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

2. 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

3. 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

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

5. 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

6. 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

7. 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Non-precedential decisions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

8. Court of Appeals for the Federal Circuit

9. 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

10. 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

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

12. 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

13. 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

14. 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

15. 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

16. 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

17. 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

18. 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 § – “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

19. 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

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