TRADEMARK TRIAL AND APPEAL BOARD OVERVIEW Stephanie H. Bald Kelly IP, LLP 2016 AIPLA Eighth Annual Trademark Boot Camp

Composition of the TTAB Director of the USPTO Deputy Director of the USPTO Commissioner for Patents Commissioner for Trademarks Administrative Trademark Judges Interlocutory Attorneys Paralegals Support Staff

Composition of the TTAB Director, Deputy Director, and Commissioners delegate their authority to the Administrative Trademark Judges 23 judges + 1 chief judge + 1 deputy chief judge = 25 judges Conduct hearings and issue final decisions on merits Ex Parte appeals Inter Partes proceedings Consult with Interlocutory Attorneys on dispositive motions Motions for Summary Judgment Motions to Dismiss Motions for Sanctions Panel comprises 3 judges Rare en banc hearings

TTAB Judges In Action Administrative Trademark Judges Wellington, Mermelstein and Bergsman

Composition of the TTAB Interlocutory Attorneys Draft orders on contested motions signed by the judges Draft and issue orders on non-dispositive motions Discovery motions Contested scheduling motions Paralegals Draft and issue orders on uncontested and consented motions Draft and issue notices of default and default judgments

Authority and Jurisdiction U.S. Trademark Act (Lanham Act) 15 U.S.C. §1051, et seq. Rules of Practice in Trademark Cases 37 C.F.R. Part 2 (Code of Federal Regulations) Federal Rules of Civil Procedure Federal Rules of Evidence Jurisdiction Administrative tribunal Determines the right to register Does not decide questions of infringement or unfair competition Cannot declare provisions of the Lanham Act unconstitutional No money damages or injunctions

TTAB Decisions TTAB proceedings governed by decisions in prior cases CAFC/CCPA precedent Determines appeals from decisions of the TTAB Court of Customs and Patent Appeals – predecessor of CAFC TTAB precedent Director of the USPTO Decides petitions seeking review of TTAB actions on procedural issues TTAB follows these decisions in cases raising similar procedural issues Precedential designations “citable as precedent,” “precedent of the Board,” or “for publication in full” Non-precedential decisions May be published in digest form in USPQ/Westlaw/LEXIS Not binding on TTAB but may be cited for whatever persuasive weight the TTAB accords

Court of Appeals for the Federal Circuit

Decision Time Opp. or Canc. can take a year and a half Average time from briefing to final decision is 11 weeks Average time for contested motions is 8 weeks ACR – 50 days or less

Availability of Decision Sources for decisions BNA/USPQ LEXIS/NEXIS WESTLAW TTAB home page of USPTO website - uspto.gov/trademarks-application-process/trademark-trial-and-appeal-board-ttab TTABVUE - ttabvue.uspto.gov

Types of Proceedings EX PARTE APPEALS INTER PARTES PROCEEDINGS Oppositions Cancellations Interferences Concurrent Use Proceedings

Ex Parte Appeals Appeal of a final decision by a USPTO Examining Attorney Involves filing of briefs by applicant and Examining Attorney Applicant may request oral argument

Oppositions Challenge by any party who feels it would be damaged by the registration of a pending application Must file a Notice of Opposition or an Extension of Time to Oppose within 30 days of publication of the mark in the Official Gazette

Cancellations Challenge by any party who feels it would be damaged by a mark that has been registered Some grounds for cancellation are unavailable if the registration is more than five years old Likelihood of confusion Descriptiveness

Concurrent Use Proceedings TTAB determines whether applicants are entitled to own registrations that are restricted as to mode or place of use of mark Generally related to claimed geographic areas of use Mark used in commerce prior to the earliest of the filing dates of any applications pending or any registration issued See further filing date scenarios and caveats under 15 U.S.C. 1052(d)(2) and (3) Concurrent Use applicant must show that use of the mark for which it seeks concurrent use registration will not result in a likelihood of confusion due to proposed limitations

Stages of an Inter Partes Proceeding Pleadings – define the issues Discovery – exchange of information Trial – presentation of evidence and argument Post-trial – appeal or motion following TTAB’s decision

Motion Practice Trademark Trial and Appeal Board Manual of Procedure (TBMP) lists 43 types of motions For further information, see Chapter 500 of the TBMP

Accelerated Case Resolution “Any agreement by the parties to a more efficient and expedient means for creating a record and briefs on which the TTAB can decide the legal issues presented by the case” (Chief Judge Rogers, 2012) TBMP § 702.04 – “The form of ACR can vary, but the process generally approximates a summary bench trial or cross-motions for summary judgment and accompanying evidentiary submissions . . . ” Procedural option available when agreed on by both parties

Accelerated Case Resolution TTAB encourages ACR as a way to avoid formal trial Why pursue ACR? Streamline discovery and trial Save time and resources Final decision within 50 days of briefing

Resources ESTTA – E-filing of TTAB papers TTABVUE – Viewing TTAB proceeding information and filings online TBMP - Trademark Trial and Appeal Board Manual of Procedure