				     *****

   5. Section 2.102 is proposed to be amended by revising paragraph (d)
to read as follows:
   
   2.102 Extension of time for filing an opposition.

				     *****

   (d) Every request to extend the time for filing a notice of
opposition should be submitted in triplicate [(original plus two
copies)].
   6. Section 2.111 is proposed to be amended by revising paragraphs (b)
and (c)(1) to read as follows:
   
   2.111 Filing petition for cancellation.

				     *****

   (b) Any entity which believes that it is or will be damaged by a
registration may file a petition, which should be addressed to the
Trademark Trial and Appeal Board, to cancel the registration in whole or
in part. The petition need not be verified, and may be signed by the
petitioner or the petitioner's attorney or other authorized
representative. The petition may be filed at any time in the case of
registrations on the Supplemental Register or under the Act of 1920, or
registrations under the Act of 1881 or the Act of 1905 which have not
been published under section 12(c) of the Act, or on any ground
specified in section 14>(3)< [(c)] or >(5)< [(e)] of the Act. In all
other cases the petition and the required fee must e filed within five
years from the date of registration of the mark under the Act or from
the date of publication under section 12(c) of the Act.
   (c)(1) The petition must be accompanied by the required fee for each
class in the registration for which cancellation is sought (see   [  ]
>2.6(a)(16)< [2.6(1) and 2.85(e)]). If the fees submitted are
insufficient for a cancellation against all of the classes in the
registration, and the particular class or classes against which the
cancellation is filed are not specified, the Office will issue a written
notice allowing petitioner until a set time in which to submit the
required fees(s) (provided that the five-year period, if applicable, has
not expired) or to specify the class or classes sought to be cancelled.
If the required fee(s) is not submitted, or the specification made,
within the time set in the notice, the cancellation will be presumed to
be against the class or classes in ascending order, beginning with the
lowest numbered class, and including the number of classes in the
registration for which the fees submitted are sufficient to pay the fee
due for each class.
   
				     *****

   7. Section 2.117 is proposed to be amended by revising paragraphs (a)
and (b) to read as follows:
   
   2.117 Suspension of proceedings.

   (a) Whenever it shall come to the attention of the Trademark Trial
and Appeal Board that >a party or< parties to a pending case are engaged
in a civil action >or a Board proceeding< which may >have a bearing on<
[be dispositive of] the case, proceedings before the Board may be
suspended until termination of the civil action.
   (b) Whenever there is pending >before the Board both a motion to
suspend and< [, at the time when the question of the suspension of
proceedings is raised,] a motion which is potentially dispositive of the
case, the >potentially dispositive< motion may be decided before the
question of suspension is considered >regardless of the order in which
the motions were filed<.
   
				     *****

   8. Section 2.119 is proposed to be amended by revising paragraph (d)
to read as follows:
   
   2.119 Service and signing of papers.

				     *****

   (d) If a party to an inter partes proceeding is not domiciled in the
United States and is not represented by an attorney or other authorized
representative located in the United States, the party must designate by
written document filed in the Patent and Trademark Office the name and
address of a person resident in the United States on whom may be served
notices or process in the proceeding. In such cases, official
communications of the Patent and Trademark Office will be addressed to
the domestic representative unless the proceeding is being prosecuted by
an attorney at law or other qualified person duly authorized under   
10.14(c) of this subchapter. The mere designation of a domestic
representative does not authorize the person designated to prosecute the
proceeding unless qualified under    10.14(a), or qualified under
[paragraph (b) or (c) of]    10.14>(b)< and authorized under    2.17(b).
   
				     *****

   9. Section 2.120 is proposed to be amended by redesignating current
paragraphs (e) and (h) as (e)(1) and (h)(2), respectively; adding new
paragraphs (e)(2), (h)(1), and (h)(3); and revising paragraphs (a), (d),
and (g)(1) and redesignated paragraphs (e)(1) and (h)(2) to read as
follows:
   
   2.120 Discovery.

   (a) In general. >Wherever appropriate, the< [The] provisions of the
Federal Rules of Civil Procedure relating to discovery shall apply in
opposition, cancellation, interference and concurrent use registration
proceedings except as otherwise provided in this section. >The
provisions of the Federal Rules of Civil Procedure relating to automatic
disclosure, scheduling conferences, conferences to discuss settlement
and to develop a discovery plan, and transmission to the court of a
written report outlining the discovery plan, are not applicable to Board
proceedings. <The Trademark Trial and Appeal Board will specify the
>opening and< closing date>s< for the taking of discovery. >The
discovery period will be set for a period of 180 days. Interrogatories,
requests for production of documents and things, and requests for
admission must be served in sufficient time that responses will fall due
prior to the close of the discovery period. Discovery depositions must
be noticed and taken prior to the close of the discovery period.
Extensions of the discovery period will be granted only upon stipulation
of the parties approved by the Board. The parties may stipulate to a
shortening of the discovery period. Responses to interrogatories,
requests for production of documents and things, and requests for
admission must be served within 40 days from the date of service of such
discovery requests. The time to respond may be extended upon stipulation
of the parties, or upon motion showing extraordinary circumstances
granted by the Board. The resetting of a party's time to respond to an
outstanding request for discovery will not result in the automatic
rescheduling of the discovery and/or testimony periods; the discovery
period will be rescheduled only upon stipulation of the parties approved
by the Board, and testimony periods will be rescheduled only upon
stipulation of the parties approved by the Board, or upon motion showing
extraordinary circumstances granted by the Board.< [The opening of
discovery is governed by the Federal Rules of Civil Procedure.]
   
				     *****

   (d) Interrogatories; request for production. (1) The total number of
written interrogatories which a party may serve upon another party
pursuant to Rule 33 of the Federal Rules of Civil Procedure, in a
proceeding, shall not exceed >25< [seventy-five], counting subparts,
except [that the Trademark Trial and Appeal Board, in its discretion,
may allow additional interrogatories upon motion therefor showing good
cause, or] upon stipulation of the parties. [A motion for leave to serve
additional interrogatories must be filed and granted prior to the
service of the proposed additional interrogatories; and must be
accompanied by a copy of the interrogatories, if any, which have already
been served by the moving party, and by a copy of the interrogatories
proposed to be served.] If a party upon which interrogatories have been
served believes that the number of interrogatories served exceed>s< the
limitation specified in this paragraph, and is not willing to waive this
basis for objection, the party shall, within the time for (and instead
of) serving answers and specific objections to the interrogatories,
serve a general objection on the ground of their excessive number. If
the inquiring party, in turn, files a motion to compel discovery, the
motion must be accompanied by a copy of the set(s) of interrogatories
which together are said to exceed the limitation, and must otherwise
comply with the requirements of paragraph (e) of this section.
   (2) >The total number of requests for production of documents and
things which a party may serve upon another party pursuant to Rule 34 of
the Federal Rules of Civil Procedure, in a proceeding, shall not exceed
15, counting subparts, except upon stipulation of the parties. If a
party upon which requests for production of documents and things have
been served believes that the number of requests served exceeds the
limitation specified in this paragraph, and is not willing to waive this
basis for objection, the party shall, within the time for (and instead
of) serving answers and specific objections to the requests, serve a
general objection on the ground of their excessive number. If the
inquiring party, in turn, files a motion to compeldiscovery, the motion
must be accompanied by a copy of the set(s)  of requests which together
are said to exceed the limitation, and  must otherwise comply with the
requirements of paragraph (e) of this section. <The production of
documents and things under the provisions of Rule 34 of the Federal
Rules of Civil Procedure will be made at the place where the documents
and things are usually kept, or where the parties agree, or where and in
the manner which the Trademark Trial and Appeal Board, upon motion,
orders.
   (e) Motion for an order to compel discovery. >(1)< If a party fails
to designate a person pursuant to Rule 30(b)(6) or Rule 31(a) of the
Federal Rules of Civil Procedure, or if a party or such designated
person, or an officer, director or managing agent of a party fails to
attend a deposition or fails to answer any question propounded in a
discovery deposition, or any interrogatory, or fails to produce and
permit the inspection and copying of any document or thing, the party
seeking discovery may file a motion before the Trade mark Trial and
Appeal Board for an order to compel a designation, or attendance at a
deposition, or an answer, or production and an opportunity to inspect
and copy. >The motion must be filed within 30 days after the close of
the discovery period, as originally set or as reset.< The motion shall
include a copy of the request for designation or of the relevant portion
of the discovery deposition; or a copy of the interrogatory with any
answer or objection that was made; or a copy of the request for
production, any proffer of production or objection to production in
response to the request, and a list and brief description of the
documents or things that were not produced for inspection and the
documents or things that were not produced for inspection and copying.
The motion must be supported by a written statement from the moving
party that such party or the attorney therefor has made a good faith
effort, by conference or correspondence, to resolve with the other party
or the attorney therefor the issues presented in the motion and has been
unable to reach agreement. If issues raised in the motion are
subsequently resolved by agreement of the parties, the moving party
should inform the Board in writing of the issues in the motion which no
longer require adjudication.
   >(2) When a party files a motion for an order to compel discovery,
the case will be suspended by the Trademark Trial and Appeal Board with
respect to all matters not germane to the motion, and no party should
file any paper which is not germane to the motion, except as otherwise
specified in the Board's suspension order. The filing of a motion to
compel shall not toll the time for a party to respond to any outstanding
discovery requests or to appear for any noticed discovery deposition.<
   
				     *****

   (g) Sanctions. (1) If a party fails to comply with an order of the
Trademark Trial and Appeal Board relating to discovery, including a
protective order, the Board may make any appropriate order, including
any of the orders provided in Rule 37(b)(2) of the Federal Rules of
Civil Procedure, except that the Board [does not have authority to]
>will not< hold any person in contempt or [to] award any expenses to any
party. The Board may impose against a party any of the sanctions
provided by this subsection in the event that said party or any
attorney, agent, or designated witness of that party fails to comply
with a protective order made pursuant to Rule 26(c) of the Federal Rules
of Civil Procedure.
   
				     *****

   (h) Request>s< for admission[s]. >(1)< [Requests for admissions shall
be governed by Rule 36 of the Federal Rules of Civil Procedure except
that the Trademark Trial and Appeal Board does not have authority to
award any expenses to any party.] >The total number of requests for
admission which a party may serve upon another party, pursuant to Rule
36 of the Federal Rules of Civil Procedure, in a proceeding, shall not
exceed 25, counting subparts, except upon stipulation of the parties. If
a party upon which requests for admission have been served believes that
the number of requests served exceeds the limitation specified in this
paragraph, and is not willing to waive this basis for objection, the
party shall, within the time for (and instead of) serving answers and
specific objections to the requests, serve a general objection on the
ground of their excessive number. If the inquiring party, in turn, files
a motion to determine the sufficiency of the objection, the motion must
be accompanied by a copy of the set(s) of requests for admission which
together are said to exceed the limitation, and must otherwise comply
with the requirements of paragraph (h)(2) of this section.
    (2) Any < [A] motion by a party to determine the sufficiency of an
answer or objection to a request made by that party for an admission
>must be filed within 30 days after the close of the discovery period,
as originally set or as reset. The motion< shall include a copy of the
request for admission and any exhibits thereto and of the answer or
objection. The motion must be supported by a written statement from the
moving party that such party or the attorney therefor has made a good
faith effort, by conference or correspondence, to resolve with the other
party or the attorney therefor the issues presented in the motion and
has been unable to reach agreement. If issues raised in the motion are
subsequently resolved by agreement of the parties, the moving party
should inform the Board in writing of the issues in the motion which no
longer require adjudication.
   >(3) When a party files a motion to determine the sufficiency of an
answer or objection to a request made by that party for an admission,
the case will be suspended by the Trademark Trial and Appeal Board with
respect to all matters not germane to the motion, and no party should
file any paper which is not germane to the motion, except as otherwise
specified in the Board's suspension order. The filing of a motion to
determine the sufficiency of an answer or objection to a request for
admission shall not toll the time for a party to respond to any
outstanding discovery requests or to appear for any noticed discovery
deposition.<
   
				     *****

   10. Section 2.121 is proposed to be amended by revising paragraphs
(a)(1), (c) and (d) to read as follows:
   
   2.121 Assignment of times for taking testimony.

   (a)(1) The Trademark Trial and Appeal Board will issue a trial order
assigning to each party the time for taking testimony. No testimony
shall be taken except during the times assigned, unless by stipulation
of the parties approved by the Board, or, upon motion, by order of the
Board. Testimony periods may be rescheduled by stipulation of the
parties approved by the Board, or upon motion >showing extraordinary
circumstances< granted by the Board; >if such a motion is denied, the
testimony periods will remain as set< [, or by order of the Board]. The
resetting of the closing date for discovery will result in the
rescheduling of the testimony periods without action by any party. [The
resetting of a party's time to respond to an outstanding request for
discovery will not result in the automatic rescheduling of the discovery
and/or testimony periods; such dates will be rescheduled only upon
stipulation of the parties approved by the Board, or upon motion granted
by the Board, or by order of the Board.]
   
				     *****

   (c) A testimony period which is solely for rebuttal will be set for
>30< [fifteen] days. All other testimony periods will be set for >60<
[thirty] days. The periods may be extended by stipulation of the parties
approved by the Trademark Trial and Appeal Board, or upon motion
>showing extraordinary circumstances< granted by the Board; >if such a
motion is denied, the testimony periods will remain as set< [, or by
order of the Board].
   (d) When parties stipulate to the rescheduling of testimony periods
or to the rescheduling of the closing date for discovery and the
rescheduling of testimony periods, a stipulation presented in the form
used in a trial order, signed by the parties, or a motion in said form
signed by one party and including a statement that every other party has
agreed thereto, and submitted >in a number of copies equal to the number
of parties to the proceeding plus one copy for the Board< [in one
original plus as many photocopies as there are parties], will, if
approved, be so stamped, signed, and dated, and >a copy< [the copies]
will be promptly returned to >each of< the parties.
   11. Section 2.122 is proposed to be amended by revising paragraphs
(b)(1) and (d)(1) to read as follows:
   
   2.122 Matters in evidence.

				     *****

   (b) Application files. (1) The file of each application or
registration specified in a >notice< [declaration] of interference, of
each application or registration specified in the notice of a concurrent
use registration proceeding, of the application against which a notice
of opposition is filed, or of each registration against which a petition
or counterclaim for cancellation is filed forms part of the record of
the proceeding without any action by the parties and reference may be
made to the file for any relevant and competent purpose.
   
				     *****

   (d) Registrations. (1) A registration of the opposer or petitioner
pleaded in an opposition or petition to cancel will be received in
evidence and made part of the record if the opposition or petition is
accompanied by two copies of the registration prepared and issued by the
Patent and Trademark Office showing both the current status of and
current title to the registration. For the cost of a copy of a
registration showing status and title, see >   2.6(b)(4)< [   2.6(n)].
   
				     *****

   12. Section 2.123 is proposed to be amended by revising paragraphs
(b) and (f) as follows:
   
   2.123 Trial testimony in inter partes cases.

				     *****

   (b) Stipulations. If the parties so stipulate in writing, depositions
may be taken before any person authorized to administer oaths, at any
place, upon any notice, and in any manner, and when so taken may be used
like other depositions. By >written< agreement of the parties, the
testimony of any witness or witnesses of any party, may be submitted in
the form of an affidavit by such witness or witnesses. The parties may
stipulate >in writing< what a particular witness would testify to if
called, or the facts in the case of any party may be stipulated >in
writing<.
   
				     *****

   (f) Certification and filing >of deposition< [by officer]. The
officer shall annex to the deposition his certificate showing:
    (1) Due administration of the oath by the officer to the witness
before the commencement of his deposition;
    (2) The name of the person by whom the deposition was taken down,
and whether, if not taken down by the officer, it was taken down in his
presence;
    (3) The presence or absence of the adverse party;
    (4) The place, day, and hour of commencing and taking the deposition;
    (5) The fact that the officer was not disqualified as specified in
Rule 28 of the Federal Rules of Civil Procedure.
   If any of the foregoing requirements are waived, the certificate
shall so state. The officer shall sign the certificate and affix thereto
his seal of office, if he has such a seal. Unless waived on the record
by an agreement, he shall then [, without delay,] securely seal in an
envelope all the evidence, notices, and paper exhibits, inscribe upon
the envelope a certificate giving the number and title of the case, the
name of each witness, and the date of sealing>. The officer or the party
taking the deposition, or its attorney or other authorized
representative, shall then< [,] address the package, and forward the
same to the Commissioner of Patents and Trademarks. If the weight or
bulk of an exhibit shall exclude it from the envelope, it shall, unless
waived on the record by agreement of all parties, be authenticated by
the officer and transmitted >by the officer or the party taking the
deposition, or its attorney or other authorized representative< in a
separate package marked and addressed as provided in this section.
   
				     *****

   13. Section 2.125 is proposed to be amended by revising paragraph (c)
to read as follows:
   
   2.125 Filing and service of testimony.

				     *****

   (c) One certified transcript and exhibits shall be filed [promptly]
with the Trademark Trial and Appeal Board. Notice of such filing shall
be served on each adverse party and a copy of each notice shall be filed
with the Board.
   
				     *****

   14. Section 2.127 is proposed to be amended by revising paragraphs
(a), (b), (d), (e)(1) and (f) to read as follows:
   
   2.127 Motions.

   (a) Every motion shall be made in writing, shall contain a full
statement of the grounds, and shall embody or be accompanied by a brief.
>Except as provided in paragraph (e)(1) of this section a< [A] brief in
response to a motion shall be filed within >30< [fifteen] days from the
date of service of the motion unless another time is specified by the
Trademark Trial and Appeal Board or the time is extended by >stipulation
of the parties approved by the Board, or upon motion showing
extraordinary circumstances granted by the Board; if such a motion for
an extension is denied, the time for responding to the motion remains as
specified under this section< [order of the Board on motion for good
cause]. >Except as provided in paragraph (e)(1) of this section, a reply
brief, if filed, shall be filed within 15 days from the date of service
of the brief in response to the motion. The time for filing a reply
brief will not be extended. No further papers in support of or in
opposition to a motion will be considered by the Board. Briefs shall be
submitted in typewritten or printed form, double spaced, in at least
pica or eleven-point type, on letter-size paper. The brief in support of
the motion and the brief in response to the motion shall not exceed 25
pages in length; and a reply brief shall not exceed 10 pages in length.
Exhibits submitted in support of or in opposition to the motion shall
not be deemed to be part of the brief for purposes of determining the
length of the brief.< When a party fails to file a brief in response to
a motion, the Board may treat the motion as conceded. An oral hearing
will not be held on a motion except on order by the Board.
   (b) Any request for reconsideration or modification of an order or
decision issued on a motion must be filed within >one month< [thirty
days] from the date thereof. A brief in response must be filed within
>15< [fifteen] days from the date of service of the request.
   
				     *****

   (d) When any party files a motion to dismiss, or a motion for
judgment on the pleadings, or a motion for summary judgment, or any
other motion which is potentially dispositive of a proceeding, the case
will be suspended by the Trademark Trial and Appeal Board with respect
to all matters not germane to the motion and no party should file any
paper which is not germane to the motion >except as otherwise specified
in the Board's suspension order. The filing of a summary judgment motion
shall not toll the time for the moving party to respond to any
outstanding discovery requests or to appear for any noticed discovery
deposition, but it shall toll the time for the nonmoving party to serve
such responses or to appear for such deposition<. If the case is not
disposed of as a result of the motion, proceedings will be resumed
pursuant to an order of the Board when the motion is decided.
   (e)(1) >A motion for summary judgment may not be filed until
notification of the proceeding has been sent to the parties by the
Trademark Trial and Appeal Board.< A motion for summary judgment>, if
filed,< should be filed prior to the commencement of the first testimony
period, as originally set or as reset, and the Board, in its discretion,
may deny as untimely any motion for summary judgment filed thereafter.
>A motion under Rule 56(f) of the Federal Rules of Civil Procedure, if
filed in response to a motion for summary judgment, shall be filed
within 30 days from the date of service of the summary judgment motion.
The time for filing a motion under Rule 56(f) will not be extended. If
no motion under Rule 56(f) is filed, a brief in response to the motion
for summary judgment shall be filed within 60 days from the date of
service of the motion unless the time is extended by stipulation of the
parties approved by the Board, or upon motion showing extraordinary
circumstances granted by the Board; if such a motion for an extension is
denied, the time for responding to the motion for summary judgment
remains as specified under this section. A reply brief, if filed, shall
be filed within 30 days from the date of service of the brief in
response to the motion. The time for filing a reply brief will not be
extended. No further papers in support of or in opposition to a motion
for summary judgment will be considered by the Board.<
   
				     *****

   (f) The Board [does not have authority to] >will not< hold any person
in contempt, or [to] award attorneys' fees or other expenses to any
party.
   
   15. Section 2.134 is proposed to be amended by revising paragraph (a)
to read as follows:

   2.134 Surrender or voluntary cancellation of registration.

   (a) After the commencement of a cancellation proceeding, if the
respondent applies for cancellation of the involved registration under
section >7(e)< [7(d)] of the Act of 1946 without the written consent of
every adverse party to the proceeding, judgment shall be entered against
the respondent. The written consent of an adverse party may be signed by
the adverse party or by the adverse party's attorney or other authorized
representative.
   
				     *****

   16. Section 2.146 is proposed to be amended by revising paragraph
(e)(1) to read as follows:
   
   2.146 Petitions to the Commissioner.

				     *****

   (e)(1) A petition from the >grant or< denial of a request for an
extension of time to file a notice of opposition shall be filed within
fifteen days from the date of mailing of the >grant or< denial of the
request>. A petition from the grant of a request< [and] shall be served
on the >attorney or other authorized representative of the potential
opposer, if any, or on the potential opposer. A petition from the denial
of a request shall be served on the< attorney or other authorized
representative of the applicant, if any, or on the applicant. Proof of
service of the petition shall be made as provided by    2.119(a). The
>potential opposer or< the applicant>, as the case may be,< may file a
response within fifteen days from the date of service of the petition
and shall serve a copy of the response on the petitioner, with proof of
service as provided by    2.119(a). No further paper relating to the
petition shall be filed.
   
				     *****

Part 3--Assignment, Recording And Rights Of Assignee

   17. The authority citation for Part 3 continues to read as follows:
   
   Authority: 15 U.S.C. 1123; 35 U.S.C. 6.17a.Section 3.41 is proposed
to be revised to read as follows:
   
   3.41 Recording fees.

   All requests to record documents must be accompanied by the
appropriate fee. A fee is required for each application, patent and
registration against which the document is recorded as identified in the
cover sheet. The recording fee is set in    1.21(h) of this chapter for
patents and in >   2.6(b)(6)< [   2.6(q)] of this chapter for trademarks.
   
   
May 30, 1997        					    BRUCE A. LEHMAN
				        Assistant Secretary of Commerce and
				     Commissioner of Patents and Trademarks					
