may not be withdrawn without prejudice except with the consent of the registrant.

2.115 Amendment of petition for cancellation. A petition for cancellation may be amended in the same manner and to the same extent as a complaint in a civil action before a United States district court. See Rule 15 of the Federal Rules of Civil Procedure.

PROCEDURE IN INTER PARTES PROCEEDINGS

AUTHORITY NOTE: Rules 2.117 to 2.136 interpret or apply sec. 17, 60 Stat. 434; 15 U.S.C. 1067.

2.117 Federal Rules of Civil Procedure. (a) Except as otherwise provided, procedure and practice in inter partes proceedings shall be governed by the Federal Rules of Civil Procedure wherever considered applicable and appropriate.

(b) The party having the latest filing date in an interference, the opposer in an opposition proceeding, the petitioner in a cancellation proceeding, and the applicant to register as a concurrent lawful user (or such applicant having the latest filing date), shall be deemed to be in the position of plaintiff, and the other parties to such proceedings shall be deemed to be in the position of defendants.

(c) The opposition and the petition to cancel, and the answers thereto, correspond to complaint and answer in court proceedings. Such pleadings as may be filed in interference and concurrent registration proceedings will be treated as complaints or affirmative defenses, depending upon the party filing, but the filing of a pleading in such proceedings shall not operate to change the position of the parties as set forth in the preceding paragraph.

(d) The assignment of testimony periods corresponds to setting a case for trial in court proceedings.

(e) The taking of depositions during the assigned testimony periods corresponds to the trial in court proceedings.

(f) Oral hearing corresponds to oral summation in court proceedings.

2.118 Undelivered Office notices. When the notices sent by the Patent Office to any registrant are returned to the Office undelivered, or when one of the parties resides abroad and his representative in the United States is unknown, additional notice may be given by publication in the Official Gazette for such period of time as the Commissioner may direct.

2.119 Service of papers. (a) Every paper filed in the Patent Office in inter partes cases, including appeals, must be served upon the other parties as provided by rule 1.248 (Patent Rule 248) except the notices of interference (rule 2.93), the notice of opposition (rule 2.105), the petition for cancellation (rule 2.113) and the notices of a

concurrent use proceeding (rule 2.99), which are mailed by the Patent Office. Proof of such service must be made before the paper will be considered by the Office. A statement signed by the attorney or agent, attached to or appearing on the original paper when filed, clearly stating the time and manner in which service was made will be accepted as prima facie proof of service.

(b) When service is made by mail, the date of mailing will be considered the date of service. Whenever a party is required to take some action within a prescribed period after the service of a paper upon him by another party and the paper is served by mail, five days shall be added to the prescribed period.

NOTE: Patent Rule 248 reads as follows:

1.248. SERVICE OF PAPERS; MANNER OF SERVICE. Service of papers must be on the attorney or agent of the party if there be such or on the party if there is no attorney or agent, and may be made in either of the following ways: (a) by delivering a copy of the paper to the person served; (b) by leaving a copy at the usual place of business of the person served with someone in his employment; (c) when the person served has no usual place of business, by leaving a copy at his residence, with a member of his family over 14 years of age and of discretion; (d) transmission by first class mail, which may also be certified or registered. Whenever it shall be satisfactorily shown to the Commissioner that none of the above modes of obtaining or serving the paper is practicable, service may be by notice published in the Official Gazette.

2.120 Discovery procedure. The provisions of the Federal Rules of Civil Procedure relating to discovery are inapplicable in inter partes trademark cases except as specifically set forth in this section.

(a) Depositions for discovery. (1) Any party to an opposition, interference, cancellation or concurrent use proceeding may, at any time not later than thirty days prior to the day upon which any testimony may first be taken as set by initial or subsequent Office action, take the deposition of any person, including a party, for the purpose of discovery. Such depositions may be taken upon oral examination in the manner prescribed by rules 1.273, 1.274 and 1.275 of this chapter, or upon written questions in the manner prescribed by rule 2.124. The responsibility for securing the attendance of proposed deponents rests wholly with the interested party.

(2) Scope of examination. The deponent may be examined regarding any matter, not privileged, which is relevant to the subject matter involved in the proceeding, whether it relates to the claim or defense of the examining party or to the claim or defense of any other party, including the existence, description, nature, custody, condition and location of any books, documents, or other tangible things and the identity and location of persons having knowledge of relevant facts. It is not ground for objection that the testimony would be inadmissible at the trial if the testimony sought appears reasonably calculated to lead to the discovery of admissible evidence.

(3) Use of discovery depositions. Discovery depositions may be used in accordance with rule 26 (d) (1), (2) and (4) and (f) of the Federal Rules of Civil Procedure, provided the party offering the deposition, or any part thereof, in evidence files the same before the close of his testimony period and also files a notice of reliance thereon. Objections, including any made during the examination, will be considered only if made or renewed at the hearing.

(b) Request for admission. (1) Any party to an opposition, interference, cancellation or concurrent use proceeding may, within the time specified for taking depositions for discovery, serve upon any adverse party two copies of a written request for admission by the latter of the genuineness of any relevant document described in and attached to the request (a photocopy may be attached provided the original thereof is made available for inspection), or of the truth of any facts which are material and relevant to the issues and which are believed to be within the knowledge of both the parties serving and the parties served. Each matter in respect of which an admission is requested shall be considered as admitted unless, within fifteen days after service thereof, the party to whom the request is directed serves upon the party requesting the admission a sworn statement denying specifically the matter in respect of which admission is requested, or setting forth in detail the reasons why he cannot truthfully either admit or deny the same, or files objections thereto together with one copy of the request for admission. Any reply to such objection shall be due within ten days after service thereof.

(2) Effect of admissions. No admission shall be considered as part of the record in the case unless a party files, before the close of his testimony period, a notice of reliance thereon and a copy of the admission and request therefor.

(c) Motion to produce documents, etc., for inspection and copying. Upon motion showing good cause therefor, filed prior to the day upon which any testimony may first be taken as set by initial or subsequent Office action, an order may be entered requiring a party to produce and permit the inspection and copying or photographing, by or on behalf of the moving party, of any designated books, documents or other tangible things, not privileged, the existence of which has been pleaded or otherwise acknowledged, and which constitute or contain material within the scope of inquiries permitted in depositions for discovery and which are in his possession, custody or control. The order shall specify a time for compliance therewith, and may prescribe such terms and conditions as may be just.

(d) Refusal to comply with an order to produce. If any party fails or refuses to comply with an order to produce and permit the inspection and copying or photographing of designated things, the

Trademark Trial and Appeal Board may strike out all or any part of any pleading of that party, or dismiss the action or proceeding or any part thereof, or enter a judgment as by default against that party, or take such other action as may be deemed appropriate.

(e) Examination and cross-examination. A party may interrogate any unwilling or hostile witness by leading questions. A party may call an adverse party or an officer, director, or managing agent of a public or private corporation or of a partnership or association which is an adverse party, and interrogate him by leading questions and contradict and impeach him in all respects as if he had been called by the adverse party, and the witness thus called may be contradicted and impeached by or on behalf of the adverse party also, and may be crossexamined by the adverse party only upon the subject matter of his examination in chief.

(f) Interrogatories. (1) Any party to an opposition, interference, cancellation or concurrent use proceeding may, within the time specified for taking depositions for discovery, serve upon any adverse party a written interrogatory limited to the name and address of the person or persons having knowledge of the facts contained in the pleading of such adverse party. An answer to the interrogatory shall be served upon the interrogating party within fifteen days after receipt thereof.

(2) If a party refuses to answer an interrogatory so limited, the Trademark Trial and Appeal Board may take any of the measures specified in paragraph (d) of this section for refusal to comply with an order to produce.

2.121 Assignment of times for taking testimony. (a) Times will be assigned for the taking of testimony in behalf of each of the parties, and no testimony shall be taken except during the times assigned. If there be more than two parties to an interference, the times for taking testimony will be so arranged that each shall have an opportunity to prove his case against prior parties, to rebut their evidence, and to meet the evidence of junior parties.

(b) The times will ordinarily be assigned in the notices sent by the Patent Office in interferences and in concurrent use proceedings, and in a notice sent after the answers have been filed in cases of opposition and cancellation.

2.122 Matters in evidence. (a) The files of the applications or registrations specified in the declaration of interference or in the notice in case of concurrent registration proceedings, of the application against which an opposition is filed, and of the registration against which a petition for cancellation or an affirmative defense requesting cancellation is filed, form part of the record of the proceeding without any action by the parties, and may be referred to for any relevant and competent purpose.

(b) 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 two copies of the printed registration accompany the opposition or petition. The Office will take notice of the fact shown by its records of renewal of such registrations, the publication thereof under section 12 (c), the filing of affidavits under section 8, and the filing of affidavits under section 15, and such matters need not be proved by the parties. Notice will also be taken of a recorded assignment identified in an opposition or petition to cancel or other pleading, and such pleaded recorded paper need not be otherwise proved by the parties.

2.123 Testimony in inter partes cases. (a) Testimony of witnesses in inter partes cases may be taken (1) by depositions on oral examination in accordance with rules 1.273 to 1.281, 1.283, 1.285, 1.286 of this chapter (Patent Rules 273 to 281, 283, 285, 286), or (2) by written questions as provided by rules 2.124 and 2.124a.

(b) 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 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 what a particular witness would testify to if called, or the facts in the case of any party may be stipulated.

(c) Printed publications, such as books and periodicals, available to the general public in libraries or of general circulation, and official records, may be introduced as provided in rule 1.282 (Patent Rule 282) of this chapter. When a copy of an official record of the Patent Office is filed, it need not be a certified copy.

(d) Evidence not obtained and filed in compliance with these sections will not be considered.

(66 Stat. 795; 35 U.S.C. 23)

NOTE: The Patent Rules referred to above read as follows:

1.273. NOTICE OF EXAMINATION OF WITNESSES. (a) Before the depositions of witnesses shall be taken by a party, due notice in writing shall be given to the opposing party or parties, as provided in rule 248, of the time when and place where the depositions will be taken, of the cause or matter in which they are to be used, and the name and address of each witness to be examined; if the name of a witness is not known a general description sufficient to identify him or the particular class or group to which he belongs, together with a satisfactory explanation, may be given instead. The opposing party shall have full opportunity, either in person or by attorney, to cross-examine the witnesses. If the opposing party shall attend the examination of witnesses not named in the notice, and shall either cross-examine such witnesses or fail to object to their examination, he shall be deemed to have waived his right to object to such examination for want of notice. Neither party shall take testimony in more than one place