. Amended citation in n.5. Added n. 9.
408.01(b)	Amended Fed. R. Civ. P. 26(a) and 37 C.F.R. 2.120(a)(2)(ii). Amended text. Amended n.1, n.2, and n.6. Added n.10, renumbered remaining endnotes.
408.01(c)	Amended Fed. R. Civ. P. 26(g)(1) and 37 C.F.R. 2.120(f)(1). Amended text in paragraph 4. Amended n.6 and n.7 to reflect changes in 37 C.F.R. § 2.120.
408.02	Amended citation in n.5.
408.03	Amended Fed. R. Civ. P. 26(e). Amended text in paragraphs 1 and 3 to correct citations. Amended citation in n.5.
409	Amended citations to 37 C.F.R. § 2.120. Amended n.1 and n.5 to reflect amendment to 37 C.F.R. 2.120.
410	Amended text in paragraphs 2, 3, 5, 6 and 8 of text to reflect changes in 37 C.F.R. § 2.120. Added citation to TBMP § 526 in paragraph 4 of text. Added citation to Emilio Pucci International BV v. Sachdev in n.7. Added n. 9, renumbered remaining endnotes. Amended citations in n.10, n.12, and n.13.
411.01	Amended text and all endnotes to reflect changes in 37 C.F.R. § 2.120.
411.02	Amended all endnotes to reflect changes in 37 C.F.R. § 2.120.
411.03	Amended n.2 to reflect changes in 37 C.F.R. § 2.120.
411.04	Amended n.1 and n.3 to reflect changes in 37 C.F.R. § 2.120.
411.05	Amended text, n.1, and n.4 to reflect changes in 37 C.F.R. § 2.120. Amended citation in n.1.
412	Amended text of 37 C.F.R. §§ 2.116(g) and 2.120(g), excerpts from the Board’s Standard Protective Order, and Fed R. Civ. P. 26(c)(1). Amended citation to 37 C.F.R. 2.120(g) in text to reflect changes in 37 C.F.R. § 2.120.
412.01	Amended paragraph 1 to delete reference to cases commenced prior to August 31, 2007. Amended paragraph 6, n.11 and n.13 to reflect changes in 37 C.F.R. § 2.120. Amended parenthetical in citation in paragraph 16 in view of changes in 37 C.F.R. § 2.120.
412.01(a)	Amended text of 37 C.F.R. § 2.116(g). Amended citation to 37 C.F.R. § 2.120(g) to reflect changes in 37 C.F.R. § 2.120. Amended citation to 37 C.F.R. § 2.125(f) to reflect changes in 37 C.F.R. § 2.125. Amended Fed. R. Civ. P. 26(c) and (g). Amended text in paragraphs 1, 9, and 10. Amended citations in n.4, n.6, n.11, n.14, n.15, and n.19. Added citations in n.6 (Ayoub , Inc. v. ACS Ayoub Carpet Service), n.10 (Standard Protective Order), n.11 (Standard Protective Order), n.13 (Noble House Home Furnishings, LLC v. Floorco Enterprises, LLC), n.14 (Emilio Pucci International BV v. Sachdev), and n.20 (Duke University v. Haggar Clothing Co.).
412.01(b)	Amended text of 37 C.F.R. § 2.116(g). Corrected typographical error in n.4. Edited parenthetical in n.5. Amended citation to 37 C.F.R. § 2.120(f)(1) in n.6 to reflect changes in 37 C.F.R. § 2.120. Amended citation in n.8 and n.16. Added citation in n.11.
412.01(c)	Amended text of excerpts from the Board’s Standard Protective Order and 37 C.F.R. § 2.116(g). Added citations to paragraph 6, and added citation to Noble House Home Furnishings, LLC v. Floorco Enterprises, LLC, to n.1, n.4, n.6, n.7, n.12, n.13, n.15. Added citation to Duke University v. Haggar Clothing Co. to n.9. Amended citation in n.2, n.6, and n.7.
412.02	Amended citation. Added citation.
412.02(c)	Amended text in paragraph 2.
412.02(d)	Moved text from paragraph 13 to 12. Amended new paragraph 12 and n.1.
412.04	Amended text of 37 C.F.R. § 2.126(c), excerpts from the Board’s Standard Protective Order, text of paragraphs 1 and 3. Added citation to Ayoub , Inc. v. ACS Ayoub Carpet Service to n.5. Added n.6, renumbered n.7 and n.8.
412.05	Amended heading
412.06	Amended text of 37 C.F.R. § 2.120(g) and Fed. R. Civ. P. 26(c)(1). Amended text of paragraph 1 to reflect changes in 37 C.F.R. § 2.120. Added text to paragraph 4. Amended parenthetical in n.1 and citations in n.2 and n.5. Added citation to Emilio Pucci International BV v. Sachdev in nn.6 & 7. Added n.7.
412.06(a)	Amended text of paragraph 2. Amended citations in n.1, n.2, and n.4.
412.06(b)	Added text to paragraph 1. Amended text to paragraph 2. Added citation to Emilio Pucci International BV v. Sachdev to n.1 and n.2. Added n.4 and n.7. Added citations to Wisconsin Cheese Group, LLC v. Comercializadora de Lacteos y Derivados S.A. de C.V. & Emilio Pucci International BV v. Sachdev to n. 7, Renumbered and amended parentheticals to n.5 and n.6.
413.01	Amended text to 37 C.F.R. § 2.120(j)(1) and 2.127(a) and paragraphs 1 and 2. Added citation to n.1. Added n.4. Renumbered n.5.
413.02	Amended text to 37 C.F.R. § 2.120(j)(2). Added text to paragraph 1. Added n.2 and n.3.
414	Added quotations of Fed. R. Civ. P. 26(b)(1) and 37 C.F.R. § 2.120(a) and numbered paragraph 25. Amended text of paragraph 1 and numbered paragraph 7. Amended citations in n.2, n.4, n.5, n.13, n.14, n.17, n.19, n.22, and n.24 through n.27. Amended parentheticals in n.11. Added case citations to Domond v. 37.37, Inc. to n.2 and n.14; to Mack Trucks, Inc. v. Monroe Auto Equip. Co. to n.33; to Emilio Pucci International BV v. Sachdev, Wisconsin Cheese Group, LLC v. Comercializadora de Lacteos y Derivados S.A. de C.V., Domond v.37.37, Inc., The Phillies v. Philadelphia Consolidated Holding Corp., Frito-Lay N. Am. Inc. v. Princeton Vanguard LLC to n. 34; to Domond v. 37.37, Inc. to n. 35. Added n.33 through n.35.

	CHAPTER 500

Table of Contents	Added requests for production and requests for admission to section 519 title; added "in foreign country" to section 531 title
501.01	Added reference to requests for production; added cite to rule 2.120(e); clarified reference to facts in the case; deleted reference to affidavit testimony; updated rule cite in Note 1; deleted Note 3; renumbered remaining Notes; added subsequent history to Frito-Lay North America, Inc. case in Note 5
501.02	Amended text of rules 2.120(a)(2)(iv) and 2.121(d); Note 1 amended cite to rule 2.120(a)(2)(iv)
501.03	Added that motion should state all parties agree to new dates.
502.01	Clarified that Board does not preside at oral testimony; added rule 2.132(b) to exception of entertaining motion relating to evidence before trial; Note 1 amended cite to rule 2.125(d)
502.02	Amended text of rules 2.126, 2.127(a), and 2.127(e)(1)
502.02(a)	Amended wording to explain mandatory filing via ESTTA, rare exceptions when paper filing may be permitted, and service by email; Added new Notes 3 and 4; renumbered subsequent Notes
502.02(b)	Amended responsive brief time to 20 days; deleted all parenthetical references to five extra days under rule 2.119(c); amended cite to rule in Note 5; added cite to 2017 rules change in Note 5; deleted reference to email service from Note 9
502.02(c)	Deleted reference to 2007 rules change; clarified that standard protective order is in place for all cases unless Board approves alternative order; emphasized filing via ESTTA and rare exception thereto; clarified that public copy must be submitted concurrently with confidential copy; amended reference to rule 2.126(c); added cite to Edwards Lifesciences Corp. in Note 4
502.03	Deleted "issue or"
502.04	Amended text of rule 2.127(c); added briefs in opposition must be "acceptable"; explained Board need not address every argument; added paralegal or ESTTA may act on motions; added caption should fully contemplate all motions incorporated in filing; added filing of request for reconsideration or petition will not usually result in suspension; added cite to Promgirl Inc. in Note 2; added Note 3; renumbered remaining Notes; added cite to rule 2.121(a) in Note 5
502.05	Amended cite to rules 2.120(g) and 2.120(h)(1)
502.06(a)	Amended cite and text of rule 2.120(j)(1); amended text of rule 2.127(a); new cite to rule 2.191; small word and word order changes to clarify explanation; added cross-reference to TBMP § 401.01; deleted reference to suspension for requests for reconsideration and petitions; amended cite to 2.120(j)(1) in Note 1; added cites to Spier Wines (PTY) Ltd. and Byer California in Note 2; added cite to Sunrider Corp. in Note 3; added cite to rule 2.126(a) in Note 6; added Note 7
502.06(b)	Amended cite and text of rule 2.120(j)(2); clarified how Board may direct parties to appear; amended cite to rule 2.120(j)(2) in Note 1; deleted subsequent history of Blackhorse from Notes 1 and 2; added cite to 2017 rules change to Note 2
503.01	Minor punctuation changes
503.02	Minor punctuation changes
503.03	Added timely amended complaint will moot motion to dismiss; deleted reference to correcting defects; deleted subsection cite to federal rule in Note 1; added cite to Wise F&I, LLC in Note 3
503.04	Deleted references to 2007 rules change; deleted references to different treatment of pre-2007 rules cases in Notes 2 and 3; added cite to Chutter , Inc. in Note 4
504.01	Added submission of evidence as part of trial; explained requirement of pretrial disclosure and deadline for motion for judgment on pleadings; added Note 3; renumbered subsequent Notes; added cite to 2017 rules change in Note 4
504.03	Deleted references to 2007 rules change; deleted references to different treatment of pre-2007 rules cases in Note 1; added cite to Chutter , Inc. in Note 3
506.01	Clarified that matter "usually" will not be stricken; added cite to Finanz St. Honore , B.V. in Notes 2 and 7
506.02	Minor punctuation and word changes for clarity; deleted parenthetical reference to five extra days under rule 2.119(c); added Board may strike "claim"
506.03	Deleted cite to rules 2.105(c) and 2.113(c); added cite to federal rule 10(c)
507.01	Amended text of federal rule 15(b)(2) and rules 2.107(a) and (b); added explanation that joint opposer may not be added after time to oppose closes, neither may goods, services, nor joint opposer be added to opposition to application filed under Section 66(a); added scope of goods, services, and grounds limited to those listed on ESTTA cover sheet for opposition to application filed under Section 66(a); added named opposers limited to those on ESTTA cover sheet for opposition to application filed under Section 66(a); added Note 7; renumbered subsequent Notes
507.02	Fixed faulty parallelism; added amended pleading should be so captioned; added joint opposer may not be added after time to oppose closes for application filed under Section 66(a); added cite to Embarcadero Technologies, Inc. in Notes 3 and 4; added cite to Noble House Home Furnishings, LLC in Notes 4 and 5; added cite to Ashland Licensing & Intellectual Prop. LLC in Note 5
507.02(a)	Added cite to Ashland Licensing & Intellectual Prop. LLC in Note 1
507.02(b)	Amended cite to rules 2.106(b)(3)(i) and 2.114(b)(3)(i)
507.03(b)	Added cite to Noble House Home Furnishings, LLC in Note 3; added subsequent history to Productos Lacteos Tocumbo S.A. de C.V. cite in Notes 3 and 4
508	Clarified that answer should be filed concurrently with motion to accept late answer; added failure to file a timely answer tolls all deadlines; added cite to Finanz St. Honore , B.V. in Note 1; added cite to rules 2.106(a) and 2.114(a), and deleted cite to 2007 rules change in Note 4
509	Amended text of federal rule 6(b)(2); added subsections to rule 2.120(a); amended text of rules 2.120(a), 2.121, and 2.127(a)
509.01	Amended text of rule 2.127(a) and 2.127(e)(1), and deleted reference to former federal rule 56(f) in Note 1
509.01(a)	Minor word changes for clarity; deleted 5th paragraph; update subsection of rule 2.120(a)(2)(iv) in Note 5; deleted Note 6; renumbered subsequent Note
509.01(b)(1)	Added motion must be filed via ESTTA; added cite to FirstHealth of the Carolinas Inc. in Note 3
509.02	added caption should fully contemplate all motions incorporated in filing; added explanation that extension of time to respond to discovery beyond close of discovery period will not be granted since discovery must be completed during discovery period; added motions must be filed via ESTTA; minor changes explaining how to file via ESTTA; added cite to Boston Red Sox Baseball Club LP and deleted cite to 2007 rules change in Note 1; added Note 2; renumbered subsequent Notes; added cite to rule 2.117(c) in Note 5; added cite to rules 2.120(a)(2(iv) and 2.121(a)(3) in Note 10; added subsection cite to rule 2.145(e)(2) in Note 12
510	Amended text of rules 2.117(c), 2.120(e)(2), and 2.127(d); updated subsection of rule 2.120(f)(2);
510.02(a)	Added explanation that policy to suspend in favor of civil action has not changed; deleted wording that Board decision may not be binding on a court; clarified language on filing motions via ESTTA; added cite to B&B Hardware, Inc. in Note 2; deleted "binding or" from explanatory note to New Orleans Louisiana Saints LLC in Note 2; added cite to Birlinn Ltd. in Note 13;
510.02(b)	Added Note 1
510.03(a)	Deleted reference to 2007 rules change; added discovery and trial activities to list of events for which Board will not suspend indefinitely; added duty to cooperate in discovery; added automatic suspension when timely potentially dispositive motion filed; added filing of such motion may not provide good cause for failing to comply with an otherwise outstanding obligation; amended rule 2.120(f)(2) subsection; added parties need not make pretrial disclosures when motion to compel filed after close of discovery; deleted cite to 2007 rules change in Note 3; added cite to rule 2.117(c) and Guthy-Renker Corp. in Note 4; added Note 7; renumbered subsequent Notes 8 and 9; added cite to 2017 rules change in newly numbered Note 9; deleted former Note 9; deleted Super Bakery Inc. cite in Note 10; clarified explanatory note to Super Bakery Inc. in Note 11; amended rule 2.120(f)(2) subsection in Note 14
510.03(b)	Amended "when" to "after" suspension period expires; added "and that party so informs the Board" of self-representation; minor punctuation changes
511	Minor punctuation changes; deleted reference to 2007 rules change; added cite to Wise F&I, LLC in Note 1; added cite to Wisconsin Cheese Group, LLC and shortened explanatory note to Dating DNA LLC in Note 5; added cite to Omega SA (Omega AG) (Omega Ltd.) in Note 10
512.01	Minor word and punctuation changes; added first TMEP cite and both TMEP section titles in Note 6; added final TMEP cite and deleted penultimate TMEP section title in Note 7; updated rule 2.113(c)(1) subsection in Note 9; updated rule 3.71(d) subsection in Notes 9 and 10; added TMEP sections in Note 11; added cite to Turner and shortened explanatory note to Hamilton Burr Publishing Co. in Note 13; added cite to rules 2.107(a) and (b) in Note 14
512.02	Added location where name change documents are recorded; added cite to Spirits International B.V. in Note 1
512.03	Minor punctuation change; added final TMEP cite in Notes 6 and 7
512.04	Amended heading of federal rule 15(a)(1)
513.01	Amended text of rule 2.19(b); minor word changes; added former cite to requirements for withdrawing as an attorney prior to May 3, 2013; added cite to University Games Corp. in Notes 1 and 5; added cite to TMEP in Note 2
513.02	Added "Note 1" to 1st paragraph; deleted orphan "Note 2" from 2nd paragraph; deleted "for signature by the Chief Administrative Judge"
514	Added heading for rule 2.133; added text of subsection (d) of rule 2.133
514.01	Substituted reference to likelihood of confusion with "grounds for opposition"; renumbered list of requirements in 2nd paragraph; minor word changes for clarity; added cite to Wisconsin Cheese Group, LLC in Note 3; added Notes 5 and 7; renumbered subsequent Notes; deleted cite to subsections of rules 2.71 and 2.173 in Note 6; added cite to rule 2.176 in Note 16
514.02	Added 2nd paragraph and Note 2
514.03	Added cite to Wisconsin Cheese Group, LLC in Notes 1 and 3; added cite to Johnson & Johnson and Drive Trademark Holdings LLC in Note 3; added Note 4; renumbered subsequent Notes; added cite to ProQuest Information and Learning Co. in Note 6; added cite to Southwestern Management, Inc. in Note 7
515	Amended text of rules 2.130 and 2.131; minor word and punctuation changes; added cite to rule 7.25 and deleted cite to rule 2.131 in Note 5
517	Deleted "even if timely filed"; added cite to DaimlerChrysler Corp. in Note 4; added cite to rule 2.127(a) in Note 6
518	Amended text of rule 2.127(b); amended responsive brief time to 20 days; deleted parenthetical reference to five extra days under rule 2.119(c); added paralegal or ESTTA may act on motions; deleted and moved order of some wording in 5th paragraph for brevity and clarity; added cite to Guess? IP Holder LP in Note 1
519	Added requests for production and requests for admission to section title and throughout body; deleted final subsection reference to rule 2.120(d)(1); added rule 2.120(d) header; added text of and citation to rules 2.120(e) and 2.120(i); amended general references from "interrogatories" to "written discovery"; added cross-references to TBMP §§ 406.05 and 407.05; added cite to 2017 rules change in Note 2
520	Amended text of rules 2.120(c)(1) and 2.123(a)(2); minor deletions for clarity; added testimonial deposition in foreign country may be taken by affidavit subject to cross-examination upon written questions
521	2nd para: fixed faulty parallelism; added clarifying language regarding examples of grounds for moving to quash a deposition.
521	Note 2: Corrected signals for case citations.
521	Note 10: Added citation to 37 CFR § 2.121(e).
522	Revise language of 37 CFR § 2.120(e) (formerly (d)(2)) and changed subsection references
522	Note 3: fixed formatting.
523	Revise language of 37 CFR § 2.120(f) (formerly (e)) and changed subsection references throughout.
523.01	4th para: changed deadline for filing motion to compel
523.01	5th para: revised to address new deadlines for filing motion to compel
523.01	Notes 1 and 4: added subsequent history to Neville Chemical Co. v. Lubrizol Corp., 183 USPQ 184 (TTAB 1974) citation.
523.01	Note 7: Added quote from 2.120(f)(2)
523.01	Note 7: deleting cases where holdings related to former deadlines for filing motion to compel
523.02	4th para: add language to state motion to compel available for failure to produce documents, ESI, or tangible things; add cross-reference to TBMP 406.03(e).
523.03	1st and 2nd paras: changed deadlines for filing motions to compel
523.03	2nd para: delete section stating that 2.196 does not apply.
523.03	Note 5: Add "Please Note: The deadlines for filing motions to compel were changed in the January 14, 2017 revisions to 37 C.F.R. § 2.120(e) renumbered as § 2.120(f). Prior Board decisions may cite to former deadlines no longer applicable in inter partes proceedings."
523.03	Note 6: Add "To be clear, if the deadline for pretrial disclosures was reset after the deadline was past, a motion to compel would be untimely."
523.04	Note 1: add subsequent history to citation for British Seagull Ltd. v. Brunswick Corp., 28 USPQ2d 1197 (TTAB 1993) (universal).
524	Revise language of 2.120(i) (formerly (h)) and change subsection references throughout.
524.03	1st para: change deadlines for filing a motion to test the sufficiency of responses to requests for admission; delete section stating that 2.196 does not apply.
524.03	Note 2: Add "To be clear, if the deadline for pretrial disclosures was reset after the deadline was past, a motion to compel would be untimely." Add "Please Note: The deadlines for filing motions to test the sufficiency were changed in the January 14, 2017 revisions to 37 C.F.R. § 2.120. Prior Board decisions may cite to former deadlines no longer applicable in inter partes proceedings."
526	Revise language of 2.120(g) (formerly (f)) and change subsection references throughout.
526	Para 3: add language to indicate motion for protective order also applies to requests for production or requests for admission that exceed the limitations; add cross reference to TBMP 406.05(e) and 407.05(e).
526	7th para: delete reference to Board’s standard protective order.
527	Revise language of 2.120(h) (formerly (g)) and change references to subsections throughout.
527	Note 4: Add "Please Note: as part of general restyling, effective January 14, 2017, former 37 CFR § 2.120(g)(1) is now 37 CFR § 2.120(h)(1)."
527	Note 11: Add reference to 2.120(h)(2).
527.01(c)	1st para: add reference to 403.03.
527.03	3rd para: add language to reflect service of a petition to cancel on TTABVUE.
527.03	Change "interlocutory attorney" to "attorney."
528.01	11th para: revise deadline for seeking judicial review of a decision.
528.01	Notes 9 and 13: Add Omega SA (Omega AG) (Omega Ltd.) v. Alpha Phi Omega, 118 USPQ2d 1289, 1299 (TTAB 2016).
528.02	Revise 2.127(e)(1) and change deadlines for filing motion for summary judgment throughout.
528.02	5th para: change deadlines for filing briefs; add that time for reply brief will not be reopened.
528.02	Note 2: Add NH Beach Pizza LLC v. Cristy’s Pizza Inc., 119 USPQ 1861, 1862 n.1 (TTAB 2016).
528.02	Notes 4, 5, 8: delete case citations discussing inapplicable deadlines
528.03	Revise language of 2.127(d)
528.03	1st para: Change language to reflect suspension on summary judgment; delete "Notwithstanding, the Board has found that the filing of a motion for summary judgment does not provide a party good cause not to timely comply with a Board order granting discovery sanctions which required the service of complete discovery responses" and corresponding Note 2.
528.04	Note 1: Add NH Beach Pizza LLC v. Cristy’s Pizza inc., 119 USPQ 1861, 1862 n.1 (TTAB 2016) and delete references referring to old rules.
528.05(a)(1)	Add Note 6 to add Omega SA (Omega AG) (Omega Ltd.) v. Alpha Phi Omega, 118 USPQ2d 1289, 1291 n.2 (TTAB 2016).
528.05(a)(1)	Note 12: insert subsequent history for Frito-Lay N. America, Inc. v. Princeton Vanguard, LLC, 109 USPQ2d 1949, 1951 (TTAB 2014).
528.05(a)(2)	1st para: delete reference to 2007 revisions.
528.05(a)(2)	2nd para: insert language to state parties may stipulate to "introduction of evidence by affidavit or declaration without cross-examination."
528.05(a)(2)	Notes 1 and 2: Add Bond v. Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016).
528.05(b)	5th para: delete reference to flash drive for submission of evidence and provide explanation.
528.05(c)	Revise language of 2.127(e)(2) and 2.120(k)(8) (formerly (j)) and change references to subsections throughout.
528.05(d)	Revise language of 2.122(d)(1).
528.05(e)	Revise language of 2.122(e)
528.05(e)	Note 6: Add reference to 2.122(a)(2) and fix signal.
528.05(e)	Note 7: change signal.
528.06	Revise language of 2.127(e)(1) and delete references to prior version language.
528.06	6th para: Add that time to file a motion under 56(d) will not be reopened.
528.07(a)	Note 1: Add Omega SA (Omega AG) (Omega Ltd.) v. Alpha Phi Omega, 118 USPQ2d 1289, 1291 n.2, 1292 (TTAB 2016).
529	Revise language of 2.120(k) (formerly (j)) and change subsection references throughout.
529	5th para: change language to state that a motion must be filed when a party makes its pretrial disclosures.
530	Add Note 1 to add Mini Melts, Inc. v. Teckitt Benckiser LLC, 118 USPQ2d 1464, 1467 n.4 (TTAB 2016).
531	Revise language of 2.123(a)(1) and (a)(2).
531	Delete paras. 1 and 2 and add: "Testimonial depositions taken in a foreign country shall be taken by deposition upon written questions. [Note 1.] The Board may, depending upon the particular facts and circumstances in each case, upon motion for good cause, order that the deposition be taken by oral examination or by affidavit or declaration. Testimony in a foreign country may be taken or by affidavit or declaration (subject to the right of any adverse party to elect to take and bear the expense of cross-examination by written questions of that witness). [Note 2.] A party served with a notice of the taking of a testimonial deposition upon written questions of a witness who is, or will be at the time of the deposition, present in the United States or any territory which is under the control and jurisdiction of the United States, may file within twenty days from the date of service of the notice a motion with the Board showing good cause for an order that the deposition be taken on oral examination. [Note 3.]"
531	Note 2: delete inapplicable case citations.
532	Note 2: Add reference to 2.122(g).
533.01	Revise language of 2.121(a)
533.02(a)	Revise language of 2.123(c) and (e)(3).
533.02(a)	1st para: Add: "When testimony is presented by affidavit or declaration, but was not covered by an earlier pretrial disclosure, the remedy is the prompt filing of a motion to strike" and corresponding Note 2 citing 2.121(e) and TBMP 533.02(b).

533.02(a)	Para. 3: minor language changes.
533.02(b)	Revise language of 2.121(e) and 2.123(e)(3).
533.02(b)	1st para: minor language change.
533.02(b)	4th para: Add "When testimony is presented by affidavit or declaration, but was not covered by an earlier pretrial disclosure, the remedy is the prompt filing of a motion to strike" and corresponding citation to 2.121(e), 2.123(e) and TBMP 533.02(b).
534	Revise language of 2.132.
534	1st para: Add "When a party has not taken testimony or offered any other evidence the Board may grant judgment for the defendant sua sponte" and corresponding note to Miscellaneous Changes to Trademark Trial and Appeal Board Rules.
534	Change standard to excusable neglect and change time for filing motions throughout.
534	Note 5: Add "37 CFR § 2.132(a). The 2017 amendments to 37 CFR § 2.132(a) changed the terminology in the applicable standard from "good and sufficient cause" to "excusable neglect." See Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 81 Fed. Reg. 69950, 69968 (2016) ("The Office is further amending §2.132(a) to clarify that the standard for the showing required not to render judgment dismissing the case is excusable neglect.") Consequently, cases determined before the amendments went into effect may use the earlier terminology, e.g., "good and sufficient cause" but they remain authoritative."
535	Revise language of 2.134(b).
536	Revise language of 2.128(a)(3).
537	Revise language of 2.128(b)
539	Note 3: Add citation to 2.128(b).
540	Add Note 3 with citation to 2.129(a).
541	Revise language to reflect new procedures for scheduling hearing dates.
543	Revise language of 2.129(c)
543	Change dates for filing briefs and deadline for filing civil action.
544	Note 2: Change parenthetical explaining Pioneer Investment Services Co. v. Brunswich Associates Ltd. Partnership et al., 507 U.S. 380 (1993) holding.

	CHAPTER 600

601.01	3d para: update language to reflect electronic environment
601.02	Updated heading and text of 37 CFR § 2.114(c) to reflect 2017 amendment to the rule adding counterclaims
601.03	Added counterclaimant
602.01	Added new Note 8 regarding mandatory use of ESTTA; renumbered former Notes 8-17
602.02(a)	Added new Note 15 regarding mandatory use of ESTTA; renumbered former Notes 15 and 16
602.02(b)	Updated section and text of 37 CFR § 2.134(b) to reflect 2017 amendment
	Note 10: Added Cf. Harry Winston, Inc. v. Bruce Winston Gem Corp.
603	Added new Note 4 regarding mandatory use of ESTTA; renumbered former Notes 4-7
605.01	Added new Note 1
605.02	Added 37 CFR § 2.117(c)
	Added new Notes 1 and 2; renumbered remaining notes
605.03(b)	Added new Note 1 regarding mandatory use of ESTTA; renumbered remaining notes

	CHAPTER 700

Table of Contents	Revised titles for 703.01, 703.01(c)-703.01(f), and 703.01(k)-703.01(o) to add references to affidavits, declarations, trial testimony, oral testimony and notice of election of cross-examination of affiant or declarant
701	Updated section and 37 CFR § 2.116(b) and 37 CFR § 2.121 to reflect 2017 amendments
	Notes 7, 8 & 9: Added Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)
	Note 10: Deleted case law citation and replaced with 37 CFR § 2.121(a) and Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)
	Note 11: Added 37 CFR § 2.1116(e) and Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)
	Added new Note 12 citing 37 CFR § 2.121(a)
	Added new Note 13 citing 37 CFR § 2.116(f)
	Added new paragraph and new Note 14 citing 37 CFR § 2.132(a) and Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)
702	Updated 37 CFR § 2.121 and 37 CFR § 2.123(e)(3) to reflect 2017 amendments
702.01	Updated to reflect 2017 amendments
	Notes 1 & 4: Deleted Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2007)
	Note 10: Added 37 CFR § 2.121(e) and 37 CFR § 2.123(e)(3); deleted Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2007)
	Note 13: Added 37 CFR § 2.121(e); deleted 37 CFR § 2.118 and Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2007)
	Note 14: Added 37 CFR § 2.120(k)(1); deleted 37 CFR § 2.118 and Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2007)
	Note 15: Added 37 CFR § 2.121(e) and Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)
	Added new Note 16 citing 37 CFR § 2.121(e)(3)
	Added new Note 17 citing 37 CFR § 2.121(e) and Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)
	Added new Note 23 citing 37 CFR § 2.121(a) and Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)
702.02	Added 37 CFR § 2.122(a) and updated section to reflect 2007 amendments
	Note 1: Added Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)
	Added new Note 2 citing 37 CFR § 2.122(a) and Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016); renumbered remaining notes
702.03	Updated section to reflect 2017 amendments
	Note 1: Added B&B Hardware, Inc. v. Hargis Industries, Inc.; deleted Fisher Gesellshaft and Litton Business Systems
	Notes 2 & 3: Added B&B Hardware, Inc. v. Hargis Industries, Inc.
	Note 4: Added 37 CFR § 2.123(a)(1)
	Added new Note 5 citing 37 CFR § 2.123(a)(1); renumbered remaining notes
	Note 7: updated 37 CFR § 2.123(k).
702.04	Updated section to reflect 2017 amendments
702.04(a)	Notes 1-4 & 7: Added Bond v. Taylor
702.04(b)	Added new Notes 1, 2 & 8 citing Bond v. Taylor; renumbered former notes
702.04(c)	Note 1: Added Daniel J. Quirk Inc. v. Village Car Company
	Note 2: Added Bond v. Taylor
702.04(d)	Updated section to reflect 2017 amendments
702.04(e)	Added 37 CFR § 2.123(b) and 37 CFR § 2.127(e)(2)
	Updated section to reflect 2017 amendments
	Note 1: Added 37 CFR § 2.123(b), Miscellaneous Changes to Trademark Trial and Appeal Board Rules, (2016), Noble House Home Furnishings, LLC v. Floorco Enters., and Ayoub , Inc. v. ACS Ayoub Carpet Serv.,
	Added new Note 2 citing 37 CFR § 2.127(e)(2) and Miscellaneous Changes to Trademark Trial and Appeal Board Rules, (2016)
702.05	Updated section to reflect 2017 amendments
	Deleted former Notes 4 & 5
	Added new Note 4 citing 37 CFR § 2.122(g) and Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)
	Renumbered former Note 6 to 5
	Added new Note 6 citing 37 CFR § 2.123(g)(3) and Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)
	Added new Note 7 citing Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)
703.01	Added "Affidavits, Declarations and" to title
703.01(a)	1st (new), 2nd and 3rd Paras: Added submission of trial testimony by affidavit or declaration, and cross-reference to TBMP § 704
703.01(a)	3rd Para: Added last sentence that any party may refer to evidence that is properly of record
703.01(a)	Notes 1-3: Added new Notes 1 and 3, and renumbered old Note 1 to new Note 2
703.01(a)	Note 1 (new): Added 37 CFR § 2.116(e), reference to NFRM, and B&B Hardware, Inc. v. Hargis Industries, Inc.
703.01(a)	Note 2: Changed 37 CFR § 2.123(k) to 37 CFR § 2.123(l)
703.01(a)	Note 3: Added 37 CFR § 2.122(a), reference to NFRM, and Nazon v. Ghiorse
703.01(b)	Amended text for 37 CFR § 2.123(a)(1), 37 CFR § 2.123(a)(2), and 37 CFR § 2.123(b)
703.01(b)	1st Para: Added submission of trial testimony by affidavit or declaration
703.01(b)	2nd Para (new): Added procedure to submit testimony by affidavit or declaration, including requirement to make witness available for cross-exam at expense of offering party
703.01(b)	3rd Para (new): Added overview of deposition on written questions and procedure to take deposition on written questions of witness in foreign country in another manner, and cross-references to TBMP § 404.03(b), TBMP § 520, TBMP § 531, and TBMP § 703.02
703.01(b)	4th Para: Changed "However" to "In addition," and deleted reference to five additional days for mailing
703.01(b)	5th and 6th Paras: Deleted old paragraphs concerning deposition on written questions
703.01(b)	7th Para: Deleted first sentence and revised second sentence to add parties may stipulate to any relevant facts in the case
703.01(b)	Notes 1-10 (old Notes 1-7): Added new Notes 1-6 and 8, deleted old Notes 1, 3-6 and renumbered old Notes 2 and 7
703.01(b)	Note 1 (new): Added 37 CFR § 2.123(a)(1) and § 2.123(a)(2) and reference to NFRM
703.01(b)	Note 2 (new): Added 37 CFR § 2.123(a) and reference to NFRM
703.01(b)	Note 3 (new): Added 37 CFR § 2.123(a)(1), B&B Hardware, Inc. v. Hargis Industries, Inc., and reference to NFRM
703.01(b)	Note 4 (new): Added 37 CFR § 2.123(a)(1)
703.01(b)	Note 5 (new): Added 37 CFR § 2.123(a)(1) and reference to NFRM
703.01(b)	Note 6 (new): Added 37 CFR § 2.123(a)(1) and 37 CFR § 2.124
703.01(b)	Note 7: Renumbered old Note 2 to new Note 7, changed 37 CFR § 2.123(a)(1) to 37 CFR § 2.23(a)(2), and moved case cites from old Note 4
703.01(b)	Note 8 (new): Added 37 CFR § 2.123(a)(2) and reference to NFRM
703.01(b)	Note 9: Moved case cites from old Note 2
703.01(b)	Note 10: Renumbered old Note 7 to new Note 10
703.01(c)	Added "Trial" in title and added text for 37 CFR § 2.121
703.01(c)	1st Para: Added "trial" to ‘testimony"
703.01(d)	Added "Oral Testimony" to "Deposition" in title, and updated text for 37 CFR § 2.123(a)(1) and 37 CFR § 2.123(c)
703.01(d)	1st Para: Clarified that a party may notice an oral testimony deposition upon direct exam for any reasonable time during the party’s testimony period, and added filing and service requirements of notice of election of cross-examination of an affiant or declarant
703.01(d)	2nd Para: Added "oral" and "oral testimony"
703.01(d)	3rd and 4th Paras: Added "testimony" to "deposition"
703.01(d)	Notes 1-7: Added new Note 2, and renumbered remaining old Notes 2-6 to new Notes 3-7
703.01(d)	Note 1: Added 37 CFR § 2.123(a)(1)
703.01(d)	Note 2 (new): Added 37 CFR § 2.123(c)
703.01(d)	Note 3: Changed 37 CFR § 2.121(a)(1) to 37 CFR § 2.121(a)
703.01(d)	Notes 4 and 6: Added 37 CFR § 2.123(a)
703.01(e)	Changed title from "Notice of Deposition" to "Notice of Oral Deposition and Notice of Election of Oral Cross-Examination of Affiant or Declarant"
703.01(e)	Added text for 37 CFR § 2.123(b) and updated text for 37 CFR 2.123(c)
703.01(e)	1st Para: Clarified that reasonable notice is required for oral testimony depositions upon direct examination
703.01(e)	2nd Para: Deleted 2nd sentence
703.01(e)	3rd Para: Moved para concerning notice-related objections and cross-references to 37 CFR § 2.123(e)(3) and TBMP § 533.02, and added cross-reference to TBMP § 707.03(b)(2)
703.01(e)	4th Para: Added "oral testimony" to "deposition"
703.01(e)	5th Para: Added "Unlike a deposition transcript" to first sentence, and "via ESTTA" to second sentence
703.01(e)	6th Para: Added procedure for oral cross-examination of affiant or declarant, and cross-reference to TBMP § 703.01(g)
703.01(e)	Notes 1-7: Added new Notes 6 and 7
703.01(e)	Note 2: Deleted Cf. to 37 CFR § 2.119(c) and reference to five additional days for mailing
703.01(e)	Note 3: Deleted Allstate Life Insurance Co. v. Cuna International, Inc.
703.01(e)	Note 4: Added 37 CFR § 2.123(a)(1)
703.01(e)	Note 6 (new): Added 37 CFR § 2.126(a) and 37 CFR § 2.126(b)
703.01(e)	Note 7 (new): Added 37 CFR § 2.123(c) and reference to NFRM
703.01(f)	Added "for Testimony Deposition" to title
703.01(f)	1st Para: Added "Please Note" limiting this section to testimony depositions, and cross-reference to TBMP § 703.01(b)
703.01(f)(3)	2nd Para: Added cross-reference to TBMP § 703.01(g)
703.01(g)	3rd Para: Added "U.S." to "Department of State" in middle of para
703.01(h)	Updated text for 37 CFR § 2.123(e) and its subsections including new subsections, and added text to 37 CFR § 2.123(g)
703.01(h)	1st Para: changed "testifying" to "providing oral testimony"
703.01(h)	2nd Para (new): Added testimony by affidavit or declaration must conform to FRE, both are under penalty of perjury and subject to 18 U.S.C. § 1001
703.01(h)	3rd Para: changed "testimony is taken stenographically" to "deposition testimony is recorded", and deleted obsolete last sentence
703.01(h)	4th Para: changed "videotape depositions" to "videotape testimony" and added requirement to submit all testimony via ESTTA
703.01(h)	7th Para: Added all parties must have chance to cross-examine the witness regardless of the form of direct testimony, and remedies for improper/inadequate notice of the witness and failure to disclose affiant or declarant. Also added cross-references to TBMP § 703.02 and 37 CFR § 2.121(e)
703.01(h)	10th Para: Added "affidavits and declarations"
703.01(h)	12th Para (new): Added cross-reference to TBMP § 703.01(g)
703.01(h)	Notes 1-13: Added new Notes 2, 4, 9, and 11, and renumbered old notes 1-9 to new Notes 1-13
703.01(h)	Note 2 (new): Added 28 U.S.C. 1746 and reference to NFRM
703.01(h)	Note 4 (new): Added reference to NFRM
703.01(h)	Note 9 (new): Added 37 CFR § 2.123(a)(1) and reference to NFRM
703.01(h)	Note 10: Added 37 CFR § 2.121(e) and reference to NFRM
703.01(h)	Note 11 (new): Added 37 CFR § 2.121(e)
703.01(h)	Note 13: Added 37 CFR § 2.123(a)(1)
703.01(i)	Added text for 37 CFR § 2.123(f)(2), updated text for 37 CFR § 2.123(g)(1) and 37 CFR § 2.123(g)(3), changed 37 CFR § 2.125(d) to 37 CFR § 2.125(e), updated text for 37 CFR § 2.126 and all subsections (including adding new subsections (a)(1) and (a)(2), and deleting old subsection (b))
703.01(i)	Substantially revised this section. Updated all paragraphs concerning filing requirements for depositions and exhibits, and all paragraphs concerning filing confidential information to conform to the amended rules
703.01(i)	Notes 1-13: Added new Notes 1, 2, 4-11, deleted old Notes 2-8, renumbered Notes 9-10, and moved text of old Note 11 to new Note 10

THROUGHOUT MANUAL

Updated to reflect amendments to the TTAB Rules of Practice that are effective Jan. 14, 2017.

Updated to reflect mandatory electronic filing throughout.

Updated to reflect increased and new fees in accordance with the Trademark Fee Adjustment, effective Jan. 14, 2017.

Spacing, punctuation and formatting corrections as needed for consistency.

Corrections to order of citations where appropriate in accordance with citation and manual protocols; pin point cites and parenthetical information added to cases brought forward from previous editions where appropriate.

Citations to McCarthy’s checked and year updated (2016). (McCarthy is referenced in Chapters 300 and 600).

Citations to Wright & Miller Federal Practice and Procedure (FPP) checked and year updated (2016). (Referenced in Chapters 300, 400, 500, 700).

Check, and update as necessary, the Trademark Rules of Practice, Federal Rules of Civil Procedure, Federal Rules of Evidence, Federal Circuit Rules, TMEP cross references; TBMP cross references

CHAPTER 100

THROUGHOUT CHAPTER

Reorganized subchapters as needed to emphasize mandatory ESTTA filing over paper filing. Reorganized and added footnotes as needed.

Added language to emphasize mandatory use of ESTTA and limited availability of paper filing.

Retained detailed subchapters discussing paper filings with added language throughout stressing that paper filing is only available in limited circumstances.

Noted that because Trademark Rule 2.119(c) has been amended to provide 20 days for response, extra five days previously available for taking action after service by mail is no longer available.

Emphasized that ex parte appeals may no longer be filed by facsimile (fax) transmission and that fax transmissions are not acceptable in filings before the Board. Deleted references to certificate of fax transmission.

101.02

Amend text of rule

101.03

3d para: clarifying language regarding Fed. Cir. precedent

Note 1: add statutory references

102.03

3d & 4th paras: clarifying and explanatory language added

New Note 7

104

Amend text of rule

Emphasized mandatory filing via ESTTA and encouraged filing via TEAS.

106.02

Amend text of rule 2.119(e)

106.03

Amend text of rule

Substantial revision and reorganization to emphasize mandatory filing via ESTTA.

107

Change title by substituting "Submissions" for "Papers"

Amend text of rule

Deletion of references to availability of filing by facsimile, emphasize ESTTA filing.

109

Deletion of references to availability of filing by facsimile.

110

Restructured to focus on electronic filing (ESTTA)

Former 110.09 et seq renumbered

111

Restructure: 111.01 focuses on PRIORITY MAIL EXPRESS®; 111.02 focuses on Certificate Of Mailing Procedures

111.02

New 111.02 - Former 110.01

Deletion of references to availability of filing by facsimile.

111.02(a)

New 111.02(a) – Former 110.02

Deletion of references to availability of filing by facsimile.

111.02(b)

New 111.02(b) – Former 110.03

Deletion of suggested format for certificate of transmission.

111.02(e)

New 111.02(e) – Former 110.06

Deletion of references to availability of filing by facsimile, emphasize ESTTA filing and stress limited availability of paper filing.

111.02(f)

New 111.02(f) – Former 110.07

Updated language regarding mandatory ESTTA filing of submissions related to Section 66(a) applications to track wording of Rules.

111.02(g)

New 111.02(g) – Former 110.08

Deletion of references to certificate of facsimile transmission.

112

Clarifying language

Note 1: changed signal for National Football League v. DNH Mgmt. LLC; add Please Note information

113

Amend text of rule

113.01

Change title by substituting "Submissions" for "Papers"

113.03

Amend text in suggested format for Certificate of Service

113.04

Emphasized requirement for service by email

Note 2: delete Musical Directions v. McHugh

New Note 3

113.05

Emphasized amendment of fifteen day response from date of service to twenty days, elimination of extra five days after service by mail

New Note 4

114

Amend text of rule

114.07

Amend text of rule 2.119(d)

115.02

Amend text of rules 2.193, 11.18, 11.20

115.03

Amend text of rule

117

Add subsection (c) for rule 2.18 and delete subsection (d)

Amend text of rule 2.119(d)

117.01

Delete Note 3; renumber remaining note

117.02

9th para: update with clarifying and explanatory language

117.07

Paras. 1-3: update with clarifying and explanatory language

New Note 1

118.02

Substantial revision of applicable Rule; add new rules about fees

New subsection 118.02(a)

New subsection 118.02(b); amend text of rules

118.03

Amend text of rule, restructure paragraphs and add clarifying language

118.04

Update system references; add clarifying language

119.02

Add clarifying language about electronic filing

119.03

Add clarifying and explanatory language

120.01

Re-written to reflect current retention practices

120.02

Add clarifying language; delete out-of-date information

120.03

Re-written to reflect current retention practices

121

Changes to reflect current retention practices

Delete Notes 3 & 4

CHAPTER 200

201

37 CFR §§ 2.101 & 2.102 updated;

3d para revised to reflect required ESTTA filing and exceptions

New notes 4 & 5

202.01

37 CFR §§ 2.102(c) & (d) updated

2d para: new to reflect required ESTTA filing, paper exceptions, and timeliness

Notes 2-6 contain updated content

Old Note 7 deleted

Former notes 8-12 renumbered as 7-11

202.03

Information about ESTTA added

202.04

Information about ESTTA added

203.01(a)

37 CFR §§ 2.102 & 2.126 updated

1st & 2d paras re-written

3d para: new

4th para: new sentence preceding Note 6.

New Note 6

Notes 7-9 renumbered

203.1(b)

1st para: new information on ESTTA

New note 2; remaining note renumbered

203.02(a)

1st para: information about ESTTA added

203.02(b)

1st para: information about ESTTA fields added

203.03

37 CFR § 2.102(a) updated

1st para: added information about required signature

New 3d para

203.04

Former Note 2 deleted; remaining notes renumbered

203.05

2d para rewrittedn; Note 1 deleted

204

Completely new information about new fees

205

2d para rewritten

206

37 CFR § 2.102 updated

206.01

2d para reworded

206.02

1st para reworded

206.03

2d para reworded

207

37 CFR§ 2.102(c) updated

207.03

5th para slightly reworded

6th para: new

208

1st para: clarifying language regarding ESTTA

2d & 3rd paras: slightly rewrittedn

209.02

New 1st, 5th, 6th paras; paras 7-9 modified to explain paper filings; last para on ESTTA filing deleted

210

Last para: new

211.01

Last para: new

212.05

Last para reworded to emphasize required ESTTA filing

217

Last para: new

CHAPTER 300

301.02

Add text to paragraph 1.

302

Amended rule excerpts 37 CFR §§ 2.101(a), 2.111(a) and 2.116(c) to reflect amended rules, delete text, paragraphs 1 and 2; deleted notes 2, 3, and 5; renumbered notes 4 and 6, to notes 2 and 3. Added new paragraph 6 and new note 5.

302.01

New subsection

303.05

Amended rule excerpts 37 CFR §§ 2.102(a) and 2.102(b) to reflect amended rules.

303.05(b)

Add pinpoint cite to Raker Paint Factory, note 3.

303.05(c)

Added pinpoint cite to Cass Logistics, note 1.

303.06

Note 1, amended rule cites to reflect renumbering.

304

Deleted text, paragraph 1. Added new note 3 with rule reference; renumbered note 3 as note 4.

305

Amended rule reference 37 CFR § 2.112(b) to reflect amended rule.

305.02

Deleted text from paragraph 1, created paragraph 2; deleted paragraph 4. Added new notes 3 and 4; renumbered note 3 as note 5.

306.01

Amended rule excerpts 37 CFR §§ 101(b)(1)-(3), and (4) to reflect rule amendments; text amended or deleted, paragraphs 2-6; new notes 2 and 5; renumbered notes 2-4 to notes 3, 4 and 6; renumbered notes 5-8 to notes 7-10; deleted note 9. Renumbered notes referencing rule reflect amendments, renumbered note 10, delete reference to Schott.

306.03

Amended paragraph 2.

306.04

Moved paragraph 2 and amended text. Amended text, paragraph 3 (now paragraph 2).

307

Amended rule excerpts to reflect rule amendments. 37 CFR §§ 2.111.

307.01

Amended text paragraph 3; new note 10; amended rule reference to note 9.

307.02(a)

Amended text paragraphs 7 and 8; old note 13 deleted, new notes 10 and 12, notes 10 and 11 renumbered as 11 and 13 and amended.

307.02(c)(3)

New subsection.

307.03

Amended text paragraph 2.

307.04

Amended text paragraph 2.

308.01(a)

Amended text rule excerpts 37 CFR § 2.101 to reflect rule amendments; amended text, paragraph 1; new note 2; notes 2 and 3 renumbered as note 4; note 3, added text.

308.01(b)

Amended or deleted text paragraphs 1, 3, and 4; added new note 3; renumbered note 3 and note 4 and note 4 as note 5. Notes 1 and renumbered note 5, rule references amended to reflect renumbering.

308.02(a)

Amended text of rule excerpts 37 CFR § 2.111 to reflect amended rules; text in paragraph 1 amended; note 2 added. Former note 2 renumbered as note 3. Notes 1 and 3, rule references amended to reflect renumbering.

308.02(b)

Amended text paragraph 1, 3 and 4; deleted note 4; added rule reference to notes 1 and 2; renumbered notes 5 and 6 as 4 and 5 to reflect deletion of note 4.

308.03

Added text to paragraph 1; added new note 4; notes 1 and 2 rule cites amended to reflect renumbering; note 3, added amended rule reference.

308.04

Added text, paragraph 1; notes 1 and 2, amended rules to reflect renumbering; note 3 added

308.05

Added text, paragraph 2; added new notes 4 and 5; renumbered note 4 as note 6;

309.01

Amended rule excerpt text, 37 CFR §§ 2.101(b), 2.111(b), 2.119(e) 2.126, and added 37 CFR §§ 2.111(c)(1) and (c)(2); amended text paragraph 1. Added new notes 1, 2, 3, 6 and 8. Renumbered note 1 as note 4, 2 as note 5, 3 as note 7; note 4 renumbered as note 9. Amended renumbered notes 1 (now 4), 2 (now 5), 3 (now 7) to reflect rules amendments. Added text

309.02

Amended text first and second paragraphs. New note 2; renumbered note 2 as note 3 and note 3 as note 4. Note 1, amended rules reflected and added; note 2 amended rules reflected and added; note 3 referenced 37 CFR § 2.111(c)(1); note 4 referenced 4. 37 CFR § 2.101(b)(3) and 37 CFR § 2.101(b)(2) and 37 CFR § 2.111(c)(2).

309.02(a)

Amended text, first paragraph, added new notes 1 and 2; paragraph 3, added new note 4; amended text, paragraph 3, renumbered notes 1 as not 3, renumbered notes 2-5 as notes 5-8. Renumbered note 3 added reference to notice of final rules, 2016; renumbered note 7, deleted reference to 37 CFR § 2.112(b). Added new notes 9-11 and new text under "Registrant information in petition to cancel."

309.02(b)

Note 3, added reference to notice of final rules, 2016.

309.02(c)

Paragraphs 1 and 2, text amended; note 1, rule renumbering reflected, deleted reference to notice of final rules, 2007; note 2, added references to rules 37 CFR § 2.105(a) and 37 CFR § 2.111(a); deleted reference to notice of final rules 2007, added reference to notice of final rules 2016.

309.02(c)(1)

37 CFR § 2.015 excerpt added to reflect rule change, 37 CFR § 2. 101 excerpt amended to reflect rule change; text in paragraphs 1 and 2 amended; paragraphs 3-8 deleted; paragraph 9 added, paragraph 10 text amended; paragraph 11 added text; note 1, amended rule to reflect renumbering; note 2, amended rule to reflect renumbering, reference to notice of final rules, 2016 added, delete notes 3-17; new note 3; note 18 renumbered as note 4, case reference deleted; notes 19-22 renumbered as notes 5-8.

309.02(c)(2)

Rule excerpt 37 CFR §§ 2.111 amended, 2.113 added to reflected amended rules; paragraphs 1 and 2 text amended; please note amended; paragraphs 3-7 deleted; paragraph 8 added, paragraph 9 amended; paragraph 10 added; note 2 amended to reflect rule renumbering, reference to notice of final rules, 2016; note 3, added, note 3 renumbered as note 4, case reference and rule reference deleted, reference to notice of final rules, 2016 added; notes 4-20 deleted; notes 21-24 renumbered as notes 5-8.

309.03

Added reference to 37 CFR § 2.104(a) which was missing from quoted rule excerpt; amended text in rule excerpt 37 CFR § 2.112(a) to reflect amended rule

309.03(a)(1)

Added 37 CFR § 2.104(c) to notes 3 & 4; added reference to Final Rule, 2016

309.03(a)(2)

Added Wise F&I, LLC v. Allstate Ins. Co, Note 6.

309.03(b)

Note 9, added case cite Ayoub Inc.

309.03(c)

Note 30, added Omega SA (Omega AG) (Omega Ltd. case); Note 48, amended rule to reflect renumbering. Note 27, added Noble House Home Furnishings LLC; Note 33, added case cite Daniel Quirk, Inc. Note 35, added case cite, NH Beach Pizza LLC; added case cite, Chutter Inc.

309.03(d)

Note 19, amended rule to reflect renumbering.

309.04

Added new first paragraph; added new paragraph 7, amended paragraph 3-6, added new paragraphs 8 and 9, amended paragraphs 10-12; New note 1, rule cite; added rule cite to note 2; new note 3, rule cite; note 4, added rule cite.

310.01

Amended excerpts of rules to conform to amendments; amended or added wording to paragraphs 1 through 8 (para 8 is now para 9); new paragraph 5; Note 1, renumbered rule to reflect amendment, note 2 and 4, added Research in Motion and Liberty & Co., added new notes 7, 8, 9, 12 and 13; renumbered notes 7-16, now 7-21; added final rules references to renumbered notes 11 and 14.

310.02

Amended excerpts of rules to conform to amendments, amended text paragraph 1 and 2; Note 1, added reference to 2016 and 2007 Final Rules.

310.03(a)

Amended excerpts of rules to conform to amendments; amended text in paragraphs 1, 2 and 3.

310.03(b)

Deleted section due to elimination of 5 day addition for 2.119. Reserved.

310.03(c)

Added rule excerpt . 37 CFR § 2.126. Paragraph 2 deleted text; paragraph 3, added text; new note 2.

311.01

Amended rule excerpt to reflect amendments; amended paragraph 2 added reference to 37 CFR § 2.106(b)(1) and 37 CFR § 2.114(b)(1); note 2 amended rule reference to reflect renumbering.

311.01(a)

Amended first paragraph.

311.01(b)

Moved second paragraph to position of third paragraph; amended text in paragraph 1, paragraph 3 (former paragraph 2); paragraph 4. Notes 2 and 3 are now renumbered as notes 3 and 4; note 4 is now renumbered as note 2; renumbered note 3, added reference to 2016 final rules notice.

311.01(c)

Added quotations of excerpts of 37 CFR § 2.106(b) and 37 CFR § 2.114 and 37 CFR § 2.119; split paragraph 1 into paragraphs 1 and 2, added new text. Added new notes 1, 2, 4, 5 and 6. Renumbered note 1 as note 3 and added additional reference to 37 CFR § 2.119(b).

311.02

Amended references to 37 CFR § 2.106(b) and 37 CFR § 2.114(b), to reflect amended text and renumbering. Added paragraph under this section and notes 1 and 2. Reference to TBMP § 311.02(a)

311.02(a)

Amended references to 37 CFR § 2.106(b) and 37 CFR § 2.114(b), notes 1 and 2 to reflect renumbering of amended rules

311.02 (b)

Amended references to 37 CFR § 2.106(b) and 37 CFR § 2.114(b) paragraph 10, notes 1, 2, 16, and 21 to reflect renumbering of amended rules; added reference to Hornby v. TJX Companies Inc. note 2; added NH Beach Pizza LLC and Urock Network, LLC, and Stephen Slesinger Inc. note 2.

311.02(c)

Added reference to Omega SA (Omega AG) (Omega Ltd.) v. Alpha Phi Omega, note 1.

311.03

Note 1, renumbered 37 CFR § 2.106(b) and 37 CFR § 2.114(b) references to reflect renumbering in amended rules.

312

312.01

Amend text of rules 37 CFR § 2.106(a) and 37 CFR § 2.114(a) to conform to amended rule; amended paragraph 4 to reflect rule change regarding service; new paragraph 5, with new notes 5 and 6; "Please note" paragraph to reflect amended rules 37 CFR § 2.106(a) and 37 CFR § 2.114(a); notes 5 and 6 renumbered as notes 7 and 8; renumbered note 5 (now note 6) amended to conform to amended rules 37 CFR § 2.106(a) and 37 CFR § 2.114(a), to add a Federal Register reference. Added to note 8, reference to 37 CFR § 2.106(b)(3)(iv).

313.01

Amended text of rules 37 CFR § 2.106(b)(3) and 37 CFR § 2.114(b)(3) to conform to amended rules and renumbering; amended paragraph 2 text to conform to rule renumbering; added text paragraph 6; amended notes 1, 11 and 13 to conform to rule renumbering; added 37 CFR §§ 2.106 and 2.114 reference to note 12.

313.02

Amended text of rules 37 CFR § 2.106(b)(3)(iii) and 37 CFR § 2.114(b)(3)(iii) to conform to amended rules; added excerpt of 37 CFR § 2.111(d); amended paragraph 2 to reflect rule amendments; added new notes 3 and 4; amended note 1 to reflect rule renumbering and added citation to rule 37 CFR § 2.111(d); amended note 2 to reflect rule renumbering.

313.03

Added rule reference 37 CFR § 2.119 before text. Deleted text paragraph 2; deleted note 1; renumbered notes 2 through 5 as 1 through 4; note 4 added Ashland Licensing & Intellectual Property LLC v. Sunpoint International Group USA Corp.; reworded parenthetical note 4.

313.04

Amended text of rules 37 CFR § 2.106(b)(3)(i) and 37 CFR § 2.114(b)(3)(i) to reflect amendment and rule numbers (to reflect renumbering); amended text paragraph 1; added new paragraph 5 and new note 7. Amended notes 1 and 6 (now note 7) to reflect renumbering of rules. Added new note 4, renumbered notes 4-7 as 5-8

313.05

Amended paragraph to reflect rule change; amended note 2 to reflect amended rule and renumbering; amended note 1 to reflect rule renumbering. Added text after Note 2. Added new notes 3 and 4. Added reference to TBMP § 313.03.

313.06

Amended excerpted text of rules, 37 CFR §§ 2.106(b) and 2.114(a)-(b); added additional excerpts of rules, 37 CFR §§ 2.106(a), 2.106(b)(3)(iv), 2.114(b)(3)(iv), amendments also reflect rule renumbering; amended text in paragraph 1.

314

Amended paragraph 4 to conform to wording in amended rules 37 CFR §§ 2.107(a)-(b). Added Omega SA (Omega AG) (Omega Ltd.) v. Alpha Phi Omega, note 5.

315

Amended text of rule 37 CFR §§ 2.107(a)-(b) to conform to amended rule; amended paragraph 1 to conform to amended rule 37 CFR §§ 2.107(a)-(b). Note 2, added reference to 2016 final rules notice; note 3, added parenthetical to Drive Trademark Holdings, added Syngenta Crop Protection as reference, added reference to 2016 final rules notice; notes 4, 5 and 6 added reference to 37 CFR § 2.107(b) and reference to 2016 final rules notice.

316

Amended text in "Please Note" paragraph to conform to amended rule 37 CFR § 2.127(d); added 37 CFR § 2.127(d) reference to note 2.

317

Amended text of rules 37 CFR § 2.122(c) and 37 CFR § 2.122(d) to conform to amended rule; amended third and fourth paragraphs to conform to wording in amended rule 37 CFR § 2.122(d).

Note 6 added Chutter Inc. v. Great Concepts.

CHAPTER 400

401

Amended text of rule 37 CFR § 2.120(a)(1) to conform to amended rule; amended note 2 to reflect rule renumbering.

401.01

Amended text of rule 37 CFR § 2.120(a)(1) and 37 CFR § 2.120(a)(2)(i) to conform to amended rules; amended text and footnotes to reflect rule renumbering; amended text regarding the preferred procedure for requesting Board participation in the parties’ discovery conference; added citations in notes 2, 4, and 11.

401.02

Amended text and footnotes to reflect rule renumbering; amended text in paragraph 8 regarding the timing of a motion to compel initial disclosures; add citations in notes 9, 10, 14, 16, and 17.

401.03

Amended text and numbering of rule 37 CFR § 2.120(a)(2)(iii) to conform to amended rule; amended text and footnotes to reflect rule renumbering; amended text in paragraph 1, 5, and 7 to reflect rule changes; add citations in notes 3, 13, 18, 25, 28, 29, and 30.

401.04

Amended text and numbering of rule 37 CFR § 2.120(a)(2)(iv) to conform to amended rule; amended text and footnotes to reflect rule renumbering; amended text in paragraph 1 to reflect rule change that expert disclosure deadline must always be scheduled prior to the close of the discovery period; add citations in notes 2, 4, and 6.

401.05

No changes.

401.06

Amended text and footnotes to reflect rule renumbering; amended text in paragraph 2 and note 6 to reflect rule change; add citations in notes 1 and 3.

402.01

Amended to add reference to 37 C.F.R. §2.120(a)(1); amended text and footnotes to reflect rule renumbering; added citations notes 1–3, 5, 7, 9, and 10.

402.02

Amended n.2 to revise order of cited authorities; amended n. 4 to conform to current rules; added citation in n. 11.

403.01

Amended text and numbering of rule 37 C.F.R. § 2.120(a), including subparts, to conform to amended rule; amended text in paragraphs 1–3 to reflect rule changes; amended footnotes to reflect rules renumbering; added citations to notes 3–4 and 6–8.

403.02

Amended text of rule 37 C.F.R. § 2.120(a)(3) to conform to amended rule; amended text in paragraph 1; amended text in n.1 to reflect rules changes; amended to add citations to notes 5 and 6.

403.03

Amended text of rule 37 C.F.R. § 2.120(a)(3) to conform to amended rule; amended text in paragraphs 1–2 and 3–4; amended notes to reflect rules renumbering; amended cites in notes 1–4.

403.04

Amended text and numbering of 37 C.F.R. § 2.120(a)(2)(iv) to conform to amended rule; amended text and numbering of 37 C.F.R. § 2.120(a)(3) to conform to amended rule; amended text of 37 C.F.R. § 2.121(d) to conform to amended rule; amended text to conform to amended rules; amended notes to reflect rules renumbering; amended cites in notes 1, 3, 5, 6, 8.

403.05(a)

Amended text to conform to amended rules.

403.05(b)

Amended text and numbering of 37 C.F.R. § 2.120(i); 37 C.F.R. § 2.122(g); and 37 C.F.R. § 2.120(k)(3)(ii) to conform to amended rules; amended text of 37 C.F.R. § 2.122(e) to conform to amended rule; amended text to conform to amended rules; amended citations in n.1 and n.3.

404.01

Amended text and n.1

404.02

Amended text of Fed. R. Civ. P. 30(a).

404.03(a)

Amended text to conform to rule changes. Amended punctuation in n.1.

404.03(b)

Amended text of 37 C.F.R. § 2.120(c). Amended text in paragraph 3.

404.03(c)(2)

Amended Black’s Law Dictionary cite in paragraph 2. Amended text of paragraphs 5 and 7. Amended website in paragraph 9. Amended cites in n.5 and n.6. Amended text in n.8

404.03(d)

Amended text of 37 C.F.R. § 2.120(c)(2). Amended text in paragraph 2 to reflect rule changes. Added n.3.

404.04

Amended text of Fed. R. Civ. P. 28. Amended cite in n.2.

404.05

Amended text of 37 C.F.R. § 2.124(b)(2). Amended text of paragraph 3 to reflect rule changes. Added citation of 37 C.F.R. § 2.120(a)(3) in n.8.

404.06(a)

Amended citation in n.2.

404.06(b)

Amended citation in n.2, n.3, and n.5. Amended text of n.5

404.06(d)

Amended text of Fed. R. Civ. P. 30(a).

404.07(b)

Amended text of 37 C.F.R. § 2.120(a)(3).

404.07(d)

Amended text of 37 C.F.R. 2.124(b)(2), 2.124(d)(1). Added 37 C.F.R. 2.124(d)(3).

404.07(e)

Amended text of 37 C.F.R. § 2.124(d)(1). Added 37 C.F.R. § 2.124(d)(3). Amended text throughout to reflect rule changes. Amended n.1 and n.2. Added n. 6.

404.07(f)

Amended text of 37 C.F.R. § 2.124(d)(1). Added 37 C.F.R. § 2.124(d)(3).

404.07(i)

Amended text of 37 C.F.R. § 2.124(f). Amended text in paragraph 2 to reflect change in 37 C.F.R. § 2.120. Amended citation in n.3.

404.07(j)

Amended citation in n.1.

404.08(c)

Amended text of Fed. R. Civ. P. 30(c) and 32(d). Amended text in paragraph 4 to reflect change in 37 C.F.R. § 2.120. Amended citations in n. 6.

404.09

Amended citations in n.2, n.9, n.13, and n.15.

405.01

Amended text and n.2 to reflect changes in 37 C.F.R. § 2.120; added n.2 and amended citation in n.3.

405.03(a)

Amended text and numbering of 37 C.F.R. § 2.120(d); added n.2.

405.03(b)

Amended numbering of 37 C.F.R. § 2.120(d).

405.03(c)

Amended numbering of 37 C.F.R. § 2.120(d).

405.03(d)

Amended numbering of 37 C.F.R. § 2.120(d).

405.03(e)

Amended text and numbering of 37 C.F.R. § 2.120(d); amended text to reflect renumbering of rules and to conform with amended rules; amended notes to reflect renumbering of rules; amend citation in n.5 to add 37 C.F.R. § 2.120(a)(3).

405.04(a)

Amended text to reflect changes in 37 CFR § 2.120(a)(3) and 37 CFR § 2.119(b)(1) – 37 CFR § 2.119(b)(4); amended citations in notes 1–4.

405.04(b)

Amended text and n.2 to reflect renumbering of rules.

406.01

Amended text to conform with amended 37 CFR § 2.120(a)(3); amended citations in n.2 and n.4.

406.03

Amended citations in n.1.

406.04

Amended text to reflect current practice; added citation in n.2.

406.04(a)

Amended text in paragraph 1 and 2 to conform to amended rules; amended citations in notes 1–5.

406.04(b)

Amended text and numbering of 37 C.F.R. § 2.120(e) to reflect amended rule; amended text in paragraph 1 to conform to amended 37 C.F.R. § 2.120(e); amended text in paragraph 2 to reflect renumbering of rule; amended citations in notes 1–3 and 5–6.

406.04(c)

Amended text in paragraph 1 to conform reflect current practice in view of 2015 amendment of the Federal Rules of Civil Procedure; amend citations in n.2, n.4, and n.9.

406.05

Added section 406.05 (§§ 406.05(a) – 406.05(e)), addressing limitations on number of requests for production of documents in things under amended 37 C.F.R. § 2.120(e).

407.01

Amended text to conform to amended 37 C.F.R. § 2.120(a)(3) and 37 C.F.R. § 2.120(i); amended citations in notes 1–3.

407.02

Amended text and citations to reflect current precedent and practice.

407.03(a)

Amended text in paragraph 1 and 2 to conform to amended rules; amended citations in notes 1–5.

407.03(b)

Deleted text to conform to amended rules.

407.05

Added section 407.05 (§§ 407.05(a) – 407.05(e)), addressing limitations on number of requests for admission under amended 37 C.F.R. § 2.120(i).

408.01

Added and amended case citations in n.1; added new case Emilio Pucci International BV v. Sachdev to n.1. Amended case citations in n.2.

408.01(a)

Amended text to reflect changes in 37 C.F.R. § 2.120. Added citations to n.2 and n.7. Amended citation in n.5. Added n. 9.

408.01(b)

Amended Fed. R. Civ. P. 26(a) and 37 C.F.R. 2.120(a)(2)(ii). Amended text. Amended n.1, n.2, and n.6. Added n.10, renumbered remaining endnotes.

408.01(c)

Amended Fed. R. Civ. P. 26(g)(1) and 37 C.F.R. 2.120(f)(1). Amended text in paragraph 4. Amended n.6 and n.7 to reflect changes in 37 C.F.R. § 2.120.

408.02

Amended citation in n.5.

408.03

Amended Fed. R. Civ. P. 26(e). Amended text in paragraphs 1 and 3 to correct citations. Amended citation in n.5.

409

Amended citations to 37 C.F.R. § 2.120. Amended n.1 and n.5 to reflect amendment to 37 C.F.R. 2.120.

410

Amended text in paragraphs 2, 3, 5, 6 and 8 of text to reflect changes in 37 C.F.R. § 2.120. Added citation to TBMP § 526 in paragraph 4 of text. Added citation to Emilio Pucci International BV v. Sachdev in n.7. Added n. 9, renumbered remaining endnotes. Amended citations in n.10, n.12, and n.13.

411.01

Amended text and all endnotes to reflect changes in 37 C.F.R. § 2.120.

411.02

Amended all endnotes to reflect changes in 37 C.F.R. § 2.120.

411.03

Amended n.2 to reflect changes in 37 C.F.R. § 2.120.

411.04

Amended n.1 and n.3 to reflect changes in 37 C.F.R. § 2.120.

411.05

Amended text, n.1, and n.4 to reflect changes in 37 C.F.R. § 2.120. Amended citation in n.1.

412

Amended text of 37 C.F.R. §§ 2.116(g) and 2.120(g), excerpts from the Board’s Standard Protective Order, and Fed R. Civ. P. 26(c)(1). Amended citation to 37 C.F.R. 2.120(g) in text to reflect changes in 37 C.F.R. § 2.120.

412.01

Amended paragraph 1 to delete reference to cases commenced prior to August 31, 2007. Amended paragraph 6, n.11 and n.13 to reflect changes in 37 C.F.R. § 2.120. Amended parenthetical in citation in paragraph 16 in view of changes in 37 C.F.R. § 2.120.

412.01(a)

Amended text of 37 C.F.R. § 2.116(g). Amended citation to 37 C.F.R. § 2.120(g) to reflect changes in 37 C.F.R. § 2.120. Amended citation to 37 C.F.R. § 2.125(f) to reflect changes in 37 C.F.R. § 2.125. Amended Fed. R. Civ. P. 26(c) and (g). Amended text in paragraphs 1, 9, and 10. Amended citations in n.4, n.6, n.11, n.14, n.15, and n.19. Added citations in n.6 (Ayoub , Inc. v. ACS Ayoub Carpet Service), n.10 (Standard Protective Order), n.11 (Standard Protective Order), n.13 (Noble House Home Furnishings, LLC v. Floorco Enterprises, LLC), n.14 (Emilio Pucci International BV v. Sachdev), and n.20 (Duke University v. Haggar Clothing Co.).

412.01(b)

Amended text of 37 C.F.R. § 2.116(g). Corrected typographical error in n.4. Edited parenthetical in n.5. Amended citation to 37 C.F.R. § 2.120(f)(1) in n.6 to reflect changes in 37 C.F.R. § 2.120. Amended citation in n.8 and n.16. Added citation in n.11.

412.01(c)

Amended text of excerpts from the Board’s Standard Protective Order and 37 C.F.R. § 2.116(g). Added citations to paragraph 6, and added citation to Noble House Home Furnishings, LLC v. Floorco Enterprises, LLC, to n.1, n.4, n.6, n.7, n.12, n.13, n.15. Added citation to Duke University v. Haggar Clothing Co. to n.9. Amended citation in n.2, n.6, and n.7.

412.02

Amended citation. Added citation.

412.02(c)

Amended text in paragraph 2.

412.02(d)

Moved text from paragraph 13 to 12. Amended new paragraph 12 and n.1.

412.04

Amended text of 37 C.F.R. § 2.126(c), excerpts from the Board’s Standard Protective Order, text of paragraphs 1 and 3. Added citation to Ayoub , Inc. v. ACS Ayoub Carpet Service to n.5. Added n.6, renumbered n.7 and n.8.

412.05

Amended heading

412.06

Amended text of 37 C.F.R. § 2.120(g) and Fed. R. Civ. P. 26(c)(1). Amended text of paragraph 1 to reflect changes in 37 C.F.R. § 2.120. Added text to paragraph 4. Amended parenthetical in n.1 and citations in n.2 and n.5. Added citation to Emilio Pucci International BV v. Sachdev in nn.6 & 7. Added n.7.

412.06(a)

Amended text of paragraph 2. Amended citations in n.1, n.2, and n.4.

412.06(b)

Added text to paragraph 1. Amended text to paragraph 2. Added citation to Emilio Pucci International BV v. Sachdev to n.1 and n.2. Added n.4 and n.7. Added citations to Wisconsin Cheese Group, LLC v. Comercializadora de Lacteos y Derivados S.A. de C.V. & Emilio Pucci International BV v. Sachdev to n. 7, Renumbered and amended parentheticals to n.5 and n.6.

413.01

Amended text to 37 C.F.R. § 2.120(j)(1) and 2.127(a) and paragraphs 1 and 2. Added citation to n.1. Added n.4. Renumbered n.5.

413.02

Amended text to 37 C.F.R. § 2.120(j)(2). Added text to paragraph 1. Added n.2 and n.3.

414

Added quotations of Fed. R. Civ. P. 26(b)(1) and 37 C.F.R. § 2.120(a) and numbered paragraph 25. Amended text of paragraph 1 and numbered paragraph 7. Amended citations in n.2, n.4, n.5, n.13, n.14, n.17, n.19, n.22, and n.24 through n.27. Amended parentheticals in n.11. Added case citations to Domond v. 37.37, Inc. to n.2 and n.14; to Mack Trucks, Inc. v. Monroe Auto Equip. Co. to n.33; to Emilio Pucci International BV v. Sachdev, Wisconsin Cheese Group, LLC v. Comercializadora de Lacteos y Derivados S.A. de C.V., Domond v.37.37, Inc., The Phillies v. Philadelphia Consolidated Holding Corp., Frito-Lay N. Am. Inc. v. Princeton Vanguard LLC to n. 34; to Domond v. 37.37, Inc. to n. 35. Added n.33 through n.35.

CHAPTER 500

Table of Contents

Added requests for production and requests for admission to section 519 title; added "in foreign country" to section 531 title

501.01

Added reference to requests for production; added cite to rule 2.120(e); clarified reference to facts in the case; deleted reference to affidavit testimony; updated rule cite in Note 1; deleted Note 3; renumbered remaining Notes; added subsequent history to Frito-Lay North America, Inc. case in Note 5

501.02

Amended text of rules 2.120(a)(2)(iv) and 2.121(d); Note 1 amended cite to rule 2.120(a)(2)(iv)

501.03

Added that motion should state all parties agree to new dates.

502.01

Clarified that Board does not preside at oral testimony; added rule 2.132(b) to exception of entertaining motion relating to evidence before trial; Note 1 amended cite to rule 2.125(d)

502.02

Amended text of rules 2.126, 2.127(a), and 2.127(e)(1)

502.02(a)

Amended wording to explain mandatory filing via ESTTA, rare exceptions when paper filing may be permitted, and service by email; Added new Notes 3 and 4; renumbered subsequent Notes

502.02(b)

Amended responsive brief time to 20 days; deleted all parenthetical references to five extra days under rule 2.119(c); amended cite to rule in Note 5; added cite to 2017 rules change in Note 5; deleted reference to email service from Note 9

502.02(c)

Deleted reference to 2007 rules change; clarified that standard protective order is in place for all cases unless Board approves alternative order; emphasized filing via ESTTA and rare exception thereto; clarified that public copy must be submitted concurrently with confidential copy; amended reference to rule 2.126(c); added cite to Edwards Lifesciences Corp. in Note 4

502.03

Deleted "issue or"

502.04

Amended text of rule 2.127(c); added briefs in opposition must be "acceptable"; explained Board need not address every argument; added paralegal or ESTTA may act on motions; added caption should fully contemplate all motions incorporated in filing; added filing of request for reconsideration or petition will not usually result in suspension; added cite to Promgirl Inc. in Note 2; added Note 3; renumbered remaining Notes; added cite to rule 2.121(a) in Note 5

502.05

Amended cite to rules 2.120(g) and 2.120(h)(1)

502.06(a)

Amended cite and text of rule 2.120(j)(1); amended text of rule 2.127(a); new cite to rule 2.191; small word and word order changes to clarify explanation; added cross-reference to TBMP § 401.01; deleted reference to suspension for requests for reconsideration and petitions; amended cite to 2.120(j)(1) in Note 1; added cites to Spier Wines (PTY) Ltd. and Byer California in Note 2; added cite to Sunrider Corp. in Note 3; added cite to rule 2.126(a) in Note 6; added Note 7

502.06(b)

Amended cite and text of rule 2.120(j)(2); clarified how Board may direct parties to appear; amended cite to rule 2.120(j)(2) in Note 1; deleted subsequent history of Blackhorse from Notes 1 and 2; added cite to 2017 rules change to Note 2

503.01

Minor punctuation changes

503.02

Minor punctuation changes

503.03

Added timely amended complaint will moot motion to dismiss; deleted reference to correcting defects; deleted subsection cite to federal rule in Note 1; added cite to Wise F&I, LLC in Note 3

503.04

Deleted references to 2007 rules change; deleted references to different treatment of pre-2007 rules cases in Notes 2 and 3; added cite to Chutter , Inc. in Note 4

504.01

Added submission of evidence as part of trial; explained requirement of pretrial disclosure and deadline for motion for judgment on pleadings; added Note 3; renumbered subsequent Notes; added cite to 2017 rules change in Note 4

504.03

Deleted references to 2007 rules change; deleted references to different treatment of pre-2007 rules cases in Note 1; added cite to Chutter , Inc. in Note 3

506.01

Clarified that matter "usually" will not be stricken; added cite to Finanz St. Honore , B.V. in Notes 2 and 7

506.02

Minor punctuation and word changes for clarity; deleted parenthetical reference to five extra days under rule 2.119(c); added Board may strike "claim"

506.03

Deleted cite to rules 2.105(c) and 2.113(c); added cite to federal rule 10(c)

507.01

Amended text of federal rule 15(b)(2) and rules 2.107(a) and (b); added explanation that joint opposer may not be added after time to oppose closes, neither may goods, services, nor joint opposer be added to opposition to application filed under Section 66(a); added scope of goods, services, and grounds limited to those listed on ESTTA cover sheet for opposition to application filed under Section 66(a); added named opposers limited to those on ESTTA cover sheet for opposition to application filed under Section 66(a); added Note 7; renumbered subsequent Notes

507.02

Fixed faulty parallelism; added amended pleading should be so captioned; added joint opposer may not be added after time to oppose closes for application filed under Section 66(a);

added cite to Embarcadero Technologies, Inc. in Notes 3 and 4; added cite to Noble House Home Furnishings, LLC in Notes 4 and 5; added cite to Ashland Licensing & Intellectual Prop. LLC in Note 5

507.02(a)

Added cite to Ashland Licensing & Intellectual Prop. LLC in Note 1

507.02(b)

Amended cite to rules 2.106(b)(3)(i) and 2.114(b)(3)(i)

507.03(b)

Added cite to Noble House Home Furnishings, LLC in Note 3; added subsequent history to Productos Lacteos Tocumbo S.A. de C.V. cite in Notes 3 and 4

508

Clarified that answer should be filed concurrently with motion to accept late answer; added failure to file a timely answer tolls all deadlines; added cite to Finanz St. Honore , B.V. in Note 1; added cite to rules 2.106(a) and 2.114(a), and deleted cite to 2007 rules change in Note 4

509

Amended text of federal rule 6(b)(2); added subsections to rule 2.120(a); amended text of rules 2.120(a), 2.121, and 2.127(a)

509.01

Amended text of rule 2.127(a) and 2.127(e)(1), and deleted reference to former federal rule 56(f) in Note 1

509.01(a)

Minor word changes for clarity; deleted 5th paragraph; update subsection of rule 2.120(a)(2)(iv) in Note 5; deleted Note 6; renumbered subsequent Note

509.01(b)(1)

Added motion must be filed via ESTTA; added cite to FirstHealth of the Carolinas Inc. in Note 3

509.02

added caption should fully contemplate all motions incorporated in filing; added explanation that extension of time to respond to discovery beyond close of discovery period will not be granted since discovery must be completed during discovery period; added motions must be filed via ESTTA; minor changes explaining how to file via ESTTA;

added cite to Boston Red Sox Baseball Club LP and deleted cite to 2007 rules change in Note 1; added Note 2; renumbered subsequent Notes; added cite to rule 2.117(c) in Note 5; added cite to rules 2.120(a)(2(iv) and 2.121(a)(3) in Note 10; added subsection cite to rule 2.145(e)(2) in Note 12

510

Amended text of rules 2.117(c), 2.120(e)(2), and 2.127(d); updated subsection of rule 2.120(f)(2);

510.02(a)

Added explanation that policy to suspend in favor of civil action has not changed; deleted wording that Board decision may not be binding on a court; clarified language on filing motions via ESTTA; added cite to B&B Hardware, Inc. in Note 2; deleted "binding or" from explanatory note to New Orleans Louisiana Saints LLC in Note 2; added cite to Birlinn Ltd. in Note 13;

510.02(b)

Added Note 1

510.03(a)

Deleted reference to 2007 rules change; added discovery and trial activities to list of events for which Board will not suspend indefinitely; added duty to cooperate in discovery; added automatic suspension when timely potentially dispositive motion filed; added filing of such motion may not provide good cause for failing to comply with an otherwise outstanding obligation; amended rule 2.120(f)(2) subsection; added parties need not make pretrial disclosures when motion to compel filed after close of discovery; deleted cite to 2007 rules change in Note 3; added cite to rule 2.117(c) and Guthy-Renker Corp. in Note 4; added Note 7; renumbered subsequent Notes 8 and 9; added cite to 2017 rules change in newly numbered Note 9; deleted former Note 9; deleted Super Bakery Inc. cite in Note 10; clarified explanatory note to Super Bakery Inc. in Note 11; amended rule 2.120(f)(2) subsection in Note 14

510.03(b)

Amended "when" to "after" suspension period expires; added "and that party so informs the Board" of self-representation; minor punctuation changes

511

Minor punctuation changes; deleted reference to 2007 rules change; added cite to Wise F&I, LLC in Note 1; added cite to Wisconsin Cheese Group, LLC and shortened explanatory note to Dating DNA LLC in Note 5; added cite to Omega SA (Omega AG) (Omega Ltd.) in Note 10

512.01

Minor word and punctuation changes; added first TMEP cite and both TMEP section titles in Note 6; added final TMEP cite and deleted penultimate TMEP section title in Note 7; updated rule 2.113(c)(1) subsection in Note 9; updated rule 3.71(d) subsection in Notes 9 and 10; added TMEP sections in Note 11; added cite to Turner and shortened explanatory note to Hamilton Burr Publishing Co. in Note 13; added cite to rules 2.107(a) and (b) in Note 14

512.02

Added location where name change documents are recorded; added cite to Spirits International B.V. in Note 1

512.03

Minor punctuation change; added final TMEP cite in Notes 6 and 7

512.04

Amended heading of federal rule 15(a)(1)

513.01

Amended text of rule 2.19(b); minor word changes; added former cite to requirements for withdrawing as an attorney prior to May 3, 2013; added cite to University Games Corp. in Notes 1 and 5; added cite to TMEP in Note 2

513.02

Added "Note 1" to 1st paragraph; deleted orphan "Note 2" from 2nd paragraph; deleted "for signature by the Chief Administrative Judge"

514

Added heading for rule 2.133; added text of subsection (d) of rule 2.133

514.01

Substituted reference to likelihood of confusion with "grounds for opposition"; renumbered list of requirements in 2nd paragraph; minor word changes for clarity; added cite to Wisconsin Cheese Group, LLC in Note 3; added Notes 5 and 7; renumbered subsequent Notes; deleted cite to subsections of rules 2.71 and 2.173 in Note 6; added cite to rule 2.176 in Note 16

514.02

Added 2nd paragraph and Note 2

514.03

Added cite to Wisconsin Cheese Group, LLC in Notes 1 and 3; added cite to Johnson & Johnson and Drive Trademark Holdings LLC in Note 3; added Note 4; renumbered subsequent Notes; added cite to ProQuest Information and Learning Co. in Note 6; added cite to Southwestern Management, Inc. in Note 7

515

Amended text of rules 2.130 and 2.131; minor word and punctuation changes; added cite to rule 7.25 and deleted cite to rule 2.131 in Note 5

517

Deleted "even if timely filed"; added cite to DaimlerChrysler Corp. in Note 4; added cite to rule 2.127(a) in Note 6

518

Amended text of rule 2.127(b); amended responsive brief time to 20 days; deleted parenthetical reference to five extra days under rule 2.119(c); added paralegal or ESTTA may act on motions; deleted and moved order of some wording in 5th paragraph for brevity and clarity; added cite to Guess? IP Holder LP in Note 1

519

Added requests for production and requests for admission to section title and throughout body; deleted final subsection reference to rule 2.120(d)(1); added rule 2.120(d) header; added text of and citation to rules 2.120(e) and 2.120(i); amended general references from "interrogatories" to "written discovery"; added cross-references to TBMP §§ 406.05 and 407.05; added cite to 2017 rules change in Note 2

520

Amended text of rules 2.120(c)(1) and 2.123(a)(2); minor deletions for clarity; added testimonial deposition in foreign country may be taken by affidavit subject to cross-examination upon written questions

521

2nd para: fixed faulty parallelism; added clarifying language regarding examples of grounds for moving to quash a deposition.

521

Note 2: Corrected signals for case citations.

521

Note 10: Added citation to 37 CFR § 2.121(e).

522

Revise language of 37 CFR § 2.120(e) (formerly (d)(2)) and changed subsection references

522

Note 3: fixed formatting.

523

Revise language of 37 CFR § 2.120(f) (formerly (e)) and changed subsection references throughout.

523.01

4th para: changed deadline for filing motion to compel

523.01

5th para: revised to address new deadlines for filing motion to compel

523.01

Notes 1 and 4: added subsequent history to Neville Chemical Co. v. Lubrizol Corp., 183 USPQ 184 (TTAB 1974) citation.

523.01

Note 7: Added quote from 2.120(f)(2)

523.01

Note 7: deleting cases where holdings related to former deadlines for filing motion to compel

523.02

4th para: add language to state motion to compel available for failure to produce documents, ESI, or tangible things; add cross-reference to TBMP 406.03(e).

523.03

1st and 2nd paras: changed deadlines for filing motions to compel

523.03

2nd para: delete section stating that 2.196 does not apply.

523.03

Note 5: Add "Please Note: The deadlines for filing motions to compel were changed in the January 14, 2017 revisions to 37 C.F.R. § 2.120(e) renumbered as § 2.120(f). Prior Board decisions may cite to former deadlines no longer applicable in inter partes proceedings."

523.03

Note 6: Add "To be clear, if the deadline for pretrial disclosures was reset after the deadline was past, a motion to compel would be untimely."

523.04

Note 1: add subsequent history to citation for British Seagull Ltd. v. Brunswick Corp., 28 USPQ2d 1197 (TTAB 1993) (universal).

524

Revise language of 2.120(i) (formerly (h)) and change subsection references throughout.

524.03

1st para: change deadlines for filing a motion to test the sufficiency of responses to requests for admission; delete section stating that 2.196 does not apply.

524.03

Note 2: Add "To be clear, if the deadline for pretrial disclosures was reset after the deadline was past, a motion to compel would be untimely."

Add "Please Note: The deadlines for filing motions to test the sufficiency were changed in the January 14, 2017 revisions to 37 C.F.R. § 2.120. Prior Board decisions may cite to former deadlines no longer applicable in inter partes proceedings."

526

Revise language of 2.120(g) (formerly (f)) and change subsection references throughout.

526

Para 3: add language to indicate motion for protective order also applies to requests for production or requests for admission that exceed the limitations; add cross reference to TBMP 406.05(e) and 407.05(e).

526

7th para: delete reference to Board’s standard protective order.

527

Revise language of 2.120(h) (formerly (g)) and change references to subsections throughout.

527

Note 4: Add "Please Note: as part of general restyling, effective January 14, 2017, former 37 CFR § 2.120(g)(1) is now 37 CFR § 2.120(h)(1)."

527

Note 11: Add reference to 2.120(h)(2).

527.01(c)

1st para: add reference to 403.03.

527.03

3rd para: add language to reflect service of a petition to cancel on TTABVUE.

527.03

Change "interlocutory attorney" to "attorney."

528.01

11th para: revise deadline for seeking judicial review of a decision.

528.01

Notes 9 and 13: Add Omega SA (Omega AG) (Omega Ltd.) v. Alpha Phi Omega, 118 USPQ2d 1289, 1299 (TTAB 2016).

528.02

Revise 2.127(e)(1) and change deadlines for filing motion for summary judgment throughout.

528.02

5th para: change deadlines for filing briefs; add that time for reply brief will not be reopened.

528.02

Note 2: Add NH Beach Pizza LLC v. Cristy’s Pizza Inc., 119 USPQ 1861, 1862 n.1 (TTAB 2016).

528.02

Notes 4, 5, 8: delete case citations discussing inapplicable deadlines

528.03

Revise language of 2.127(d)

528.03

1st para: Change language to reflect suspension on summary judgment; delete "Notwithstanding, the Board has found that the filing of a motion for summary judgment does not provide a party good cause not to timely comply with a Board order granting discovery sanctions which required the service of complete discovery responses" and corresponding Note 2.

528.04

Note 1: Add NH Beach Pizza LLC v. Cristy’s Pizza inc., 119 USPQ 1861, 1862 n.1 (TTAB 2016) and delete references referring to old rules.

528.05(a)(1)

Add Note 6 to add Omega SA (Omega AG) (Omega Ltd.) v. Alpha Phi Omega, 118 USPQ2d 1289, 1291 n.2 (TTAB 2016).

528.05(a)(1)

Note 12: insert subsequent history for Frito-Lay N. America, Inc. v. Princeton Vanguard, LLC, 109 USPQ2d 1949, 1951 (TTAB 2014).

528.05(a)(2)

1st para: delete reference to 2007 revisions.

528.05(a)(2)

2nd para: insert language to state parties may stipulate to "introduction of evidence by affidavit or declaration without cross-examination."

528.05(a)(2)

Notes 1 and 2: Add Bond v. Taylor, 119 USPQ2d 1049, 1051 (TTAB 2016).

528.05(b)

5th para: delete reference to flash drive for submission of evidence and provide explanation.

528.05(c)

Revise language of 2.127(e)(2) and 2.120(k)(8) (formerly (j)) and change references to subsections throughout.

528.05(d)

Revise language of 2.122(d)(1).

528.05(e)

Revise language of 2.122(e)

528.05(e)

Note 6: Add reference to 2.122(a)(2) and fix signal.

528.05(e)

Note 7: change signal.

528.06

Revise language of 2.127(e)(1) and delete references to prior version language.

528.06

6th para: Add that time to file a motion under 56(d) will not be reopened.

528.07(a)

Note 1: Add Omega SA (Omega AG) (Omega Ltd.) v. Alpha Phi Omega, 118 USPQ2d 1289, 1291 n.2, 1292 (TTAB 2016).

529

Revise language of 2.120(k) (formerly (j)) and change subsection references throughout.

529

5th para: change language to state that a motion must be filed when a party makes its pretrial disclosures.

530

Add Note 1 to add Mini Melts, Inc. v. Teckitt Benckiser LLC, 118 USPQ2d 1464, 1467 n.4 (TTAB 2016).

531

Revise language of 2.123(a)(1) and (a)(2).

531

Delete paras. 1 and 2 and add: "Testimonial depositions taken in a foreign country shall be taken by deposition upon written questions. [Note 1.] The Board may, depending upon the particular facts and circumstances in each case, upon motion for good cause, order that the deposition be taken by oral examination or by affidavit or declaration. Testimony in a foreign country may be taken or by affidavit or declaration (subject to the right of any adverse party to elect to take and bear the expense of cross-examination by written questions of that witness). [Note 2.]

A party served with a notice of the taking of a testimonial deposition upon written questions of a witness who is, or will be at the time of the deposition, present in the United States or any territory which is under the control and jurisdiction of the United States, may file within twenty days from the date of service of the notice a motion with the Board showing good cause for an order that the deposition be taken on oral examination. [Note 3.]"

531

Note 2: delete inapplicable case citations.

532

Note 2: Add reference to 2.122(g).

533.01

Revise language of 2.121(a)

533.02(a)

Revise language of 2.123(c) and (e)(3).

533.02(a)

1st para: Add: "When testimony is presented by affidavit or declaration, but was not covered by an earlier pretrial disclosure, the remedy is the prompt filing of a motion to strike" and corresponding Note 2 citing 2.121(e) and TBMP 533.02(b).

533.02(a)

Para. 3: minor language changes.

533.02(b)

Revise language of 2.121(e) and 2.123(e)(3).

533.02(b)

1st para: minor language change.

533.02(b)

4th para: Add "When testimony is presented by affidavit or declaration, but was not covered by an earlier pretrial disclosure, the remedy is the prompt filing of a motion to strike" and corresponding citation to 2.121(e), 2.123(e) and TBMP 533.02(b).

534

Revise language of 2.132.

534

1st para: Add "When a party has not taken testimony or offered any other evidence the Board may grant judgment for the defendant sua sponte" and corresponding note to Miscellaneous Changes to Trademark Trial and Appeal Board Rules.

534

Change standard to excusable neglect and change time for filing motions throughout.

534

Note 5: Add "37 CFR § 2.132(a). The 2017 amendments to 37 CFR § 2.132(a) changed the terminology in the applicable standard from "good and sufficient cause" to "excusable neglect." See Miscellaneous Changes to Trademark Trial and Appeal Board Rules, 81 Fed. Reg. 69950, 69968 (2016) ("The Office is further amending §2.132(a) to clarify that the standard for the showing required not to render judgment dismissing the case is excusable neglect.") Consequently, cases determined before the amendments went into effect may use the earlier terminology, e.g., "good and sufficient cause" but they remain authoritative."

535

Revise language of 2.134(b).

536

Revise language of 2.128(a)(3).

537

Revise language of 2.128(b)

539

Note 3: Add citation to 2.128(b).

540

Add Note 3 with citation to 2.129(a).

541

Revise language to reflect new procedures for scheduling hearing dates.

543

Revise language of 2.129(c)

543

Change dates for filing briefs and deadline for filing civil action.

544

Note 2: Change parenthetical explaining Pioneer Investment Services Co. v. Brunswich Associates Ltd. Partnership et al., 507 U.S. 380 (1993) holding.

CHAPTER 600

601.01

3d para: update language to reflect electronic environment

601.02

Updated heading and text of 37 CFR § 2.114(c) to reflect 2017 amendment to the rule adding counterclaims

601.03

Added counterclaimant

602.01

Added new Note 8 regarding mandatory use of ESTTA; renumbered former Notes 8-17

602.02(a)

Added new Note 15 regarding mandatory use of ESTTA; renumbered former Notes 15 and 16

602.02(b)

Updated section and text of 37 CFR § 2.134(b) to reflect 2017 amendment

Note 10: Added Cf. Harry Winston, Inc. v. Bruce Winston Gem Corp.

603

Added new Note 4 regarding mandatory use of ESTTA; renumbered former Notes 4-7

605.01

Added new Note 1

605.02

Added 37 CFR § 2.117(c)

Added new Notes 1 and 2; renumbered remaining notes

605.03(b)

Added new Note 1 regarding mandatory use of ESTTA; renumbered remaining notes

CHAPTER 700

Table of Contents

Revised titles for 703.01, 703.01(c)-703.01(f), and 703.01(k)-703.01(o) to add references to affidavits, declarations, trial testimony, oral testimony and notice of election of cross-examination of affiant or declarant

701

Updated section and 37 CFR § 2.116(b) and 37 CFR § 2.121 to reflect 2017 amendments

Notes 7, 8 & 9: Added Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)

Note 10: Deleted case law citation and replaced with 37 CFR § 2.121(a) and Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)

Note 11: Added 37 CFR § 2.1116(e) and Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)

Added new Note 12 citing 37 CFR § 2.121(a)

Added new Note 13 citing 37 CFR § 2.116(f)

Added new paragraph and new Note 14 citing 37 CFR § 2.132(a) and Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)

702

Updated 37 CFR § 2.121 and 37 CFR § 2.123(e)(3) to reflect 2017 amendments

702.01

Updated to reflect 2017 amendments

Notes 1 & 4: Deleted Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2007)

Note 10: Added 37 CFR § 2.121(e) and 37 CFR § 2.123(e)(3); deleted Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2007)

Note 13: Added 37 CFR § 2.121(e); deleted 37 CFR § 2.118 and Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2007)

Note 14: Added 37 CFR § 2.120(k)(1); deleted 37 CFR § 2.118 and Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2007)

Note 15: Added 37 CFR § 2.121(e) and Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)

Added new Note 16 citing 37 CFR § 2.121(e)(3)

Added new Note 17 citing 37 CFR § 2.121(e) and Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)

Added new Note 23 citing 37 CFR § 2.121(a) and Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)

702.02

Added 37 CFR § 2.122(a) and updated section to reflect 2007 amendments

Note 1: Added Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)

Added new Note 2 citing 37 CFR § 2.122(a) and Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016); renumbered remaining notes

702.03

Updated section to reflect 2017 amendments

Note 1: Added B&B Hardware, Inc. v. Hargis Industries, Inc.; deleted Fisher Gesellshaft and Litton Business Systems

Notes 2 & 3: Added B&B Hardware, Inc. v. Hargis Industries, Inc.

Note 4: Added 37 CFR § 2.123(a)(1)

Added new Note 5 citing 37 CFR § 2.123(a)(1); renumbered remaining notes

Note 7: updated 37 CFR § 2.123(k).

702.04

Updated section to reflect 2017 amendments

702.04(a)

Notes 1-4 & 7: Added Bond v. Taylor

702.04(b)

Added new Notes 1, 2 & 8 citing Bond v. Taylor; renumbered former notes

702.04(c)

Note 1: Added Daniel J. Quirk Inc. v. Village Car Company

Note 2: Added Bond v. Taylor

702.04(d)

Updated section to reflect 2017 amendments

702.04(e)

Added 37 CFR § 2.123(b) and 37 CFR § 2.127(e)(2)

Updated section to reflect 2017 amendments

Note 1: Added 37 CFR § 2.123(b), Miscellaneous Changes to Trademark Trial and Appeal Board Rules, (2016), Noble House Home Furnishings, LLC v. Floorco Enters., and Ayoub , Inc. v. ACS Ayoub Carpet Serv.,

Added new Note 2 citing 37 CFR § 2.127(e)(2) and Miscellaneous Changes to Trademark Trial and Appeal Board Rules, (2016)

702.05

Updated section to reflect 2017 amendments

Deleted former Notes 4 & 5

Added new Note 4 citing 37 CFR § 2.122(g) and Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)

Renumbered former Note 6 to 5

Added new Note 6 citing 37 CFR § 2.123(g)(3) and Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)

Added new Note 7 citing Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)

703.01

Added "Affidavits, Declarations and" to title

703.01(a)

1st (new), 2nd and 3rd Paras: Added submission of trial testimony by affidavit or declaration, and cross-reference to TBMP § 704

703.01(a)

3rd Para: Added last sentence that any party may refer to evidence that is properly of record

703.01(a)

Notes 1-3: Added new Notes 1 and 3, and renumbered old Note 1 to new Note 2

703.01(a)

Note 1 (new): Added 37 CFR § 2.116(e), reference to NFRM, and B&B Hardware, Inc. v. Hargis Industries, Inc.

703.01(a)

Note 2: Changed 37 CFR § 2.123(k) to 37 CFR § 2.123(l)

703.01(a)

Note 3: Added 37 CFR § 2.122(a), reference to NFRM, and Nazon v. Ghiorse

703.01(b)

Amended text for 37 CFR § 2.123(a)(1), 37 CFR § 2.123(a)(2), and 37 CFR § 2.123(b)

703.01(b)

1st Para: Added submission of trial testimony by affidavit or declaration

703.01(b)

2nd Para (new): Added procedure to submit testimony by affidavit or declaration, including requirement to make witness available for cross-exam at expense of offering party

703.01(b)

3rd Para (new): Added overview of deposition on written questions and procedure to take deposition on written questions of witness in foreign country in another manner, and cross-references to TBMP § 404.03(b), TBMP § 520, TBMP § 531, and TBMP § 703.02

703.01(b)

4th Para: Changed "However" to "In addition," and deleted reference to five additional days for mailing

703.01(b)

5th and 6th Paras: Deleted old paragraphs concerning deposition on written questions

703.01(b)

7th Para: Deleted first sentence and revised second sentence to add parties may stipulate to any relevant facts in the case

703.01(b)

Notes 1-10 (old Notes 1-7): Added new Notes 1-6 and 8, deleted old Notes 1, 3-6 and renumbered old Notes 2 and 7

703.01(b)

Note 1 (new): Added 37 CFR § 2.123(a)(1) and § 2.123(a)(2) and reference to NFRM

703.01(b)

Note 2 (new): Added 37 CFR § 2.123(a) and reference to NFRM

703.01(b)

Note 3 (new): Added 37 CFR § 2.123(a)(1), B&B Hardware, Inc. v. Hargis Industries, Inc., and reference to NFRM

703.01(b)

Note 4 (new): Added 37 CFR § 2.123(a)(1)

703.01(b)

Note 5 (new): Added 37 CFR § 2.123(a)(1) and reference to NFRM

703.01(b)

Note 6 (new): Added 37 CFR § 2.123(a)(1) and 37 CFR § 2.124

703.01(b)

Note 7: Renumbered old Note 2 to new Note 7, changed 37 CFR § 2.123(a)(1) to 37 CFR § 2.23(a)(2), and moved case cites from old Note 4

703.01(b)

Note 8 (new): Added 37 CFR § 2.123(a)(2) and reference to NFRM

703.01(b)

Note 9: Moved case cites from old Note 2

703.01(b)

Note 10: Renumbered old Note 7 to new Note 10

703.01(c)

Added "Trial" in title and added text for 37 CFR § 2.121

703.01(c)

1st Para: Added "trial" to ‘testimony"

703.01(d)

Added "Oral Testimony" to "Deposition" in title, and updated text for 37 CFR § 2.123(a)(1) and 37 CFR § 2.123(c)

703.01(d)

1st Para: Clarified that a party may notice an oral testimony deposition upon direct exam for any reasonable time during the party’s testimony period, and added filing and service requirements of notice of election of cross-examination of an affiant or declarant

703.01(d)

2nd Para: Added "oral" and "oral testimony"

703.01(d)

3rd and 4th Paras: Added "testimony" to "deposition"

703.01(d)

Notes 1-7: Added new Note 2, and renumbered remaining old Notes 2-6 to new Notes 3-7

703.01(d)

Note 1: Added 37 CFR § 2.123(a)(1)

703.01(d)

Note 2 (new): Added 37 CFR § 2.123(c)

703.01(d)

Note 3: Changed 37 CFR § 2.121(a)(1) to 37 CFR § 2.121(a)

703.01(d)

Notes 4 and 6: Added 37 CFR § 2.123(a)

703.01(e)

Changed title from "Notice of Deposition" to "Notice of Oral Deposition and Notice of Election of Oral Cross-Examination of Affiant or Declarant"

703.01(e)

Added text for 37 CFR § 2.123(b) and updated text for 37 CFR 2.123(c)

703.01(e)

1st Para: Clarified that reasonable notice is required for oral testimony depositions upon direct examination

703.01(e)

2nd Para: Deleted 2nd sentence

703.01(e)

3rd Para: Moved para concerning notice-related objections and cross-references to 37 CFR § 2.123(e)(3) and TBMP § 533.02, and added cross-reference to TBMP § 707.03(b)(2)

703.01(e)

4th Para: Added "oral testimony" to "deposition"

703.01(e)

5th Para: Added "Unlike a deposition transcript" to first sentence, and "via ESTTA" to second sentence

703.01(e)

6th Para: Added procedure for oral cross-examination of affiant or declarant, and cross-reference to TBMP § 703.01(g)

703.01(e)

Notes 1-7: Added new Notes 6 and 7

703.01(e)

Note 2: Deleted Cf. to 37 CFR § 2.119(c) and reference to five additional days for mailing

703.01(e)

Note 3: Deleted Allstate Life Insurance Co. v. Cuna International, Inc.

703.01(e)

Note 4: Added 37 CFR § 2.123(a)(1)

703.01(e)

Note 6 (new): Added 37 CFR § 2.126(a) and 37 CFR § 2.126(b)

703.01(e)

Note 7 (new): Added 37 CFR § 2.123(c) and reference to NFRM

703.01(f)

Added "for Testimony Deposition" to title

703.01(f)

1st Para: Added "Please Note" limiting this section to testimony depositions, and cross-reference to TBMP § 703.01(b)

703.01(f)(3)

2nd Para: Added cross-reference to TBMP § 703.01(g)

703.01(g)

3rd Para: Added "U.S." to "Department of State" in middle of para

703.01(h)

Updated text for 37 CFR § 2.123(e) and its subsections including new subsections, and added text to 37 CFR § 2.123(g)

703.01(h)

1st Para: changed "testifying" to "providing oral testimony"

703.01(h)

2nd Para (new): Added testimony by affidavit or declaration must conform to FRE, both are under penalty of perjury and subject to 18 U.S.C. § 1001

703.01(h)

3rd Para: changed "testimony is taken stenographically" to "deposition testimony is recorded", and deleted obsolete last sentence

703.01(h)

4th Para: changed "videotape depositions" to "videotape testimony" and added requirement to submit all testimony via ESTTA

703.01(h)

7th Para: Added all parties must have chance to cross-examine the witness regardless of the form of direct testimony, and remedies for improper/inadequate notice of the witness and failure to disclose affiant or declarant. Also added cross-references to TBMP § 703.02 and 37 CFR § 2.121(e)

703.01(h)

10th Para: Added "affidavits and declarations"

703.01(h)

12th Para (new): Added cross-reference to TBMP § 703.01(g)

703.01(h)

Notes 1-13: Added new Notes 2, 4, 9, and 11, and renumbered old notes 1-9 to new Notes 1-13

703.01(h)

Note 2 (new): Added 28 U.S.C. 1746 and reference to NFRM

703.01(h)

Note 4 (new): Added reference to NFRM

703.01(h)

Note 9 (new): Added 37 CFR § 2.123(a)(1) and reference to NFRM

703.01(h)

Note 10: Added 37 CFR § 2.121(e) and reference to NFRM

703.01(h)

Note 11 (new): Added 37 CFR § 2.121(e)

703.01(h)

Note 13: Added 37 CFR § 2.123(a)(1)

703.01(i)

Added text for 37 CFR § 2.123(f)(2), updated text for 37 CFR § 2.123(g)(1) and 37 CFR § 2.123(g)(3), changed 37 CFR § 2.125(d) to 37 CFR § 2.125(e), updated text for 37 CFR § 2.126 and all subsections (including adding new subsections (a)(1) and (a)(2), and deleting old subsection (b))

703.01(i)

Substantially revised this section. Updated all paragraphs concerning filing requirements for depositions and exhibits, and all paragraphs concerning filing confidential information to conform to the amended rules

703.01(i)

Notes 1-13: Added new Notes 1, 2, 4-11, deleted old Notes 2-8, renumbered Notes 9-10, and moved text of old Note 11 to new Note 10

703.01(i)

Note 1 (new): Added 37 CFR § 2.126(a) and 37 CFR § 2.126(b)

703.01(i)

Note 2 (new): Added reference to NFRM

703.01(i)

Note 3 (old Note 1): changed 37 CFR §2.123(g) to subsection 37 CFR § 2.123(g), deleted 37 CFR § 2.126

703.01(i)

Note 4 (new): Added reference to NFRM, deleted 37 CFR § 2.126

703.01(i)

Note 5 (new): Added 37 CFR § 2.126(a), 37 CFR § 2.126(a)(1) and 37 CFR § 2.126(b)

703.01(i)

Note 6 (new): Added 37 CFR § 2.126(a)(1), reference to NFRM, Weider Publications, LLC v. D&D Beauty Care Co., added "See also" signal to Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V. (which was moved from old Note 8), and updated status of that case, also moved Rocket Trademarks Pty. Ltd. v. Phard S.p.A. from old Note 8

703.01(i)

Note 7 (new): Added 37 CFR §2.126(a)(2), Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., and Rocket Trademarks Pty. Ltd. v. Phard S.p.A. (both cases were moved from old Note 8)

703.01(i)

Note 8 (new): Added 37 CFR § 2.123(g)(1)

703.01(i)

Note 9 (new): Added 37 CFR § 2.126(a)(1)

703.01(i)

Note 10 (new): Added 37 CFR § 2.123(g)(2), and Tampa Rico Inc. v. Puros Indios Cigars Inc., and Pass & Seymour, Inc. v. Syrelec (both cases were moved from old Note 11)

703.01(i)

Note 11 (new): Added 37 CFR § 2.123(g)(3)

703.01(i)

Note 12 (old Note 9): updated case cite

Note 13 (old Note 10): Added 37 CFR § 2.126(a)(2) and NFRM, and updated signal to Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc. (changed from "See" to "see also")

703.01(j)

Updated text for 37 CFR § 2.123(e)(5)

703.01(j)

1st Para: Added "oral" and "transcript"

703.01(k)

Changed "Deposition" to "Trial Testimony" in title, and updated text for 37 CFR § 2.123(f) and 37 CFR § 2.125 (including adding new subsection (a) and changing former subsections (a) and (c) to new subsections (b) and (d), respectively)

703.01(k)

1st Para: Updated language regarding certification and filing of deposition transcript with exhibits, and added requirement to submit all depositions and exhibits via ESTTA unless nature of exhibit precludes electronic transmission (e.g., CDs or DVDs)

703.01(k)

2nd Para: Deleted first sentence, changed "forward" and "forwarded" to "file" and "filed," respectively, in second sentence, and added "filed" in third sentence

703.01(k)

3rd Para (new): Added paragraph about filing and serving affidavit or declaration testimony

703.01(k)

4th Para: Added "service of trial testimony and the" and "affidavit, declaration or"

703.01(k)

Notes 1-8: Added Notes 2 and 8, and renumbered old Notes 1-6 to new Notes 1-8

703.01(k)

Note 1: Added 37 CFR § 2.123(f)(2), changed 37 CFR § 2.125(c) to 37 CFR § 2.125(d) and added parenthetical "formerly 37 CFR § 2.125(c)". Also added "Please Note" encouraging filing exhibits attached to affidavit or declaration testimony in same form as exhibits attached to depositions, and added reference to NFRM

703.01(k)

Note 2 (new): Added 37 CFR § 2.123(f)(2) and reference to NFRM

703.01(k)

Note 3 (old Note 2): Added "Notice of Final Rulemaking" and parenthetical "now 37 CFR § 2.125(d)"

703.01(k)

Note 4 (old Note 3): Added "Notice of Final Rulemaking" and parenthetical "now 37 CFR § 2.125(d)", changed 37 CFR § 2.125(c) to 37 CFR § 2.125(d), and added parenthetical "formerly 37 CFR § 2.125(c)"

703.01(k)

Note 6 (old Note 5): Changed 37 CFR § 2.125(c) to 37 CFR § 2.125(d) and added parenthetical "formerly 37 CFR § 2.125(c)"

703.01(k)

Note 7 (old Note 6): Changed 37 CFR § 2.125(a) to 37 CFR § 2.125(b) and added parenthetical "formerly 37 CFR § 2.125(a)"

703.01(k)

Note 8 (new): Added 37 CFR § 2.123(a)(1) and 37 CFR § 2.125(a), and reference to NFRM

703.01(l)

Changed "Testimony Deposition" to "Trial Testimony" in title, updated text of 37 CFR § 2.123(h), and added text of 37 CFR § 2.125(a)

703.01(l)

2nd Para (new): Added filing and service requirements for affidavit or declaration testimony

703.01(l)

3rd Para (new): Added cross-reference to TBMP § 703.01(l)

703.01(l)

Note 3 (new): Added 37 CFR § 2.123, 37 CFR § 2.125(a), and reference to NFRM

703.01(m)

Changed "Deposition" to "Trial Testimony" in title, added text for new 37 CFR § 2.125(a) and updated text for renumbered 37 CFR § 2.125(b)

703.01(m)

1st Para (new): Added filing and service requirements for affidavit or declaration testimony

703.01(m)

2nd Para: changed "trial testimony" to "a testimony deposition"

703.01(m)

3rd Para: changed "transcript" to "testimony affidavit, declaration or deposition" and added 37 CFR § 2.125(b) in first sentence, and added "testimony affidavit, declaration or deposition" twice in second sentence

703.01(m)

4th Para: changed 37 CFR § 2.125(a) to 37 CFR § 2.125(b)

703.01(m)

Notes 1-5: Added new Note 1 and renumbered remaining Notes

703.01(m)

Note 1 (new): Added 37 CFR § 2.123(a)(1), 37 CFR § 2.125(a), and reference to NFRM

703.01(m)

Notes 2 and 4: (old Notes 1 and 3): Changed 37 CFR § 2.125(a) to 37 CFR § 2.125(b) and added parenthetical "formerly 37 CFR § 2.125(a)"

703.01(m)

Note 5 (old Note 4): Added reference to NFRM

703.01(n)

Added "Trial Testimony" to title, and changed 37 CFR § 2.125(b) to 37 CFR § 2.125(c)

703.01(n)

Notes 1 and 3: Changed 37 CFR § 2.125(b) to 37 CFR § 2.125(c) and added parenthetical "formerly 37 CFR § 2.125(b)"

703.01(o)

Added "Affidavits, Declarations and" to title and 1st Para

703.01(p)

Updated text for 37 CFR § 2.116(g), changed 37 CFR § 2.125(e) to 37 CFR § 2.125(f) and updated text (including changing reference to § 2.120(g) to § 2.120(h)), and updated text for 37 CFR § 2.126(c)

703.01(p)

Added "Please Note" referencing typo in 37 CFR § 2.126(c)

703.01(p)

This section was substantially revised to conform to the amended rules and to delete repetitive and/or outdated language

703.01(p)

Notes: Substantially revised and renumbered all Notes

703.01(p)

Note 1 (new): Added 37 CFR § 2.27(d), Ayoub , Inc. and Ayoub Supply, LLC v. ACS Ayoub Carpet Service, and Harjo v. Pro-Football, Inc.

703.01(p)

Note 2 (new): Added 37 CFR § 2.116(g), 37 CFR § 2.126(c), reference to NFRM, and Couch/ Braunsdorf Affinity, Inc. v. 12 Interactive, LLC. Moved Blackhorse v. Pro-Football Inc., Edwards Lifesciences Corp. v. VigiLanz Corp., Bass Pro Trademarks LLC v. Sportsman’s Warehouse Inc., and General Motors Corp. v. Aristide & Co., Antiquaire de Marques from old Note 7

703.01(p)

Note 3 (new): Added 37 CFR § 2.125(f), added parenthetical "formerly 37 CFR § 2.125(e), and moved ProMark Brands Inc. v. GFA Brands, Inc. from old Note 1

703.01(p)

Note 4 (new): Added 37 CFR § 2.126(c), Ayoub , Inc. and Ayoub Supply, LLC v. ACS Ayoub Carpet Service, Turdin v. Trilobite, Ltd., Duke University v. Haggar Clothing Inc., and Fiserv, Inc. v. Electronic Transaction Systems Corp.

703.01(p)

Note 5 (new): Moved General Mills Inc. v. Fage Dairy Processing Industry SA from old Note 3

703.01(p)

Note 7 (new): Added Mini Melts, Inc. v. Reckitt Benckiser LLC

703.01(p)

Note 8 (new): Added 37 CFR § 2.126(b) and reference to NFRM

703.01(p)

Note 9 (new): Added 37 CFR § 2.116(g)

703.02(a)

Updated text for 37 CFR § 2.123(a)(1), 37 CFR § 2.123(a)(2), and 37 CFR § 2.123(b)

703.02(a)

1st Para: Added that testimony ordinarily also may be taken by affidavit or declaration, but that testimony taken in a foreign country must be taken by deposition on written questions except under certain circumstances, and cross-reference to TBMP § 703.01(b)

703.02(a)

2nd Para: Changed "However" to "In addition," changed time to file motion to take deposition in a foreign country by oral examination from 15 to 20 days and deleted parenthetical regarding five additional days. Replaced second sentence with case-by-case determination of good cause. Added cross-reference to TBMP § 531

703.02(a)

Notes 1-4: Deleted old Note 3, added new Notes 2 and 4, and renumbered old Notes 1-3 to new Notes 1-4

703.02(a)

Note 1: Added 37 CFR § 2.123(a)(2)

703.02(a)

Note 2 (new): Added 37 CFR § 2.123(a)(2), 37 CFR § 2.120(c)(1), Jain v. Ramparts Inc., and Orion Group Inc. v. Orion Insurance Co.

703.02(a)

Note 3 (old Note 2): Changed 37 CFR § 2.123(a)(1) to 37 CFR § 2.123(a)(2) and added parenthetical "formerly 37 CFR § 2.123(a)(1)", added reference to NFRM, added Century 21 Real Estate Corp. v. Century Life of America, and Feed Flavors Inc. v. Kemin Industries, Inc.

703.02(a)

Note 4 (new): Added Feed Flavors Inc. v. Kemin Industries, Inc.,

703.02(c)

Updated text for 37 CFR § 2.121 and added 37 CFR § 2.124(b)(3)

703.02(c)

1st Para: Added "trial"

703.02(c)

3rd Para (new): Added service and filing requirements for party seeking cross-examination by written questions of a witness who has provided affidavit or declaration testimony

703.02(c)

Added new Note 3 and renumbered old Notes 1-3 to new Notes 1-4

703.02(c)

Note 1: Changed 37 CFR § 2.121(a)(1) to 37 CFR § 2.121(a), and added Fossil Inc. v. Fossil Group and Of Counsel Inc. v. Strictly of Counsel Chartered, and Cf. to Of Counsel Inc. v. Strictly of Counsel Chartered

703.02(c)

Note 3 (new): Added 37 CFR § 2.124(b)(3), reference to NFRM, and Cf. to 37 CFR § 2.124(d)(1)

703.02(d)

1st Para: Added party who offered affidavit or declaration testimony may attend cross-examination on written questions, and added redirect questions to list in parenthetical

703.02(e)

Added text for 37 CFR § 2.124(b)(3) and updated text for 37 CFR § 2.124(d)(1)

703.02(e)

2nd Para (new): Added filing and service requirements of notice of cross-examination by written questions of an affiant or declarant

703.02(e)

Notes 1-7: Added new Notes 4-6 and renumbered old Notes 1-3 to new Notes 1-7

703.02(e)

Note 4 (new): Added 37 CFR § 2.124(b)(3), reference to NFRM, and Cf. to 37 CFR § 2.124(d)(1)

703.02(e)

Note 5 (new): Added 37 CFR § 2.124(c) and 37 CFR § 2.124(d)(1)

703.02(e)

Note 6 (new): Added 37 CFR § 2.124(b)(3) and reference to NFRM

703.02(f)

1st Para: Added requirement to make affiant or declarant available for cross examination, and cross-reference to TBMP § 703.01(b)

703.02(g)

Added text for 37 CFR § 2.124(b)(3) and 37 CFR § 2.124(d)(3), and updated text for 37 CFR § 2.124(d)(1)

703.02(g)

3rd Para (new): Added filing and service requirements of notice of cross-examination by written questions of an affiant or declarant

703.02(g)

4th Para: Added "of taking direct testimony" to first sentence, updated timing of service of cross and redirect questions throughout para, and clarifies that this section applies to cross and redirect questions of an affiant or declarant.

703.02(g)

5th Para: Deleted reference to five additional days for mailing

703.02(g)

8th Para (new): Added requirement to serve all questions and answers for depositions on written questions by email absent parties’ stipulation, and cross-references to 37 CFR § 2.119(b) and TBMP § 113.04

703.02(g)

9th Para: Added party who offered affidavit or declaration testimony may attend cross-examination on written questions, added redirect questions to list in parenthetical, and added "or cross-examination" to list of possible sanctionable conduct

703.02(g)

Notes 1-12: Added new Notes 4-6 and 11 and renumbered old Notes 1-8 to new Notes 1-12

703.02(g)

Note 2: Deleted 37 CFR § 2.124(b)(1) and 37 CFR § 2.124(c)

703.02(g)

Note 4 (new): Added 37 CFR § 2.124(b)(3), reference to NFRM, and Cf. to 37 CFR § 2.124(d)(1)

703.02(g)

Note 5 (new): Added 37 CFR § 2.124(c) and 37 CFR § 2.124(d)(1)

703.02(g)

Note 6 (new): Added 37 CFR § 2.124(b)(3) and reference to NFRM

703.02(g)

Note 11 (new): Added 37 CFR § 2.119(b), 37 CFR § 2.124(d)(3), and reference to NFRM

703.02(i)

Note 1: Added Cf. to NFRM

703.02(i)

Note 2: Changed 37 CFR § 2.125(b) to 37 CFR § 2.125(c), and added parenthetical "formerly 37 CFR § 2.125(b)"

703.02(j)

Added text for 37 CFR § 2.123(h)

703.02(k)

3rd Para: Added "oral"

703.02(l)

1st Para: Added "testimony affidavit or declaration or oral" to "deposition transcript" in first sentence, and added Board’s standard protective order automatically applicable unless parties agree otherwise and Board approves in second sentence. Also added cross-reference to TBMP § 412

703.02(l)

Note 1 (new): Added 37 CFR § 2.116(g)

703.02(m)

2nd Para: changed "it has" to "depositions on written questions have" in first sentence and "It" to "They" in second sentence, and deleted last sentence

703.02(m)

Note 2: Added 37 CFR § 2.123(a)(1)

703.02(m)

Note 3: Deleted

704.01

Updated section to reflect 2017 amendments

704.02

Added 37 CFR § 2.122(g)

Updated section to reflect 2017 amendments

Added new Note 1 citing 37 CFR § 2.121(e) and Wonderbread 5 v. Gilles; renumbered subsequent notes

Note 2: Added 37 CFR § 2.122(g), Hunt-Wesson Foods, Inc. v. Riceland Foods, Inc., and Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)

Added new Note 3 citing 37 CFR § 2.122(g) and Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)

Added new Note 4 citing Safer, Inc. v. OMS Investments, Inc.

704.03(a)

Updated 37 CFR § 2.122(b) to reflect 2017 amendments

Added new Note 4 citing 37 CFR § 2.122(b)(2) and Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)

Added new Note 5 citing Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016), Daniel J. Quirk Inc. v. Village Car Company, and EZ Loader Boat Trailers, Inc. v. Cox Trailers, Inc .

Added new Note 6 citing Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)

Added new Note 8 citing 37 CFR § 2.122(b)(2) and Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)

704.03(b)(1)(A)

Updated 37 CFR § 2.122(d) and section to reflect 2017 amendments

Note 2: Added Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)

704.03(b)(1)(B)

Updated 37 CFR § 2.122(e) and section to reflect 2017 amendments

Note 2: Added 37 CFR § 2.122(g).

704.03(b)(2)

Updated 37 CFR § 2.122(e) and section to reflect 2017 amendments

Note 1: Added 37 CFR § 2.122(g); cf. Chutter , Inc. v. Great Concepts, LLC

Added new Note 4 citing Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)

704.04

Updated 37 CFR § 2.122(b) and section to reflect 2017 amendments

Added new Note 2 citing Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016); renumbered remaining notes

Notes 3-5: Added 37 CFR § 2.122(b)(2)

Note 7: Added Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016) and Daniel J. Quirk Inc. v. Village Car Company

Added new Note 8 citing Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)

704.05(a)

Updated 37 CFR § 2.122(c) and (d) and section to reflect 2017 amendments

Note 3: Added cf. Chutter , Inc. v. Great Concepts, LLC

704.07

Updated 37 CFR § 2.122(e) and section to reflect 2017 amendments

Note 1: Added 37 CFR § 2.122(g)

704.08

Updated 37 CFR § 2.122(e) and section to reflect 2017 amendments

704.08(a)

Note 1: Added 37 CFR § 2.122(e) and 37 CFR § 2.122(g)

Note 4: Added Calypso Technology Inc. v. Calypso Capital Management LP

Note 6: Added Ayoub , Inc. v. ACS Ayoub Carpet Serv.

Note 10: Added 37 CFR § 2.126(a)(2); Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)

704.08(b)

Added 37 CFR § 2.122(e)(2) and revised section to reflect 2017 amendment

Added Note 2 citing Miscellaneous Changes to Trademark Trial and Appeal Board Rules and (2016) and Safer, Inc. v. OMS Investments, Inc.; renumbered remaining notes

Note 3: Added 37 CFR § 2.122(e)(2), FUJIFILM SonoSite , Inc. v. Sonoscape Co., Ltd., and American Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute

Deleted former Note 3

Note 4: Added 37 CFR § 2.122(g) and Miscellaneous Changes to Trademark Trial and Appeal Board Rules

Note 7: Added Ayoub , Inc. v. ACS Ayoub Carpet Serv.

704.08(c)

Updated section to reflect 2017 amendments

Note 3: Added 37 CFR § 2.122(e) and Miscellaneous Changes to Trademark Trial and Appeal Board Rules

704.09

Updated former 37 CFR § 2.120(j) which was amended and redesignated as subsection 37 CFR § 2.120(k) effective January 14, 2017; updated section to reflect 2017 amendments

Note 3: Added Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)

Note 6: Added 37 CFR § 2.120(g)

Note 9: Added Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)

704.10

Updated former 37 CFR § 2.120(j) which was amended and redesignated 37 CFR § 2.120(k) effective January 14, 2017; updated section to reflect 2017 amendments

Note 1: Added Daniel J. Quirk Inc. v. Village Car Company

Note 6: Added 37 CFR § 2.120(g)

Note 9: Added Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)

Added new Note 12 citing Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016); remaining notes renumbered

Note 14: Added Ayoub , Inc. v. ACS Ayoub Carpet Serv.

704.11

Updated 37 CFR § 2.122(e) and revised section to reflect 2017 amendment

Note 1: Added Mini Melts, Inc. v. Reckitt Benckiser LLC

Note 2: Added Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)

Added new Note 3 citing 37 CFR § 2.120(k)(3)(i) and Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)

Added new Note 4 citing 37 CFR § 2.120(a)(3) and Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016); renumbered former notes 3-5

Added new Note 8 citing 37 CFR § 2.120(k)(3)(ii) and Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016); renumbered remaining notes

704.12

Updated 37 CFR § 2.122(a) and revised section to reflect 2017 amendment

704.12(a)

Note 1: Added Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)

Note 2: Added In re Morinaga Nyuguo Kabushiki Kaisha and In re Jimmy Moore LLC

704.13

Note 4: Added Mini Melts, Inc. v. Reckitt Benckiser

704.14

Updated former subsection (j) of 37 CFR § 2.120 which was amended and redesignated as 37 CFR § 2.120(k) effective January 14, 2017 and revised section to reflect 2017 amendments

Notes 1, 3-5, and 7: Added Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)

705

Added 37 CFR § 2.127(e)(2) and revised section to reflect 2017 amendment

Added new Note 5 citing 37 CFR § 2.127(e)(2) and Miscellaneous Changes to Trademark Trial and Appeal Board Rules

706

Updated former subsection (l) of 37 CFR § 2.120 which was amended and redesignated as 37 CFR § 2.120(k) effective January 14, 2017 and revised section to reflect 2017 amendments

Note 6: Deleted Wonderbread 5 v. Gilles and Swiss Watch International Inc. v. Federation of the Swiss Watch Industry

707.01

Updated 37 CFR § 2.122(a) and revised section to reflect 2017 amendments

Added new Note 2 citing Daniel J. Quirk Inc. v. Village Car Company, Sunnen Products Co. v. Sunex Int’l Inc., and Flowers Indus. Inc. v. Interstate Brands Corp.

Added new Note 3 citing Daniel J. Quirk Inc. v. Village Car Company and Blackhorse v. Pro-Football, Inc.

707.02(a)

Revised section to reflect 2017 amendments

707.02(b)

Revised section to reflect 2017 amendments

Note 1: Added 37 CFR § 2.122(g) and Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)

Note 2: Added Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)

707.02(b)(1)

Revised section to reflect 2017 amendments

707.02(b)(2)

Revised section to reflect 2017 amendments

Note 3: Added 37 CFR § 2.122(g) and Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)

707.02(c)

Revised section to reflect 2017 amendments

Note 1: Added Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)

Note 2: Added 37 CFR § 2.128(b)

707.03(a)

Revised section to reflect 2017 amendments

707.03(b)(1)

Revised section to reflect 2017 amendments

Note 1: Added Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)

Added new Note 2 citing 37 CFR § 2.128(b) and Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)

707.03(b)(2)

Updated 37 CFR § 2.123(c) and revised section to reflect 2017 amendments

Added new Note 2 citing 37 CFR § 2.123(c) and Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)

Added new Note 3 citing 37 CFR § 2.123(c) and Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016); subsequent notes renumbered

707.03(b)(3)

Updated 37 CFR § 2.121(e) and 37 CFR § 2.123(e)(3) and revised section to reflect 2017 amendments

Note 1: Added 37 CFR § 2.121(e)

Added new Note 2 citing 37 CFR § 2.121(e) and Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)

Added new Note 3 citing 37 CFR § 2.123(e)(3)

Added new Note 2 citing 37 CFR § 2.121(e) and Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)

707.03(c)

Updated 37 CFR § 2.123(e)(3) and revised section to reflect 2017 amendments

Note 6: Added 37 CFR § 2.128(b) and Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016).

Added new Notes 15-17 citing 37 CFR § 2.123(j) and Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)

Added new Note 19 citing Nahshin v. Product Source International LLC

707.04

Added new Notes 3-5 citing 37 CFR § 2.123(j) and Miscellaneous Changes to Trademark Trial and Appeal Board Rules (2016)

CHAPTER 800

Table of Contents

807: Amended "Application" to "Application or Registration"

801.01

1st Para: Added mandatory use of ESTTA and limited availability of paper filing

2nd Para: Amended to add parties should cite to TTABVUE entry and page number for all filings including confidential and redacted versions

3rd Para: Added in its brief, party can expressly waive pleaded claim or affirmative defense

5th Para: Added TBMP cross-references

Notes 1-6: Added Notes 2, 4 and 7 and renumbered Notes 1-6 to Notes 1-7

Note 1: Added 37 CFR § 2.126(a), 37 CFR § 2.126(b), and 37 CFR § 2.128(a)

Note 2: Amended parenthetical for ITC Entertainment Group Ltd. v. Nintendo of America Inc.

Note 3: Added 37 CFR § 2.142(b)(3) and clarified preferred manner of citing record in TTABVUE by entry and page number

Note 4: Added Mini Melts, Inc. v. Reckitt Benckiser LLC

Note 7: Added Ayoub , Inc. v. ACS Ayoub Carpet Serv.

801.02

Amended text for 37 CFR § 2.128(a)(3)

801.02(a)

1st Para: Deleted reference to five additional days for mailing and TBMP cross references

2nd Para: Clarified when Board may sua sponte enter judgment against a plaintiff for failure to take testimony or submit other evidence even after discharging order to show cause

Note 3: Added 37 CFR § 2.128(a)(3) and associated language from NFRM re: sua sponte entry of judgment against a plaintiff

801.02(b)

Note 2: Deleted reference to five additional days for mailing

801.02(c)

Note 2: Deleted reference to five additional days for mailing

801.02(e)

Note 1: Deleted reference to five additional days for mailing

801.03

Amended text for 37 CFR §2.126 and 37 CFR § 2.128(b)

1st and 2nd Paras: Added mandatory use of ESTTA and limited availability of paper filing for briefs

3rd Para: Added Board may not consider briefs exceeding page limit

6th Para: Amended USPTO’s public electronic database to TTABVUE

8th Para: Clarified preferred manner of citing record in TTABVUE by entry and page number

11th-14th Paras: Clarified filing and handling of confidential matter

Notes 1-12: Added new Notes 2, 3, 11, 13 and 14, Deleted Note 11, renumbered Notes 1-12 to Notes 1-15

Note 1: Amended 37 CFR § 2.126 to 37 CFR § 2.126(a), clarified Board will still accept a CD or DVD in limited circumstances but will not accept briefs filed on those media; Added reference to NFRM

Note 2: Added 37 CFR § 2.126(b) and reference to NFRM

Note 3: Added 37 CFR § 2.128(b)

Note 6: Added 37 CFR § 2.128(b)

Note 11: Added 37 CFR § 2.142(b)(3) and Turdin v. Trilobite, Ltd.; Deleted TBMP cross reference

Note 12: Added 37 CFR § 2.27(e)

Note 13: Added 37 CFR § 2.126(c), Turdin v. Trilobite, Ltd., and Fiserv, Inc. v. Electronic Transaction Systems Corp.

Note 14: Added Mini Melts, Inc. v. Reckitt Benckiser LLC

Note 16: Added 37 CFR § 2.116(g) and reference to NFRM

802

Amended text for 37 CFR § 2.129, added TBMP cross reference, and added general statement that judges and other statutory Board members are collectively referred to as "judges"

802.01

4th Para: Added parties may not add or clarify anything after oral hearing unless at Board request

5th Para: Added parties and judges may attend hearings remotely at discretion of Board

Notes 1-3: Added new Note 3 and renumbered Notes 1-3 to Notes 104

Note 2: Amended 37 CFR § 2.123(l) to 37 CFR § 2.123(j)

Note 3: Added Swiss Watch International v. Federation of the Swiss Watch Industry

Note 4: Added 37 CFR §2.129(a)

802.02

1st Para: Added mandatory use of ESTTA and limited availability of paper filing

2nd Para: Amended "Board’s Hearing Officer" to "Board’s Hearing and Decision Specialist"

Note 1: Added 37 CFR § 2.126(c)

Note 2: Added 37 CFR § 2.126(b)

802.03

1st and 2nd Paras: Amended Board procedure to request oral hearings

5th Para: Added Board may deny request to reset hearing date for lack of good cause or if multiple such requests have been filed

Notes 1-4: Added new Notes 2 and 6, renumbered Notes 1-4 to Notes 1-6

Note 2: Added 37 CFR § 2.129(a) and reference to NFRM

Note 6: Added 37 CFR § 2.129(b) and reference to NFRM

802.04

1st Para: Clarified judges may attend hearings in person or remotely

Notes 1-3: Added new Note 2 and renumbered Notes 1-3 to Notes 1-4

Note 2: Added 37 CFR § 2.129(a)

Note 3: Added Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V. and Rocket Trademarks PTY Ltd. v. Phard S.pA .

Note 4: Added N.Y. Yankees Partnership v. IET Prods. & Servs ., Inc.

803

2nd Para: Clarified that judges and other statutory members of the Board may render the final decision, and added general statement that judges and other statutory Board members are collectively referred to as "judges"

6th Para: Amended mailed to sent

804

Added Text for 37 CFR § 2.129(c)

1st Para: Amended time for filing brief in response to request for reconsideration from 15 days to 20 days from date of service of request

2nd Para: Clarified party does not have to request reconsideration before appealing to Fed. Cir. or district court, but party who requests reconsideration must do so before it seeks judicial review

Notes: Added new Notes 2 and 3

Note 2: Added 37 CFR § 2.129(c) and reference to NFRM

Note 3: Added 37 CFR § 2.145(c)(1)

805

Amended text for 37 CFR § 2.131

806

2nd & 3rd Paras: Clarified and renumbered steps Board normally takes when an opposition or cancellation becomes final.

4th Para: Added TBMP cross reference

5th Para: Amended instruction on notifying Board when a party files a civil action to seek review of the Board’s decision per 15 U.S.C. § 1071(b)

Notes: Added new Notes 1 and 2

Note 1: Added 37 CFR § 2.136

Note 2: Added hybrid files

Note 3: Amended 37 CFR § 2.145(c) to 37 CFR § 2.145(c)(3)

807

Amended title to add "or Registration"

Amended text for 37 CFR § 2.136

Section revised to reflect amendments to 37 CFR § 2.136

Notes 1-3: Added new Notes 2, 4 and 5, renumbered Notes 1-3 to Notes 1-6

Note 1: Added reference to NFRM

Notes 2, 4 & 5: Added 37 CFR §2.136

CHAPTER 900

901

Amended text of 37 CFR §§ 2.145(a), (b), (c), (d) to reflect 2017 amendment to the rule

901.01

Note 1: Updated Shammas v. Hirschfeld case citation

901.01

Note 2: Amended 37 CFR § 2.145(c)(3) to 37 CFR § 2.145(b)(2)

901.02(a)

Note 9: Added In re Tam slip op.

902.01

Amended text of 37 CFR § 2.145(a) deleted 37 CFR § 2.145(b) to reflect 2017 amendment to the rule

902.01

2d & 3d Para: Added copy of notice of appeal must be filed with Board through ESTTA

902.01

3d Para: Amended USPTO to Director

902.01

5th Para: Amended to update instruction on how to file notice of appeal with Federal Circuit

902.01

Notes 1-5, 7: Amended citations for 37 CFR § 2.145 deleted citations to 37 CFR § 2.145(b)

902.02

Amended text of 37 CFR §§ 2.145(d), (e) to reflect 2017 amendment to the rule

902.02

1st & 2d Para: Amended time to file notice of appeal from two months to sixty-three days and deleted accounting for February 28

902.02

3d Para: Amended to update time for filing notice of cross-appeal

902.02

4th & 5th Para: Added copy of notice of appeal must be filed with Board through ESTTA; and amended where extension of time should be directed.

902.02

Notes 2-8: Deleted notes 2 and 6 to renumber 1-8 and amended and corrected citations for 37 CFR §§ 2.129 and 2.145

902.03

Note 1: Amended 37 CFR § 2.145(c)(2) to 37 CFR § 2.145(b)(1)

902.04

Amended text of 37 CFR §§ 2.145(b)(2), (d)(2) deleted 37 CFR §2.145(c)(3), (d)(3) to reflect 2017 amendment to the rule

902.04

1st Para: Amended to update instruction on how to file notice of election, amended USPTO to Director, and added copy of notice must be filed with the Board through ESSTA

902.04

2d Para: Amended to update instruction for timing of filing any cross-action

902.04

Notes 1, 2, 4, 5: Amended citations for 37 CFR §§ 2.145(c)(2), (d)(2) deleted 37 CFR § 2.145(c)(3), (d)(3)

902.05

Amended text of 37 CFR § 2.145(d)(4)(ii) deleted 37 CFR § 2.145(d)(2) to reflect 2017 amendment to the rule

902.05

1st Para: Deleted reference to times specified in months and accounting for February 28

902.05

Note 1: Amended citation 37 CFR § 2.145(d)(2) to 37 CFR § 2.145(d)(4)(ii)

902.08

Amended citation of 37 CFR § 2.145(c)(2) to 37 CFR § 2.145(b)(1) and text U.S. to United States

902.08

Note 1: Amended citation 37 CFR § 2.145(c)(2) to 37 CFR § 2.145(b)(1)

903.01

Amended text for 37 CFR § 2.145(c)(3) deleted 37 CFR § 2.145(c)(4) to reflect 2017 amendment to the rule

903.01

1st Para: Amended to state notice of civil action must be filed with the Board through ESTTA

903.01

Note 1: Amended 37 CFR § 2.145(c)(4) to 37 CFR § 2.145(c)(3)

903.02

3d Para: Amended to add copy of ex parte civil complaint must be filed with the Board through ESSTA

903.02

Note 3: Add citation to 37 CFR § 2.145(c)(2)

903.04

Amend text of 37 CFR §§ 2.145(d), (e)

903.04

1st & 2d Para: Amended time to commence civil action from two months to sixty-three days and deleted accounting for February 28

903.04

3d Para:

903.04

4th Para: Amended instruction on where to direct a request for extension of time

903.04

Notes 1-8: Deleted notes 2 & 7, renumbered notes, deleted Tovaritch Spirits International S.A. v. Luxco Inc., and amended citations to 37 CFR § 2.145(d)

903.05

Amended text for 37 CFR § 2.145(d)

903.05

1st Para: Deleted reference to times specified in months and accounting for February 28

903.05

Note 1: Amended 37 CFR § 2.145(d)(2) to 37 CFR § 2.145(d)(4)(ii)

903.06

Note 1: Amended 37 CFR § 2.145(c)(2) to 37 CFR § 2.145(b)(1)

903.06

Note: 2 Updated Belmora LLC v. Bayer Consumer Care AG case citation

903.07

1st Para: Amended to add copy of the complaint must be filed with the Board through ESSTA

906.01

Note 29: Corrected typo in Nationstar Mortgage, LLC v. Ahmad

CHAPTER 1000

1003

37 CFR § 2.92 updated

1006

37 CFR § 2.98 updated

1007

1st para: duplicate cross reference deleted

CHAPTER 1100

1101.01

4th Para: Deleted instruction that disclosure and conferencing regime only pertains to proceedings commenced on or after November 1, 2007

1101.01

Note 1, 3-4: Updated Southwestern Management, Inc. v. Ocinomled , Ltd. case citation

1101.01

Note 6: Added citation to 37 CFR § 2.120(a)(1)

1103

Amended text of 37 CFR §§ 2.99(c), (d)(1)-(3), (f)(3) to reflect 2017 amendment to the rule

1103.01

2d Para: Deleted requirement that applicant serve application on excepted users and added Board’s notice of institution will include web link or address to access concurrent use application in Office records

1103.01

Note 6: Amended 37 CFR § 2.99(b) to 37 CFR § 2.99(d); added service by applicant no longer required and citation to Federal Register notice

1103.01(d)(2)

Corrected typos

1103.01(d)(2)

Note 1: Updated Southwestern Management, Inc. v. Ocinomled , Ltd. case citation

1103.01(e)

Corrected typos Note 2: corrected typo

1103.01(f)

Amended text of 37 CFR §§ 2.99(c), (d)(1) to reflect 2017 amendment to the rule

1103.01(f)

1st Para: Deleted requirement that applicant serve application on excepted users and added Board’s notice of institution will include web link or address to access concurrent use application in Office records

1103.01(f)

Note 1: Added service by applicant no longer required and citation to Federal Register notice

1103.02

3d, 4th & 9th Para: Deleted requirement that applicant serve application on excepted users and added Board’s notice of institution will include web link or address to access concurrent use application in Office records in paragraphs 3 and 9; deleted paragraph 4

1103.03

Amended text of 37 CFR § 2.99(f)(3) to reflect 2017 amendment to the rule

1103.03

3d, 4th & 9th Para: Deleted requirement that applicant serve application on excepted users and added Board’s notice of institution will include web link or address to access concurrent use application in Office records in paragraphs 3 and 9; deleted paragraph 4

1104

Note 5: Updated Southwestern Management, Inc. v. Ocinomled , Ltd. case citation

1106.04

2d Para: Deleted requirement that applicant serve application on excepted users and added Board’s notice of institution will include web link or address to access concurrent use application in Office records

1106.04

Notes 1-10: Deleted 37 CFR § 2.119(a) from note 1; deleted notes 2 & 3 and renumbered remaining notes

1106.05

Notes 3 & 4: Deleted note 3, note 4 renumbered

1107

1st & 2d Para: Deleted reference to 2007 rules; Deleted requirement that applicant serve application on excepted users and notify the Board of ineffective service, and added Board’s notice of institution will include web link or address to access concurrent use application in Office records

1107

Notes 1-4: Deleted note 1 and renumbered remaining notes; deleted reference to 37 CFR § 2.119 in renumbered note 1

1108

Note 2: Updated Southwestern Management, Inc. v. Ocinomled , Ltd. case citation

1109

1 & 4 Para: Deleted reference to 2007 rules

1109.01

5th Para: Deleted reference to 2007 rules

1110

4th Para: Clarifying edit

1113.01

Note 4: Deleted America’s Best Franchising Inc. v. Abbott case citation

CHAPTER 1200

1201.01

Note 6: Added In re Harley

1201.02

Note 2: Added In re Jimmy Moore LLC

1201.02

Note 4: Added In re Fantasia Distribution, Inc.

1201.03

Amended text to indicate premature appeal fee will be refunded and new fee is required with new timely appeal

1201.04

Amended text to add new language in 37 CFR 2.142(c)

1201.05

Note 1: Added In re Jimmy Moore LLC

1202.01

Amended text to indicate brief should note compliance with issues not subject of appeal

1202.02

Amended to text to indicate filings must be through ESTTA

1202.02

Note 3: Added Miscellaneous Changes to Trademark Trial and Appeal Board Rules

1202.02

Note 4: Deleted 37 CFR §§ 2.195 and 2.126, added 37 CFR 2.142(b)(2) and Miscellaneous Changes to Trademark Trial and Appeal Board Rules

1202.02

Deleted text that allowed fax filing

1202.03

Amended text to indicate filings must be through ESTTA, may not be through fax, and procedure for paper filing

1202.03

Note 1: Amended 37 CFR § 2.126(b) to 2.126(a)

1202.03

Note 2: Added Miscellaneous Changes to Trademark Trial and Appeal Board Rules

1202.04

Amended text to indicate ESTTA filing collects required fees and allocation of insufficient fees only pertains to rare paper filings

1203.01

Amended text of 37 CFR §§ 2.126 and 2.142(b)(2) to reflect 2017 amendment to the rule

1203.01

Amended text to add page limit for reply briefs, that if deadline for filing brief hasn’t past may file conforming brief with motion to accept, references to the record should be to the electronic record, filing must be through ESTTA absent technical problems or extraordinary circumstances

1203.01

Note 1: Updated In re Cordua Restaurants LP case citation

1203.01

Note 7: Amended 37 CFR § 2.142(b)(2) to 2.142(b)(3)

1203.01

Note 12: Added note for reference to 37 CFR § 2.126(a)

1203.01

Note 13: Added note for reference to 37 CFR § 2.126(b) and Miscellaneous Changes to Trademark Trial and Appeal Board Rules

1203.02(a)

Amended text of 37 CFR § 2.142(b)(1) to reflect 2017 amendment to the rule

1203.02(a)

Amended text to indicate ESTTA automatically generates acknowledgment of appeal and process for rare paper filings

1203.02(a)

Note 1: Added 37 CFR § 2.126(b) and Miscellaneous Changes to Trademark Trial and Appeal Board Rules

1203.02(c)

Amended text to indicate page length of reply briefs

1203.02(e)

Note 1: Added In re Jimmy Moore LLC

1203.02(g)

Note 2: Added In re Harley

1204

Amended text to indicate filings must be through ESTTA

1204

Note 1: Added reference to TMEO Consistency Initiative

1205.01

Amended text to indicate paper filings are rare and require written explanation, and to add examining attorney consent for remand to consider amendment is good cause

1205.01

Note 1: Added In re Eximius and In re Integrated Embedded

1205.02

Amended text to indicate filings must be through ESTTA

1205.02

Note 2. Added note 2 to reference 37 CFR § 2.126

1205.02(b)

Amended text to indicate paper filings are rare and require written explanation

1206.01

Amended text to indicate paper filings are rare and require written explanation

1207.01

Amended text of 37 CFR § 2.142(d) to reflect 2017 amendment to the rule

1207.01

1st Para: deleted sentence re additional evidence

1207.01

Note 1: Added In re Jimmy Moore LLC

1207.02

Note 1: Added In re Jimmy Moore LLC

1207.04

Note 2: Added In re Jimmy Moore LLC

1208

1st Para: deleted sentence re cross-examination of witnesses; 2d Para: added language re cross examination and the Federal Rules of Evidence

1208

Note 5: revised 37 CFR § 2.123(b) to 37 CFR § 2.123(a)(1)

1208

Note 6: Added In re Highlights for Children, Inc.

1208.02

2d Para: moved last sentence to before Note 3

1208.02

Note 3: added Miscellaneous Changes to Trademark Trial and Appeal Board Rules

1208.02

Note 11: Added In re Mr. Recipe LLC

1208.03

1st Para: added clause re providing only a link to a website; 4th Para: added sentence re multimedia evidence

1208.03

Note 1: Added In re Fantasia Distribution, Inc. and In re HSB Solomon Associates LLC

1208.03

Note 2: Added In re Mr. Recipe LLC

1208.03

Note 17: Added new note 17 to cite to In re Fantasia Distribution, Inc.

1208.04

Note 1: Added In re Morinaga Nyuguo Kabushiki Kaisha

1208.04

Notes: 1, 4, 6, 9 Added: In re Jimmy Moore LLC; Note 9: added Miscellaneous Changes to Trademark Trial and Appeal Board Rules

1208.04

Note 3: Added In re Mr. Recipe LLC and In re Highlights for Children, Inc.

1209.01

Amended text of 37 CFR § 2.142(f)(1) to reflect 2017 amendment to the rule

1209.01

3d Para: amended timing to the time set by the Board

1209.02

Amended text of 37 CFR § 2.142(f)(6) to reflect 2017 amendment to the rule

1213

2d Para: added filing of a petition to director as situation for suspension; 13th Para: added sentence re no suspension for consistency review

1214

Note 1: Added In re Mr. Recipe, LLC

1215

Note 1: Added In re Fantasia Distribution, Inc.

1216

Amended text of 37 CFR § 2.142(e)(1) to reflect 2017 amendment to the rule

1216

3d Para: updated process for requesting oral hearing; 4th Para: added Board has discretion to allow remote attendance; 6th Para: deleted requirement that another examining attorney must come from the same law office

1216

Note 3: added 37 CFR § 2.142(e)(1)

1216

Note 4: added 37 CFR § 2.142(e)(1)

1217

Note 1: Added In re Harley

1217

Note 3: Added In re Morinaga Nyuguo Kabushiki Kaisha

1218

Note 3: Added In re Integrated Embedded

1219

Amended timing for appeal from two months to sixty-three days

1219

Note 4: amended 37 CFR § 2.145(d)(1) to 37 CFR § 2.145(d)(4)

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Attachment C - INDEX TO CHANGES