UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`General Contact Number: 571-272-8500
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`Mailed: May 17, 2017
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`Opposition No. 91234606
`Serial No. 85428865
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`WOODWORTH, JEFFREY WILLIAM
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`4946 WATT AVE STE 28
`NORTH HIGHLANDS, CA 95660-5158
`Acushnet Company
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`v.
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`Woodworth, Jeffrey William
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`Nancy H. Lutz
`Merchant & Gould P.C.
`P.O. Box 2910
`Minneapolis, MN 55402
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`ESTTA821578
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`NOTICE: CHANGES TO THE TRADEMARK TRIAL AND APPEAL BOARD (“BOARD”)
`RULES OF PRACTICE EFFECTIVE JANUARY 14, 2017
`
`The USPTO published a Notice of Final Rulemaking in the Federal Register on October 7
`2016, at 81 Fed. Reg. 69950. It sets forth several amendments to the rules that govern in-
`ter partes (oppositions, cancellations, concurrent use) and ex parte appeal proceedings. A
`correction to the final rule was published on December 12, 2016, at 81 Fed. Reg. 89382.
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`For complete information, the parties are referred to:
`• The Board’s home page on the uspto.gov website: http://www.uspto.gov/trademarks-
`application-process/trademark-trial-and-appeal-board-ttab
`• The final rule:
`http://www.uspto.gov/sites/default/files/documents/81%20FR%2069950.pdf
`• The correction to the final rule:
`http://www.uspto.gov/sites/default/files/documents/81%20FR%2089382.pdf
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`• A chart summarizing the affected rules and changes:
`http://www.uspto.gov/sites/default/files/documents/2017Rulechangehighlights.pdf
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`For all proceedings, including those already in progress on January 14, 2017, some of
`the changes are:
`• All pleadings and submissions must be filed through ESTTA. Trademark Rules
`2.101, 2.102, 2.106, 2.111, 2.114, 2.121, 2.123, 2.126, 2.190 and 2.191.
`• Service of all papers must be made by email, unless otherwise stipulated. Trade-
`mark Rule 2.119.
`• Response periods are no longer extended by five days for service by first-class mail,
`Priority Mail Express®, or overnight courier. Trademark Rule 2.119.
`• Deadlines for submissions to the Board that are initiated by a date of service are 20
`days. Trademark Rule 2.119. Responses to motions for summary judgment remain
`30 days. Similarly, deadlines for responses to discovery requests remain 30 days.
`• All discovery requests must be served early enough to allow for responses prior to
`the close of discovery. Trademark Rule 2.120. Duty to supplement discovery re-
`sponses will continue after the close of discovery.
`• Motions to compel initial disclosures must be filed within 30 days after the deadline
`for serving initial disclosures. Trademark Rule 2.120.
`• Motions to compel discovery, motions to test the sufficiency of responses or objec-
`tions, and motions for summary judgment must be filed prior to the first pretrial
`disclosure deadline. Trademark Rules 2.120 and 2.127.
`• Requests for production and requests for admission, as well as interrogatories, are
`each limited to 75. Trademark Rule 2.120.
`• Testimony may be submitted in the form of an affidavit or declaration. Trademark
`Rules 2.121, 2.123 and 2.125
`• New requirements for the submission of trial evidence and deposition transcripts.
`Trademark Rules 2.122, 2.123, and 2.125.
`• For proceedings filed on or after January 14, 2017, in addition to the changes set
`forth above, the Board’s notice of institution constitutes service of complaints.
`Trademark Rules 2.105(a) and 2.113(a).
`
`
`This is only a summary of the significant content of the Final Rule. All parties involved in
`or contemplating filing a Board proceeding, regardless of the date of commencement of the
`proceeding, should read the entire Final Rule.
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`NOTICE OF INSTITUTION
`The opposer (plaintiff) identified above has filed a notice of opposition to the regis-
`tration sought by applicant (defendant) in the above-identified application. This no-
`tice of institution is forwarded pursuant to Trademark Rules 2.105(b) and (c), and
`constitutes service of the notice of opposition on applicant. An electronic version of
`the
`notice
`of
`opposition
`is
`viewable
`on
`TTABVUE
`at
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`http://ttabvue.uspto.gov/ttabvue/. See Trademark Rule 2.105(a). The parties should
`diligently monitor this proceeding via TTABVUE.
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`APPLICANT MUST FILE ANSWER THROUGH ESTTA
`As required in the schedule below, applicant must file an answer within forty
`(40) days from the mailing date of this order. Failure to file a timely answer
`may result in the entry of default judgment and abandonment of the application.
`Regarding when a deadline falls on a Saturday, Sunday or federal holiday, see
`Trademark Rule 2.196. Applicant must file the answer through ESTTA - Electronic
`System for Trademark Trials and Appeals, unless ESTTA is unavailable due to
`technical problems or extraordinary circumstances are present. An answer filed on
`paper under these limited circumstances must be accompanied by a Petition to the
`Director (and the required fee under Trademark Rule 2.6). See Trademark Rule
`2.106(b)(1). In substance, applicant’s answer must comply with Fed. R. Civ. P. 8(b);
`it must admit or deny the allegations in the notice of opposition, and may include
`available defenses and counterclaims. Regarding the form and content of an answer,
`see Trademark Rule 2.106(b)(2) and TBMP § 311.
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`DUTY TO MAINTAIN ACCURATE CORRESPONDENCE INFORMATION
`Throughout this proceeding, the parties, and their attorneys or representatives,
`must notify the Board of any correction or update of physical address and email ad-
`dress, and should use the ESTTA change of address form. See Trademark Rule
`2.18(b); TBMP § 117.
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`SERVICE OF ANSWER AND OF ALL SUBMISSIONS
`The service of the answer, and all other submissions in this proceeding, and of all
`matters that are required to be served but not required to be filed in the proceeding
`record, must be by email unless the parties stipulate otherwise. Trademark Rule
`2.119(b). In the absence of a stipulation, service may be by other means only under
`the limited circumstances and in a manner specified in Trademark Rule 2.119(b).
`Regarding the signing and service of all submissions, see TBMP §§ 113-113.04.
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`The answer, and all other submissions, must include proof of service. As noted in
`TBMP § 113.03, proof of service may be in the following certificate of service form:
`
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`I hereby certify that a true and complete copy of the foregoing
`(insert title of submission) has been served on (insert name of
`opposing counsel or party) by forwarding said copy on (insert
`date of mailing), via email (or insert other appropriate method
`of delivery) to: (set out name, and address or email address of
`opposing counsel or party).
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`Signature__________________________
`Date_______________________________
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`SUBMIT ALL FILINGS ONLINE VIA ESTTA
`Submissions must be filed via ESTTA, the Board’s online filing system, unless
`ESTTA is unavailable due to technical problems or extraordinary circumstances are
`present. Trademark Rule 2.126(a). Submissions may be filed in paper form only
`under the limited circumstances specified in Trademark Rule 2.126(b), with a re-
`quired written explanation. ESTTA is accessible at the Board’s web page:
`http://estta.uspto.gov/. The page has instructions and tips. ESTTA offers various
`forms, some of which may require attachments and/or a fee. For technical questions,
`a party may call 571-272-8500 (Mon. - Fri. 8:30 - 5:00 ET) or email
`ESTTA@uspto.gov. This proceeding involves several deadlines, and due to potential
`technical issues, parties should not wait until the deadline to submit filings. The
`Board may decline to consider an untimely submission. Moreover, Trademark
`Rule 2.126 sets forth the required form and format for all submissions (e.g., page
`limitations), and the Board may decline to consider any submission that does not
`comply with this rule, including, but not limited to motions, briefs, exhibits, and
`deposition transcripts.
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`CONFERENCE, DISCOVERY, DISCLOSURE AND TRIAL SCHEDULE
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`Time to Answer
`Deadline for Discovery Conference
`Discovery Opens
`Initial Disclosures Due
`Expert Disclosures Due
`Discovery Closes
`Plaintiff's Pretrial Disclosures Due
`Plaintiff's 30-day Trial Period Ends
`Defendant's Pretrial Disclosures Due
`Defendant's 30-day Trial Period Ends
`Plaintiff's Rebuttal Disclosures Due
`Plaintiff's 15-day Rebuttal Period Ends
`Plaintiff's Opening Brief Due
`Defendant's Brief Due
`Plaintiff's Reply Brief Due
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`PARTIES ARE REQUIRED TO HOLD DISCOVERY CONFERENCE
`The parties are required to schedule and hold a discovery conference by the dead-
`line in the schedule in this order, or as reset by the Board. In the conference, the
`parties are required to discuss, at a minimum, 1) the nature and basis of their
`claims and defenses, 2) the possibility of promptly settling, or at least narrowing the
`scope of claims or defenses, and 3) arrangements for disclosures, discovery, preserv-
`ing discoverable information and introduction of evidence at trial. For guidance, see
`
`6/26/2017
`7/26/2017
`7/26/2017
`8/25/2017
`12/23/2017
`1/22/2018
`3/8/2018
`4/22/2018
`5/7/2018
`6/21/2018
`7/6/2018
`8/5/2018
`10/4/2018
`11/3/2018
`11/18/2018
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`Fed. R. Civ. P. 26(f), Trademark Rule 2.120(a)(2)(i) and TBMP §§ 401.01 and
`408.01(a).
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`The parties must hold the conference in person, by telephone or by a means on
`which they agree. A Board interlocutory attorney or administrative trademark
`judge will participate in the conference either upon request of any party made no
`later than ten (10) days prior to the conference deadline, or when the Board deems
`it useful to have Board involvement. See Trademark Rule 2.120(a)(2)(i). A request
`for Board participation must be made either through ESTTA, or by telephone call to
`the assigned interlocutory attorney named on the TTABVUE record for this pro-
`ceeding. A party requesting Board participation should first determine possible
`dates and times when all parties are available. A conference with a Board attorney’s
`participation will be by telephone in accordance with the Board’s instructions.
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`For efficiency, the parties may stipulate to various procedural and substantive dis-
`closure, discovery and trial matters (e.g., modification of deadlines and obligations)
`upon written stipulation and approval by the Board. Trademark Rule 2.120(a)(2)(iv)
`provides a non-exhaustive list of matters to which parties may stipulate. The best
`practice is to reduce all stipulations to writing. If email service is not practical, such
`as for voluminous document production in discovery, the parties should discuss in
`the conference how production will be made. The parties, and their attorneys or
`representatives, have a duty to cooperate in the discovery process. TBMP §
`408.01.
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`PROTECTIVE ORDER FOR CONFIDENTIAL INFORMATION
`The Board's Standard Protective Order is automatically imposed in all inter partes
`proceedings, and is available at: https://www.uspto.gov/trademarks-application-
`process/appealing-trademark-decisions/standard-documents-and-guidelines-0. Dur-
`ing their conference, the parties should discuss whether they will use an alternative
`or modified protective order, subject to approval by the Board. See Trademark Rule
`2.116(g) and TBMP § 412. The standard order does not automatically protect confi-
`dential information; its provisions for designating confidential information must be
`utilized as needed by the parties. Trademark Rule 2.126(c) sets forth the procedure
`for filing confidential submissions.
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`ACCELERATED CASE RESOLUTION (ACR)
`During their conference, the parties are to discuss whether they wish to seek media-
`tion or arbitration, and whether they can stipulate to the Board's Accelerated Case
`Resolution (ACR) process for a more efficient and cost-effective means of obtaining
`the Board’s determination of the proceeding. For details, and examples of ACR pro-
`ceedings,
`see
`TBMP
`§
`528,
`and
`the
`Board's
`webpage:
`http://www.uspto.gov/trademarks-application-process/trademark-trial-and-appeal-
`board-ttab.
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`INITIAL DISCLOSURES AND DISCOVERY
`Regarding the deadline for and contents of initial disclosures, see Trademark Rules
`2.120(a)(1) and (2)(i), and TBMP § 401.02. Regarding deadlines for serving and re-
`sponding to discovery, see Trademark Rule 2.120(a)(3) and TBMP § 403.03. Certain
`provisions of Fed. R. Civ. P. 26 are applicable in modified form. Note that written
`discovery (interrogatories, requests for production, requests for admission) must be
`served early enough so that responses will be due no later than the close of dis-
`covery. Regarding the scope and limits of discovery, see TBMP 414; discoverable
`items may include documents, tangible things, and electronically stored information
`(ESI).
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`MOTIONS
`Certain provisions of Fed. R. Civ. P. 11 apply to all submissions in Board proceed-
`ings. See TBMP § 527.02. Regarding available motions, see TBMP Chapter 500. Re-
`garding applicable deadlines to respond to motions, depending on the motion filed,
`see Trademark Rules 2.127(a) and (e)(1). When a party timely files a potentially
`dispositive motion the proceeding is suspended with respect to all matters not ger-
`mane to the motion. See Trademark Rule 2.127(d). In addressing motions or other
`filings, if it appears to the Board that a telephone conference would be beneficial, or
`upon request of one or both parties, the Board may schedule a conference. See
`Trademark Rule 2.120(j)(1) and TBMP § 502.06(a).
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`PRETRIAL DISCLOSURES, TRIAL AND BRIEFING
`Regarding the procedures and deadlines for pretrial disclosures and trial, and spe-
`cifically the noticing, taking, serving and submitting of evidence and testimony, see
`Trademark Rules 2.120(k), 2.121, 2.122, 2.123 and 2.125, as well as TBMP Chapter
`700. The parties should review these authorities. For example: witness testimony
`may be submitted in the form of affidavit or declaration subject to the right to oral
`cross examination; transcripts of testimony depositions, with exhibits, must be
`served on each adverse party within thirty (30) days after completion of taking the
`testimony; certified transcripts and exhibits must be filed, with notice of such filing
`served on each adverse party; and all notices of reliance must be submitted during
`the submitting party's assigned testimony period and must indicate generally the
`relevance the evidence and associate it with one or more issues.
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`Main briefs shall be filed in accordance with Trademark Rules 2.128(a) and (b). An
`oral hearing is not required, but will be scheduled upon separate notice timely filed
`pursuant to Trademark Rule 2.129(a). Regarding briefs and oral hearings, see
`TBMP §§ 801-802.
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`LEGAL RESOURCES AVAILABLE AT WEB PAGE
`For a general description of Board proceedings, see TBMP §102.03. Proceedings are
`governed by the Trademark Rules of Practice in Parts 2 and 7 of Title 37 of the
`Code of Federal Regulations. These rules, the Manual of Procedure (TBMP), infor-
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`mation on Accelerated Case Resolution (ACR) and Alternative Dispute Resolution
`(ADR), and many Frequently Asked Questions, are available on the Board’s web
`page, at:
`http://www.uspto.gov/trademarks-application-process/trademark-trial-and-appeal-
`board-ttab. The parties should check the web page for important changes, an-
`nouncements, etc., many of which apply to proceedings already in progress.
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`PARTIES NOT REPRESENTED BY COUNSEL
`This proceeding is similar to a civil action in a federal district court and can be
`complex. The Board strongly advises all parties to secure the services of an attor-
`ney who is familiar with trademark law and Board procedure. The Board cannot aid
`in the selection of an attorney. See TBMP § 114.02. The Board requires strict com-
`pliance with all applicable authorities whether or not the party is represented by
`counsel.
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`NOTIFY BOARD OF ALL PENDING ACTIONS
`If the parties are, or during the pendency of this proceeding become, parties in an-
`other Board proceeding or a civil action involving the same or related marks, or in-
`volving any issues of law or fact which are also in this proceeding, they shall notify
`the Board immediately. See Trademark Rule 2.106(b)(3)(i). The Board will consoli-
`date and/or suspend related Board proceedings, as appropriate. See Trademark
`Rule 2.117(c); TBMP §§ 510 and 511.
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