March 1, 2017

TTAB Update: New Rule Changes, Practice Tips and Recent Notable

Cases

Cynthia Walden

Principal & Practice

Group Leader

Robert M. O’Connell, Jr.

Of Counsel

Trademark & Copyright Webinar Series

Overview

Materials available post-webinar on fr.com/webinars

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Agenda

• How Are Things At The TTAB

• New Rule Changes

• Strategic Considerations At The TTAB In A Post-

B&B Hardware World

• Recent Significant Cases & Trends

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What’s Going On At The TTAB Lately?

Personnel Changes

• New judge Robert Coggins appointed January 2017

• Former interlocutory attorney, former examiner

• Judge Ellen Seeherman retired December 2016

• New judge Christopher Larkin appointed September 2016

• Former partner at Seyfarth Shaw

• New judge George Pologeorgis appointed February 2016

• Former interlocutory attorney, former examiner

• Currently 26 TALJ’s on the Board

• 14.6 FTE Interlocutory Attys

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Performance Metrics: Workload

• New cases filed last year:

• 3,121 Appeals

• 5,881 Oppositions

• 1,848 Cancellations

• Up 4% - 11% from 2015 numbers

• 2017 Q1 filings at or slightly higher than 2016

• Currently pending:

• 1,441 Appeals

• 5,414 Oppositions

• 1,748 Cancellations

• Source: TTAB Dashboard

https://www.uspto.gov/dashboards/TTAB/main.dashxml

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Performance Metrics: Wait Times

• Average total pendency times in 2016:

• Appeals: 39.7 weeks

• Inter partes cases: 154.3 weeks

• ACR trial cases: 98.4 weeks

• Current average time from briefing to decision:

• Contested motions: 7.6 weeks

• Final decisions (both appeals and inter partes cases): 7.3 weeks

• Inventory currently briefed and awaiting decisions:

• 87 Appeals

• 29 Trial cases

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Performance Metrics: Appellate Record

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TTAB went 4-3 at the CAFC in the past year

• Affirmances:

• Emerald Cities Collaborative Inc. v. Roese, affirms TTAB cancellation of registration based on invalid assignment of ITU application

• In re Prema Jyothi Light, affirms TTAB holding that proposed 660-word “mark” does not function as a trademark

• Oakville Hills Cellar, Inc. v. Georgallis Holdings LLC, affirms TTAB finding MAYA and MAYARI not confusingly similar for wine

• In re Cordura Restaurants LP, affirms TTAB holding that CHURRASCOS is generic for restaurant services, despite stylization and prior registration

• Reversals:

• In re Driven Innovations, Inc., reversing TTAB finding that the mark DOTBLOG is merely descriptive for online information services

• In re JobDiva, Inc., vacates TTAB finding of partial abandonment over distinction between SaaS and analog rendering of services

• Christian Faith Fellowship Church v. adidas, reverses TTAB and holds that sale of two hats to out-of-state customer = interstate commerce

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Rule Changes At The TTAB

TTAB Rule Changes

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Effective January 14, 2017

• First major rule revisions since 2007

• New rules apply to proceedings already in progress as of January

14, 2017 as well as to proceedings instituted on or after January 14,

2017

• TMBP has been updated to incorporate these changes as of

January 14, 2017

• For a full list of the TTAB rule changes, visit the TTAB website at

https://www.uspto.gov/trademarks-application-process/trademark-

trial-and-appeal-board-ttab

E-filing Now Mandatory

• All submissions must be made electronically through

ESTTA

• Exceptions only for complaints, answers and extensions

of opposition deadlines, and only if extraordinary

circumstances can be shown (including issues with the

ESTTA filing system or firm computer systems)

• No exceptions if the subject mark is a Madrid filing

• A paper filing must be accompanied by a

Petition to the Director and $100 fee

• The TTAB will verify claims of ESTTA

outages against their own records

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TTAB Will Serve Complaints

• The plaintiff is no longer required to serve a Notice of

Opposition or Petition for Cancellation on the defendant

• Board will make service via e-mail

• In oppositions, to the current correspondence address in the

record

• In cancellations, Petitioner must provide the Board with the

current e-mail address(es) of the Registrant, if known

• This is a return to pre-2007 practice

• ESTTA forms for these filings will be updated to remove

the Certificate of Service page

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No More Service By Mail

• Service of all submissions and papers in inter partes cases must be

made by e-mail unless the parties stipulate otherwise

• Reversal of prior practice

• Service should not be made by First Class mail, hand delivery,

overnight courier or other means unless the parties so stipulate

• If the serving party encounters technical difficulties or extraordinary

circumstances in serving by e-mail, they must provide written

explanation that e-mail service was attempted but could not be

made and why

• When service of voluminous or large electronic file sizes may not be

practical through e-mail, the TTAB encourages parties to use

alternative methods of electronic service such as Dropbox, USB

drives and other methods of service as agreed between the parties

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No More Extended Response Periods

• Response periods are no longer extended by 5 days for

service by mail

• All 30-day response deadlines are now fixed at 30 days

• However, all 15-day response and reply deadlines for

briefing a motion have been amended to 20 days

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Madrid Oppositions Limited To ESTTA Cover Sheet

• For oppositions filed against Madrid Protocol applications (Section

66(a)), the ESTTA cover sheet controls regardless of what the

underlying pleading says

• The goods/services opposed, named Opposer(s) and grounds for

opposition are limited to those set forth in the ESTTA cover sheet

• These cannot be amended once filed

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Close of Discovery Means Discovery Closes

• Not only must discovery requests be served, but also all responses,

objections and documents must be served and produced on or

before the close of discovery

• Discovery requests must be served early enough that all responses

and documents can be served by the close of discovery

• This is a change from current procedure where discovery can be

served up to the last day and responses, documents and objections

can be served after the close of discovery

• This will require planning, as well as cooperation between the

parties, particularly with respect to document production

• You can’t simply respond at the deadline and say “documents will be

made available at a mutually agreeable place and time”

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Limits On Discovery Requests

• Interrogatories, document requests and requests for

admissions are limited to 75, counting subparts

• Previously document requests and requests for admissions were

not limited

• Additional request(s) for admission

permitted for purposes of

authenticating documents

• Otherwise must show good cause for

exceeding limits

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Certain Motions Must Be Filed Earlier

• Motions to compel discovery, motions to test the

sufficiency of responses or objections, and motions for

summary judgment must be filed prior to plaintiff’s pre-

trial disclosures

• Other notes on summary judgment motions:

• Rule 56(d) motions must be filed within 30 days of service of

summary judgment motion – no extensions

• Board discourages reply briefs, and surreplies will NOT be

considered

• Board discourages summary judgment motions on fraud claims

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Testimony By Affidavit Or Declaration

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• Trial testimony may now be submitted by affidavit or

declaration – trial testimony depositions are no longer

required

• BUT: witness must be made available if other side wants

to cross-examine

• Designed to save time and costs

• But will it make it easier to put in questionable testimony?

• Constitutional concerns if TTAB decisions are preclusive under

B&B Hardware?

Submitting Evidence In Trial Cases

• New technical rules for submitting testimony deposition

transcripts (must be filed via ESTTA, must be full size,

must have word index)

• Notices of Reliance must include specific statements

explaining the relevance of each proffered item to a

particular issue

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New Fees For Extensions To Oppose

• The PTO will now charge fees for filing requests for extension of

opposition deadlines

• Intended to recoup processing costs and discourage frivolous filings

• Initial 30-day extension: Still no charge

• Initial 90-days extension: $100 per application

• If filed on paper, $200 per application

• Second 60-day extension: $100 per application

• If filed on paper, $200 per application

• Final 60-day extension: $200 per application

• If filed on paper, $300 per application

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Practice Tips

• Make sure owner and contact information (especially e-mail)

is up to date on all your registrations

• Be mindful that rule changes apply to pending proceedings –

this could require adjusting your strategy and timing,

particularly as to discovery and moving for summary judgment

• Double and triple check your ESTTA cover sheet for new

pleadings – amendment may be difficult or impossible later

• Watch your page limits – they cannot be extended

• Decide sooner rather than later whether you plan to oppose in

order to avoid extension fees

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Strategies For The New TTAB Landscape

The Ground Has Shifted

• B&B Hardware, Inc. v. Hargis Inds., Inc., 135 S.Ct. 1293 (2015) held

that decisions of the TTAB can have preclusive effect on subsequent

civil litigation, provided the other ordinary elements for issue

preclusion are present

• Raises stakes in TTAB cases

• Shammas v. Focarino, 114 USPQ2d 1489 (4th Cir. 2015), cert

denied, Mar. 7, 2016 – parties seeking de novo review of TTAB

decisions in the District Court must pay the PTO’s expenses and

attorneys fees

• Upholds 2013 shift in PTO policy (before, PTO sought only costs)

• More incentive to get all your evidence in at the TTAB

• 2017 TTAB rule changes

• Intended to make proceeding faster and less expensive

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Long Term Impacts Remain To Be Seen

• How to approach TTAB disputes post-B&B & Shammas?

• Do you skip the TTAB entirely and sue in District Court?

• Do you have more confidence in TTAB judges or USDC judges in trademark cases?

• So far, TTAB inter partes filings are up since B&B

• Do you go all out at the TTAB to get a complete a record as possible?

• Eliminate the need for de novo review at District Court, but increase the risk of issue preclusion?

• How confident are you in victory at the TTAB?

• Do you do the opposite and create a narrow a record as possible to preserve the ability to argue against issue preclusion?

• What to do if you lose?

• Seek review in District Court to strengthen your record but pay the PTO’s fees?

• Go straight to the CAFC?

• No matter what, parties have to think more strategically

• The TTAB is no longer just a less expensive first bite at the apple

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Issue Preclusion Factors

• Keep in mind issue preclusion under B&B Hardware

does not just apply to ultimate issue of likelihood of

confusion

• It has already been held to apply to determinations of

priority of use

• Could apply to abandonment, genericness,

descriptiveness, acquired distinctiveness, functionality,

etc.

• Presumably could apply to other DuPont factors that

don’t hinge on extrinsic use evidence

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Recent Noteworthy

TTAB Decisions

CAFC broadens “Use in Commerce”

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Christian Faith Fellowship Church v. Adidas

• 120 USPQ2d 1640 (Fed. Cir. 2016)

• Precedential decision by CAFC overturns TTAB and holds that the sale of two hats at a church’s bookstore in Illinois to a Wisconsin resident constituted “use in commerce”

• Adidas had petitioned to cancel two registrations for the mark ADD A ZERO based on non-use; TTAB found that sales were de minimisand insufficient to affect commerce

• CAFC reversed, based on breadth of Congress’ Commerce Clause powers

• Proof of actual effect on interstate commerce not needed

• Upshot: Is there any “Commerce” left that Congress can’t regulate? The bar to allege “use in Commerce” is now very low

TTAB Cancels Registration Owned by Wrong Entity

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Noble House Home Furns. LLC v. Floorco Ents. LLC

• 118 USPQ2d 1413 (TTAB 2016) [precedential]

• Registrant Floorco was a wholly-owned subsidiary of Furnco, but the mark

in question was used by the parent Furnco

• No license agreement or other controls in place

• Held: Parent is not a “related company” under §§ 5 & 45 because its

activities are not controlled by the sub

• Thus any use by Furnco (and it was sporadic) did not inure to Floorco’s

benefit and the mark was deemed abandoned

• Lesson: make sure you have internal licenses and other controls in place if

marks are being used by affiliated entities

• Counterpoint: Wise F&I LLC et al. v. Allstate Insurance Co., 120 USPQ2d

1103 (TTAB 2016) [precedential] – Board states it’s possible for family of

marks to be owned by different entities, if unified control is shown

Three Precedential Marijuana Cases

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Cannabis industry strikes out at TTAB

• In re Morgan Brown, 119 USPQ2d 1350 (TTAB 2016) [precedential]

• Claimed services were retail sales featuring “herbs” but specimens and

Applicant’s web site let the cat out of the bag; registration refused for

unlawful use

• In re JJ206, LLC, dba JuJu Joints, 120 USPQ2d 1568 (TTAB 2016)

[precedential]

• Goods were marijuana vaporizers, illegal under the Controlled

Substances Act; registration refused for unlawful use

• In re Heather Harley and Carolyn Jones, 119 USPQ2d 1755 (TTAB

2016) [precedential]

• Applicant argued that refusal was not proper if some of their goods

were legal, but failed to address descriptiveness & misdescriptiveness

issues, and Board affirmed on those grounds

TTAB Rejects Consent Agreement

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In re Bay State Brewing Co., Inc.

TTAB Rejects Consent Agreement

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In re Bay State Brewing Co., Inc.

• 117 USPQ2d 1958 (TTAB 2016) [precedential]

• Applicant sought to register TIME TRAVELLER BLONDE for beer; refused based on prior registration for TIME TRAVELLER for beer

• Applicant submitted coexistence agreement; key terms:

• Marks would only be used with house marks

• Applicant will never used TIME TRAVELLER or TRAVELLER without BLONDE

• BLONDE must always appear as large as TIME TRAVELLER

• Parties will use different trade dresses

• Applicant will only use its mark in New England and NY

• Board rejects the agreement

• Inconsistent with standard character registration w/ no geographic limitation

• Geographic limitation meaningless because both parties could use in NE and NY

• Confusion still likely given similarity of marks, same goods, same territory

• Upshot: Don’t assume TTAB will automatically accept your consent agreement

Two Discovery Disputes

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Lesson: Don’t engage in gamesmanship in discovery

• Intex Recreation Corp v. The Coleman Co., Inc., 117 USPQ2d 1799 (TTAB 2016) [precedential]

• Coleman had produced documents in redacted form, blacking out material it deemed irrelevant or confidential

• Board ruled Coleman must produce unredacted documents:

• Producing party cannot unilaterally decide what’s relevant

• Redactions unfairly removed context

• Protective order was in place to govern confidentiality issues

• Emilio Pucci Intl. BV v. Sachdev, 118 USPQ2d 1383 (TTAB 2016) [precedential]

• On day responses were due, upon failing to get an extension, respondent simply moved for a protective order as to all written discovery; boilerplate motion w/ no citation to authority

• Board ruled: Proper course was to respond and object

• Board sanctions respondent – cannot file unconsented motions and must show cause why all objections should not be waived and RFA’s admitted

Two Fraud Cases

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Evidence of specific intent to defraud USPTO required

• Chutter, Inc. v. Great Concepts, 119 USPQ2d 1865 (TTAB 2016)

[precedential]

• Cancellation action v. DANTANNA’S for restaurant services on the basis of

fraud in filing a § 15 Declaration while TTAB and District Court cases were

pending; Respondent filed for summary judgment on the basis of res

judicata because fraud claim was not raised in prior pending proceeding,

summary judgment denied because current claim not based on same

transactional facts as the prior claim – prior claim related to the failure to

inform USPTO of a connection with a living individual

• Daniel J. Quirk v. Village Car Company, 120 USPQ2d 1146 (TTAB

2016) [precedential]

• Cancellation action v. QUIRK and QUIRK AUTO PARK for auto dealership;

fraud alleged based on signing declaration that knew of no other superior

rights but no proof of fraudulent intent

Two Cases Involving Procedural Issues and Evidentiary Failure

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Know the rules and plead your case carefully!• NH Beach Pizza LLC v. Christy’s Pizza Inc., 119 USPQ2d 1861 (TTAB 2016)

[precedential]

Cancellation action v. BEACH PIZZA on the grounds of genericism; dismissal without prejudice still has preclusive effect on issues actually litigated. Prior cancellation action dismissed for lack of standing and no genuine disputes of fact material to preclusion were presented (collateral estoppel)

• Federal Circuit has held that dismissals for lack of standing should be without prejudice

• Failure to introduce evidence is immaterial to finding that collateral estoppel applied

• Didn’t use procedural options – could have appealed Board’s decision and would have allowed chance to introduce new evidence

• In re Jimmy Moore LLC, 119 USPQ2d 1764 (TTAB 2016) [precedential]

Refusal of PITCHINGSMART for “entertainment in the nature of baseball games” based on failure to submit acceptable specimen. Applicant made an error in using this identification of services; promptly attempted to amend the ID after filing and before an Examiner was assigned. Applicant should have refiled rather than trying to change the ID after the fact.

• “The Board does not take judicial notice of records residing in the Patent and Trademark Office”

• Judicial notice of definitions from Wikipedia denied (but Wikipedia evidence can be made of record when submitted timely and opportunity to rebut)

Three Precedential Surname Refusals

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TTAB Consistently Inconsistent

• In re Eximius Coffee LLC, 120 USPQ 2d 1276 (TTAB 2016) [precedential]

• Rare surname but Applicant promotes itself as a family business on its labels and ads

• In re Integrated Embedded, 120 USPQ2d 1504 (TTAB 2016) [precedential]

• More common surname and Applicant heavily promotes role of its founder in the business

• In re Adlon Brand GmbH, 120 USPQ2d 1717 (TTAB 2016) [precedential]

• Extremely rare surname, and evidence of long term use as trademark outside USA, but Board puts burden on Applicant to prove it’s anything other than a surname

• Dissent – must view mark in context, and here there was no context that pointed to the mark being a surname

Two Trade Dress Cases

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Patents and promotional material may be used against you

• In re Fantasia Distribution, Inc., 120 USPQ2d 1137 (TTAB 2016) [precedential]

Refusal to register repeating diamond pattern on base of electronic hookah on the basis it was not inherently distinctive – merely ornamental ordinary shape in an unremarkable pattern placed on the goods in an unremarkable way

• In re Loggerhead Tools, LLC, 119 USPQ2d 1429 (TTAB 2016) [precedential]

Refusal of motion mark (of hand tool with six rectangular jaw-like elements) affirmed on the basis it was functional (based on a utility patent and the fact that the advertising touts utilitarian advantages)

• Counterpoint: In re Hodgdon Powder Co., 119 USPQ2d. 1254 (TTAB 2016), allowing registration of color mark (white for preformed gunpowder cartridges)

2(d) / Descriptiveness Cases

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USPTO is keen on descriptiveness issues

• In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738 (TTAB 2016)

[precedential]

2(d) refusal affirmed / 2(e)(3) is reversed

MT. RAINIER THE MOUNTAIN OF SEATTLE ESPRESSO & MILK (applied for mark) v.

MOUNT RAINIER COFFEE COMPANY (cited mark)

• Generic/highly descriptive terms ESPRESSO & MILK and COFFEE COMPANY of little

trademark significance.

• “Virtually every vendor of coffee beverages either makes drinks combining expresso and

milk or offers milk for customers to pour into their own coffee.”

• Similar terms MOUNT RAINIER and MT. RAINIER are descriptive and the cited mark was

on Supplemental Register, but the Board held that a likelihood of confusion can be found

even if a term is merely descriptive and does not identify source.

Descriptive! Descriptive!

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USPTO is keen on descriptiveness issues

• In re LC Trademarks, Inc., 121 USPQ2d 1197 (TTAB 2016)

[precedential]

Registration of DEEP!DEEP! DISH PIZZA refused on the basis it is merely

descriptive and has not acquired distinctiveness – mere ownership of a

series of similar marks does not suffice to establish a family of marks

TTAB Practice Tips

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Take-Aways From 2016 Precedential Cases

• Know the TTAB rules and take the time to carefully plead your case

and introduce supporting evidence

• Registration of marks for products/services involving or related to the

use of marijuana are going to be refused

• The Board is reluctant to find fraud unless there is very clear

evidence of a specific intent to deceive the USPTO

• Registration of surname marks is challenging and the rulings are

inconsistent, so be very thorough in your arguments

• Beware of patents and/or claims in advertising when attempting to

register trade dress that have functionality refusals

Thank You!

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Cynthia Walden

Principal

Boston

walden@fr.com

617-956-5928

Robert O’Connell

Of Counsel

Boston

oconnell@fr.com

617-368-2159

Please send your NY CLE forms or questions about the webinar to Lauren McGovern at

mcgovern@fr.com

A replay of the webinar and a copy of the slides will be available at fr.com/webinars

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