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Click to edit Master title style

David W. Grace Co-Chair IP Protection

Loeb & Loeb

Jane Shay Wald Partner Emeritus

Irell & Manella LLP

Washington in the West January 24, 2014

T.T.A.B. Best Practices Francie Gorowitz

Administrative Trademark Judge U.S. Patent and Trademark Office Trademark Trial and Appeal Board

Click to edit Master title style Types of Proceedings

• Ex Parte Appeals: Appeal from the examiner’s ex officio refusal

• Oppositions: Filed by any party who believes it would be injured by registration

• Cancellations: Same as opposition – may be filed on most grounds for five years after registration

• Concurrent Use: Request for a geographically limited registration

Click to edit Master title style Administrative Trademark Judges

• Write final decisions on merits

• Consult with Interlocutory Attorneys on dispositive motions

Click to edit Master title style Interlocutory Attorneys

• Draft and issue orders on non-dispositive motions – Discovery motions

– Contested scheduling motions

– Complicated uncontested motions

• Draft orders on contested dispositive motions for panel of judges – Motions for summary judgment

– Motions for sanctions

– Motions to dismiss

Click to edit Master title style Pick up the Phone

The interlocutory on your case will help you.

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Click to edit Master title style Paralegals

• Draft and issue orders on consented motions and uncontested motions – Extensions of time to oppose

– Extensions of time

– Stipulated dispositions

• Draft orders for Interlocutory Attorney signature

Click to edit Master title style Procedure – Ex Parte Appeals

• Applicant must file an appeal within 6 months of final refusal to register

• No new evidence permitted

• Applicant and examining attorney submit briefs

• Applicant may request oral hearing

• Participation by video from remote location possible


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Click to edit Master title style TTAB’s Role

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OR

NO INJUNCTION

Click to edit Master title style Why TTAB?

• To oppose I-T-U

• To keep register clean

• Prior litigation (discovery)

• Cheaper, not faster

• Settlement opportunities

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Click to edit Master title style USPTO.GOV – Your Lifeline to the TTAB

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http://www.uspto.gov/trademarks/process/appeal

Click to edit Master title style TTABVUE

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• Are you really first? • Are you sure? • Timely filing? • Read file history • Investigate • History between parties? • Other relevant marks

(registered or not) – if Madrid Protocol – Central attack issues

• Consider worldwide implications (strategy)

• Third-party references? • Why aren’t you in District

Court?

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INTER PARTES PRE-FILING CONSIDERATIONS Making a list, checking it twice…

Click to edit Master title style Rules, rules, rules…

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MORE RULES:


Look here: Rules 26 through 34 and Rules 36, 37 FRCivP, adopted for TTAB proceedings by Trademark Rule 2.116; 37 C.F.R. Sec. 2.116 Trademark Rule 2.120; 37 C.F.R. 2.120 Trademark Rule 2.121, 37 C.F.R. 2.121 Trademark Rule 2.124, 37 C.F.R. 2.124 Where there is a difference between FRCivP and Trademark Rule, the Trademark Rule controls. Trademark Rule 2.116(a); 37 C.F. R. Sec 2.116(a) Trademark Board Manual of Procedure (TBMP) Chapter 400 – annotated with cites to case law. Sequence and timing of discovery are specified in TTAB’s “Institution Notice and Trial Order.”

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Seek And Ye Shall Find, Maybe…

Click to edit Master title style Publication for Opposition

• Initial opposition period is 30 days

• Maximum of 180 days from publication

Publication (30 days)

First 30 days – no reason necessary

Next 60 days – for good cause (or consent)

Final 60 days – with consent or under extraordinary circumstances

First 90 Days – for good cause and/or consent


• Pls plead/prove they “believe they will be damaged by registration of the mark.”

• “More than a mere intermeddler.”

• Pl doesn’t have to own a trademark (or reg or ap) at all!

• No “actual” damage need be pleaded or proven.

• Plead : priority not at issue.

• If common law, prove priority.

• If cancellation, prove priority.

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Standing Presumed When Plaintiff Alleges and Proves Likelihood of Confusion; Dilution

®


See Scheduling Order

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SEQUENCE of TTAB Inter Partes Proceeding


Defendant may not challenge the validity of plaintiff’s registration without cancellation counterclaim

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Counterclaims – Get Compulsive!

Click to edit Master title style Cancellation – Filing

• Within five years of registration – may be based on any ground for refusal

• After five years – limited grounds – Generic – Functional – Abandoned – Obtained by fraud – False Association


Similar to Summary Judgment.

TTAB resolves case based on a largely stipulated record.

Parties agree that, in lieu of trial, TTAB can resolve any issues of material fact.

TTAB issues quicker decision.

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Accelerated Case Resolution (ACR)


TTAB’s Standard Protective Order automatically applies.

Ok to submit your own.

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Standard Protective Order


• Opening: Discovery/settlement conference and opening of the discovery period - 30 days after answer due

• Next step: Parties serve mandatory initial disclosures 60 days after answer due.

• Only then: Parties may serve discovery.

• Final Act: Discovery motions.

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TTAB - Choreography of Discovery


Discovery closes on date TTAB specifies in scheduling order.

Ok to propound written discovery on last day, but depositions must be concluded by close of discovery.

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TTAB – Time for Discovery


The TTAB does not issue subpoenas.

Obtain subpoena from U.S. District Court where witness is located.

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Subpoena


• Only after initial disclosures

• Suspension pending determination of motion, but not automatic

• Evidentiary record

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Motion for Summary Judgment


• TTAB trial 60 days after close of discovery:

• Plaintiff’s 30 day “testimony period”

• Defendant’s 30 day “testimony period”

• Plaintiff’s 15 day “rebuttal testimony period”

• (30 day “pauses” between each testimony period)

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Trial


• Evidence is essential

• Evidentiary rules are enforced

• Evidence cannot be submitted for first time with trial briefs

Evidence, Evidence, Evidence


• Exhibits attached to your final briefs are not your evidence

• Prepare/submit your evidence during the testimony period that facilitates easy reference to the materials in the final briefs

• Form, formatting, and method of submission

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Briefs on Final Hearing Ex Parte and Inter Partes


• Hearing scheduled only if requested

• Attendance of non-requesting party optional in inter partes case

• Video participation possible

• No recording or transcript; arguments not part of the record

• No new evidence

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Oral Hearing


• Ex Parte Appeals – 6%, 17%, 5%

• Oppositions – 34%, 36%, 24%

• Cancellations – 30%, 22%, 44%

Oral Hearings – 2011, 2012, 2013

Click to edit Master title style Decision

• Panel of three Administrative Judges

• Resolve evidentiary issues

• Findings of fact and conclusions of law

• Dissenting or concurring opinions

Click to edit Master title style Appeal to Civil Court

– Within 60 days

– Two options

• Federal Circuit – appeal on record

• U.S. District Court – hybrid of appeal and new trial

–Must reimburse PTO for fees – See Shamas v. Focarino, (E.D. VA Jan. 2, 2014 )

Click to edit Master title style Thank You!

Jane Shay Wald Partner Emeritus

Irell & Manella LLP

Francie R. Gorowitz Adminiistrative Law Judge

TTAB

David W. Grace Partner & Co-Chair IP

Loeb & Loeb LLP

click to edit master title style - laipla€¦ · francie gorowitz administrative trademark judge...

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