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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`David P. Goldberg
`Amster, Rothstein & Ebenstein LLP
`90 Park Avenue
`New York NY 10016
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`ESTTA838385
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`NOTICE: CHANGES TO THE TRADEMARK TRIAL AND APPEAL BOARD (“BOARD”)
`RULES OF PRACTICE EFFECTIVE JANUARY 14, 2017
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`August 8, 2017
`____________________________________________________
`IN RE:
`PANASONIC CORPORATION OF NORTH
`AMERICA
`____________________________________________________
`SERIAL NO. 86774632
`____________________________________________________
`APPEAL RECEIVED: 08/08/2017
`____________________________________________________
`BRIEF DUE: n/a
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`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
`inter 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.
`Trademark 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
`responses 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
`objections, 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).
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`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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`The appeal and appeal fee in the above-entitled application were received on the
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`date indicated above. Applicant has checked the request for reconsideration box on
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`the ESTTA form, thereby indicating that it has filed or is filing today a request for
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`2
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`reconsideration of the final refusal to register. Applicant should notify the Board
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`immediately if it has not filed a timely request for reconsideration and does not
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`intend to do so.
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`A request for reconsideration, which may or may not include an amendment,
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`must be filed with the Trademark Examining Operation, and may be filed via
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`TEAS, using the Response to Office Action form.1
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`In view of the filing of the request for reconsideration/amendment, the appeal is
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`hereby instituted, but action on the appeal is suspended and the application is
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`remanded
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`to
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`the
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`examining attorney
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`to
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`consider
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`the
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`request
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`for
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`reconsideration/amendment.
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`If
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`registrability
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`is
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`found
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`on
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`the
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`basis
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`of
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`the
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`request
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`for
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`reconsideration/amendment, the appeal will be moot. In the event the refusal of
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`registration
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`is maintained,
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`and
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`assuming
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`that
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`the
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`request
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`for
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`reconsideration/amendment does not raise a new issue, the application will be
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`returned to the Board, proceedings in the appeal will be resumed, and applicant will
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`be allowed time
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`in which to
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`file an appeal brief. If the request
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`for
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`reconsideration/amendment raises a new issue, the examining attorney may not
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`issue a final refusal until the applicant has been given an opportunity to respond.
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`Upon issuance of a final refusal, proceedings in the appeal will be resumed, and
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`applicant will be allowed time in which to file an appeal brief. An Amendment to
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`Allege Use will be treated in the same manner as any amendment; if registrability
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`1 (To maintain their status, TEAS Plus applicants must use TEAS for filing a request for
`reconsideration.)
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`3
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`is found on the basis of the AAU, the appeal will be moot; if the AAU raises a new
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`issue, the examining attorney may not make a refusal final until applicant has been
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`given an opportunity to respond.
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`Request to Divide
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`If,
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`in addition
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`to
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`filing a notice
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`of appeal and
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`request
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`for
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`reconsideration/amendment, applicant has also filed a request to divide the
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`application, the appeal is instituted, proceedings are suspended, and the application
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`is remanded to the examining attorney. The examining attorney should forward the
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`application to the ITU/Divisional Unit of the Office to act on the request to divide.
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`After the request to divide is processed, the examining attorney should consider the
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`request for reconsideration/amendment. If registrability is found on the basis of the
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`request for reconsideration/amendment, the appeal will be moot. If the refusal of
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`registration is maintained,2 the divided file containing classes for which an appeal
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`has been filed should be returned to the Board, and the Board will then resume
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`proceedings in the appeal and allow applicant time to file an appeal brief. The file
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`for which no appeal has been taken should be treated by the examining attorney in
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`the same manner as any request for reconsideration/amendment where there has
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`been no appeal.
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`2 If the request for reconsideration/amendment raises a new issue, a final Office action may
`not issue until the applicant has had an opportunity to respond).
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