Testimony By Affidavit: Proposed Changes to Discovery Process in Opposition and Cancellation Proceedings Before the TTAB
The U.S Patent and Trademark Office recently announced proposed rule changes for proceedings before the Trademark Trial and Appeal Board (“TTAB”), which hears oppositions to pending applications to register trademarks as well as challenges to existing registrations.
There are a wide range of proposed changes but the most significant relate to discovery.
First and foremost, the USPTO proposes allowing parties to submit trial testimony by affidavit. The current practice is take the deposition of the witness and then submit the deposition transcript as trial testimony, although the current rules do allow for alternative methods, including submission of an affidavit, but only at the agreement of both parties. The proposed rule change would allow a party to unilaterally submit a signed declaration from the witness. The opposing party can then demand the right to orally cross-examine the witness.
Other proposed changes to the discovery process also reflect an attempt to streamline the proceeding. For example, the USPTO proposes limiting the number of document requests and requests for admission and requiring that they be served in time for responses to be provided before the close of the discovery period. The proposed changes also include reference to the “rule of proportionality” that went into effect for the Federal Rules of Civil Procedure in December 2015, which rule provides that discovery must be proportional to the needs of the case, considering, among other things, the parties’ resources and whether the burden or expense of the proposed discovery outweighs it likely benefit.
The proposed changes are expressly designed to “promote efficient trial procedure.” It seems likely that most will have that effect and in turn result in a less costly and lengthy procedure for litigants. To this end, the proposed changes would seem to benefit both trademark owners and challengers. However, it remains to be seen whether, assuming the proposed change goes into effect, the use of testimony by affidavit will significantly decrease the use of depositions or whether it will result in gamesmanship and/or litigants routinely requesting the opportunity to cross-examine a witness who has provided an affidavit.