whether and how to appeal a pto final refusal: ttab and...
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Whether and How to Appeal a PTO Final Refusal: TTAB and Beyond Navigating Ex Parte Appeals, Civil Actions in District Court, and Appeals to the Federal Circuit
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TUESDAY, FEBRUARY 10, 2015
Presenting a live 90-minute webinar with interactive Q&A
Jess M. Collen, Partner, Collen IP, Ossining, N.Y.
Helen Hill Minsker, Esq., Banner & Witcoff, Chicago
John L. Welch, Of Counsel, Lando & Anastasi, Boston
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Whether & How to Appeal a PTO Final
Refusal – The TTAB & Beyond
Helen Hill Minsker
© 2015 Helen Hill Minsker
Getting the Case Ready for the
TTAB
• Responding to a Final Office Action/
Requests for Reconsideration
• Ex Parte Appeals to TTAB
6
When is Case Ripe for Appeal?
• After a Final office action is issued; or
• After second refusal on same ground is
made, even if the office action is not
“Final”
7
Responding to Final Office Actions: Requests
for Reconsideration - Friend or Foe?
• Friend, if you need to add evidence into
the record to bolster chances of success
on appeal;
• Friend…to extent it shows Examining
Attorney resolve to fight that may make
him/her reluctant to defend refusal on
appeal
8
Foe…
• To the extent it gives the Examining
Attorney more opportunities to shore up
refusal
• Bottom Line: THINK before filing
request for reconsideration
9
Application pending for years…
• Various issues including utilitarian and
aesthetic functionality, distinctiveness,
ornamentation
• 4 office actions – last one “Final OA”
• Examining Attorney put in 1100 pages of
evidence in support of Final OA
11
“Victory” for Applicant, But
Short Lived
• TTAB reversed Examining Attorney’s
refusal – preference to allow mark to be
published if objection is
2(e)/functionality
• But, TTAB required fairly narrow/
detailed description of mark
• Registration now being opposed
12
When to Use Request for
Reconsideration
• Need to get more evidence in record
• Need to respond to any outstanding
issues (Don’t forget to respond to all
issues, even formalities, before filing
appeal)
13
Completing the Record
• Evidentiary record must be complete at
time of appeal
• General rule is you can’t introduce
evidence not in record below (but there
are some exceptions)
14
Strategy for Reconsideration
• Make an honest assessment of your case
• For 2(d), have you addressed all the
relevant DuPont factors?
• Is there a way to challenge the sufficiency
of Examining Attorney’s evidence?
• 2(f) – Is there MORE you can submit?
15
Evidentiary Considerations
• Is evidence properly of record (for
example, copies of registrations/PTO
records, Internet references, declarations)
• TTAB more forgiving on form of
evidence for ex parte appeals than with
inter partes cases, but there are limits
16
Case Study – Example of Good
Use of 3d Party Registrations
• In Re Thor Tech, Inc. (TTAB 2015) (SN
8566718)
• TERRAIN for recreational vehicles,
namely towable trailers ≠ TERRAIN for
motor vehicles, namely, trucks
17
Thor Tech….
• KEY: Examining Attorney submitted 7
registrations with trucks/trailers in goods;
Applicant submitted 50 pairs of
registrations for substantially identical
marks for land motor vehicles v. towable
recreational vehicle trailers
• 2(d) Refusal Reversed
18
Know your forum!
• Procedural issues must be addressed in
Petition to Commissioner
• Substantive issues in ex parte appeal
19
Should You Appeal to TTAB???
• If the request for reconsideration fails,
should you appeal to TTAB?
• Consider practical v. tactical issues
20
Most Common Issues for
Appeal
• Section 2(d) – Likelihood of confusion
• Section 2(e)/(f) – Range of descriptive
objections, surname, geographic, generic,
functional and sufficiency/
appropriateness of Section 2(f) -
acquired distinctiveness claim
21
Sobering Statistics:
• Consistently an 80% to 90% affirmance
rate
• Some variance depending on the issue on
appeal, e.g. 2(d), 2(e) or other issues, but
almost always within the range of 80% to
90%
22
3 Rules to Remember
1. Only strong cases need apply.
2. Procedure/Timing is often as important
as substance.
3. Argument is no substitute for evidence.
23
Exception #1
• Not all ex parte appeals are created equal
• Chances of success may vary based on
subject matter of appeal (e.g.
descriptiveness versus likelihood of
confusion)
24
Exception #2
• Many Ex Parte Appeals are filed due to a
non-extendable deadline but may be
dropped before decision on merits, or
may be resolved favorably for applicant
after going back for request for
reconsideration
25
Before Filing Appeal
• Are you better off appealing and losing
or not filing appeal at all? (i.e., Do you
really want an opinion on the merits by
an expert tribunal?)
• Are there acceptable alternatives to
appeal, such as…
26
1. Amending to Section 2(f) to claim
acquired distinctiveness
2. Amending to Supplemental Register
3. Entering a disclaimer
27
4. Re-applying to register mark in stylized
form or with design
5. Obtaining a consent agreement
6. Some combination of the above
28
Other Options…
• Is time on your side (i.e., can mark
acquire distinctiveness)?
• Or is it “now or never” (no acceptable
alternative; mark important enough to
justify appeal).
29
On some occasions…
• The Examining Attorney is just flat
wrong, so each case has to be reviewed
on its own merits
30
And sometimes you get lucky…
• See, In re Truck-Lite Co., Inc. (TTAB
1/26/06) – (Unpublished)
• Refusal under Section 2(e)(1) to register
“SUPER” for vehicle lights reversed (SN
76/532510)
31
However…
• Statistics suggest that “luck” is rarely on
the side of the Applicant (See, e.g., In re
Positec Limited (TTAB 9/13/13), in
which registration of “SUPERJAWS”
was refused and the TTAB commented
that “SUPER” was merely descriptive,
notwithstanding earlier registrations)
32
Rule #1: Only Strong Cases
Need Apply
• Overwhelming statistics over many years
say odds favor affirming refusal
• With 2(d), doubt resolved in favor of
prior registrant
• With most 2(e) issues (and others), doubt
resolved in favor of publication, BUT,
still hard to prevail
33
Tactical v. Practical
• Bottom line – there may be tactical
reasons for filing appeal (get Examining
Attorney’s attention), but..
• Practical reasons for dropping it if the
Examining Attorney does not relent early
in the appeal process, as the chances of
success is low thereafter
34
Understand the Rules!
• Appeal can only be taken from final
refusal or second refusal on same ground
• A timely notice of appeal must be filed
w/in 6 months of final refusal
36
• Filing a request for reconsideration does
not automatically toll time for filing
notice of appeal
• Failure to pay appeal fee by appeal
deadline results in dismissal
37
• Brief due 60 days from filing appeal
unless EOT obtained or case is remanded
for reconsideration
• Timely filing of request for
reconsideration will toll time for filing
appeal brief
38
• If request for remand to submit new
evidence filed after deadline for appeal,
unless parties agree, good cause must be
shown. Good cause includes…
39
• Evidence not previously available
• New counsel or new examining attorney
has taken over case
• Both sides agree to remand for new
evidence
40
Oral Argument
• Must be timely requested (10 days after
last brief)
• Important if you have something to add
or clarify within bounds of record (such
as explaining complicated technology)
• Not so important if case is not
complicated
41
The Record on Appeal
• Rule 3: Argument is no substitute for
evidence.
• Make sure you have prepared evidentiary
record in advance of appeal
• Remember that type of evidence you
need varies according to issues on appeal
42
Non-Traditional TM Issues
• Configurations, trade dress, etc. will
generally face higher standard of scrutiny
• Prepare evidentiary record accordingly
• Focus on demonstrating the public
recognizes configuration, etc. as a mark
43
Sec. 2(e) – Pleading in the
Alternative
• Don’t be afraid to argue that mark is
inherently distinctive while also offering
evidence of 2(f) distinctiveness and/or
suitability for Supplemental Register
45
Settlement Opportunities
• Always look for opportunities to settle
• Examining Attorney may be more
amenable once it is clear that appeal is
going to go through to completion
• If new evidence arises, bring it
Examining Attorney’s attention (even if
you can’t get it in record)
46
Look for Procedural
Opportunities
• If Examining Attorney fails to object to
untimely evidence, and/or addresses in
his brief, it may be considered by the
Board even though not timely filed
• Don’t rely on this happening, but use it if
the opportunity presents itself
47
Don’t make arguments…
• Based on evidence not in record
• Again, the argument likely won’t be
considered and you may lose credibility
49
Avoid Trying the Board’s
Patience!
• Don’t ignore Board’s orders (e.g., don’t
attach evidence Board has refused to
consider as “appendix” to your brief)
• Avoid invective and name calling in your
brief
50
Remember…
• Even the rare strong case on appeal can
be lost if procedures are not followed
• Understanding rules and procedures can
make difference between success and
failure
51
THANK YOU!
For questions, please contact: Helen Hill Minsker
Banner & Witcoff, Ltd.
52
15 U.S.C. § 1071 (Lanham Act § 21) o § 1071(b)(1) “Whenever a person authorized by subsection (a) of this
section to appeal to the United States Court of Appeals for the Federal Circuit is dissatisfied with the decision of the Director or Trademark Trial and Appeal Board, said person may, unless appeal has been taken to said United States Court of Appeals for the Federal Circuit, have remedy by a civil action . . . .”
54
37 C.F.R. § 2.145 ◦ § 2.145(c) “Any person who may appeal to the U.S. Court of Appeals for
the Federal Circuit (paragraph (a) of this section), may have remedy by civil action under section 21(b) of the Act. Such civil action must be commenced within the time specified in paragraph (d) of this section.”
◦ Timing – same as an appeal to the CAFC
55
Federal Venue Statute 28 U.S.C. § 1391(b) ◦ “a judicial district in which any defendant resides, if all defendants are
residents of the State in which the district is located”
◦ “a judicial district in which a substantial part of the events or omissions giving rise to the claim occurred, or a substantial part of property that is the subject of the action is situated; or”
◦ “if there is no district in which an action may otherwise be brought as provided in this section, any judicial district in which any defendant is subject to the court's personal jurisdiction with respect to such action”
56
15 U.S.C. § 1071(b)(4) (Lanham Act § 21(b)(4)) ◦ “If there are adverse parties residing in a plurality of districts not
embraced within the same State, or an adverse party residing in a foreign country, the United States District Court for the Eastern District of Virginia shall have jurisdiction . . . .”
57
McCarthy’s says “proper venue of a suit against the Director of the USPTO is before the U.S. District Court in the Eastern District of Virginia. District Court appeals from ex parte rejections must be filed in the Eastern District of Virginia.” 3 McCarthy on Trademarks and Unfair Competition § 21:25 (4th ed.) ◦ McCarthy’s cites one appeal from the TTAB where a change of venue from the District of
DC to the Eastern District of VA was not opposed (Glendale Intern. Corp. v. U.S. Patent & Trademark Office, 374 F. Supp. 2d 479, 75 U.S.P.Q.2d 1139 (E.D. Va. 2005)) and also cites other non-TTAB cases (Boundy v. U.S. Patent and Trademark Office, 2002 WL 32166534 (D.D.C. 2002) (transferring petitions for review of the patent examiner’s procedures from the DC District court to the Eastern District of Virginia); In re Munson, 2003 WL 21396874 (D.C. Cir. 2003) (discrimination case against the PTO); U.S. ex rel. Prevensik v. U.S. Patent & Trademark Office, 2005 WL 691875 (D.D.C. 2005) (suit against the PTO and its employees))
◦ However, note, Adams below was decided in the Western District of Pennsylvania and the opinion says that venue was proper under § 1391
58
Parties may submit new evidence and raise new issues with the District Court
Appellate review of District Court’s decision by the Circuit Court
Costs associated with a new trial (pleadings, discovery, motion practice)
Deference given to TTAB if no new evidence or issues are presented
59
Circuit’s precedent and splits of authority ◦ Likelihood of confusion
Fourth Circuit – likelihood of confusion is a factual issue Petro Shopping Ctrs., L.P., v. James River Petroleum, Inc., 130 F.3d 88, 92 (4th Cir. 1997)
Federal Circuit – likelihood of confusion is a legal determination Coach Svcs., Inc. v. Triumph Learning, LLC, 668 F.3d 1356, 1365-66 (Fed. Cir. 2012), i.e., de novo review
Trial by jury ◦ DC Circuit and District of MD – trial by jury for all factual issues
◦ ED PA and SD IL – no right to trial by jury
60
District Court reviews TTAB findings: ◦ De novo – if new evidence is submitted
“In sum, where new evidence is submitted, de novo review of the entire record is required because the district court ‘cannot meaningfully defer to the PTO's factual findings if the PTO considered a different set of facts.’” Swatch AG v. Beehive Wholesale, LLC, 739 F.3d 150, 156 (4th Cir. 2014) (citing Kappos v. Hyatt, 132 S. Ct. 1690, 1700 (2012))
◦ Substantial evidence standard – when new evidence is not submitted, TTAB findings are given great weight and only disturbed in cases where the findings are not supported by substantial evidence
61
Adams Mfg. Corp. v. Rea, 2014 U.S. Dist. LEXIS 31584 (W.D. of Pa. March 12, 2014)
Applicant, Adams Mfg. Corp. applied to register a suction cup mark in connection with “plastic suction cups, not for medical purposes”:
The examining attorney refused the registration based on functionality and non-distinctiveness. Adams appealed to the Western District of PA. The parties cross moved for summary judgment on the issue of registrability. Adams submitted additional evidence; the Court affirmed the refusal based on functionality
62
Timex Group USA, Inc. v. Focarino, 2013 U.S. Dist. LEXIS 177835 (E.D. Va. Dec. 17, 2013) (clarified by Timex Group USA, Inc. v. Focarino, 2014 U.S. Dist. LEXIS 4646 (E.D. Va., Jan. 13, 2014)). Timex Group USA, Inc. appealed to the Eastern District of VA the TTAB’s refusal to register the INTELLIGENT QUARTZ trademark in connection with watches on the basis that the trademark was descriptive
Timex submitted additional evidence that the trademark was suggestive. The Court applied the old standard of review (review of the TTAB record for substantial evidence and review of the new evidence de novo) and found that the TTAB erred in finding that the trademark was suggestive. Three weeks after the Timex decision was issued, the 4th Circuit issued its opinion in Swatch AG v. Beehive Wholesale, LLC, which changed the standard of review to de novo review of the entire record. The Timex Court then issued a clarification of the decision saying that, under the new standard the trademark would still be found suggestive
63
Shammas v. Rea, 978 F. Supp. 2d 599 (E.D. Va. 2013). Shammas appealed the TTAB’s refusal to register the PROBIOTIC trademark in connection with fertilizer. The TTAB affirmed the refusal based on genericism. The Court applied the old standard of review and found that the Board’s decision was based on substantial evidence and the parties’ additional evidence showed that PROBIOTIC was generic. The Court affirmed the refusal
64
Glendale Int'l Corp. v. United States PTO, 374 F. Supp. 2d 479 (E.D. Va. 2005). An appeal from the refusal to register the TITANIUM trademark in connection with recreational vehicles on the basis that it was deceptively misdescriptive because the vehicles did not contain titanium. The parties stipulated not to submit additional evidence. The Court found that there was substantial evidence that consumers would likely believe that the goods contain titanium.
65
Jess M. Collen
Ph. 914-941-5668
www.collenip.com
© 2015 Collen IP 66
Choices
• An applicant that is dissatisfied with the
final decision of the Board has two options
for obtaining review of the decision:
• 1. Appeal to the United States Court of
Appeals for the Federal Circuit
• 2. Civil action in a United States District
Court for review
68
CAFC
• The CAFC is the Board’s primary
reviewing court.
• The CAFC limits its review to the record
developed before the TTAB.
• No new evidence may be submitted and
no new issues raised.
69
Waiver
• An applicant who takes an appeal to the
CAFC waives its right to proceed by way
of civil action.
• It may be possible to withdraw that appeal
prior to expiration of the appeal period,
and then proceed in district court.
70
Timing
• Notice of appeal must be filed with the
USPTO within two months of the Board’s
decision.
• The USPTO may grant extensions of time
for the filing of the appeal, for good cause,
or, if after the appeal period has expired,
upon a showing of excusable neglect.
71
Timing
• A request for rehearing, reconsideration,
or modification of the Board’s decision
stays the time for filing the notice of
appeal, which will then be due two months
after action on the request.
72
Timing
• Simultaneously with the filing of the notice
of appeal, three copies of the notice of
must be sent to the clerk of the CAFC,
along with the appeal fee ($450).
• The appeal will be docketed by the CAFC
when the USPTO sends the certified list of
contents of the record before the Board
and a copy of the decision being appealed
(within 40 days of the notice of appeal).
73
Standard of Review
• Factual issues are reviewed under a
“substantial evidence” standard. The court
must ask whether a reasonable person
might find that the evidence supports the
Board’s conclusion.
• Questions of law are reviewed de novo –
i.e., without deference.
74
Particular Issues
• Most issues decided by the Board in ex
parte cases are factual issues, reviewed
under the “substantial evidence” standard.
• Likelihood of confusion, however, is a
legal conclusion, based on underlying
facts.
75
Likelihood of Confusion
• The CAFC reviews the underlying factual
findings (the du Pont factors) under the
substantial evidence standard.
• The ultimate conclusion of likelihood of
confusion is reviewed on a de novo basis.
76
Likelihood of Confusion
• Example: In re St. Helena Hospital, 113
USPQ2d 1082 (Fed. Cir. 2014).
• The CAFC reversed TTAB: TAKETEN
for health care services not confusingly
similar to the registered mark TAKE 10!
for printed materials dealing with physical
activity and physical fitness.
77
Likelihood of Confusion
• The Board’s finding that the marks were
similar was supported by substantial
evidence
• The finding as to relatedness of the
goods/services was not supported by
substantial evidence.
• The Board’s determination that the factor
of consumer care was neutral lacked
substantial evidence.
78
Other Issues of Fact
• Genericness, distinctiveness,
descriptiveness, arbitrary or fanciful
• Eligibility for Supplemental Register (i.e.,
capability to function as a trademark).
• Misdescriptiveness
79
Other Issues of Fact
• Functionality
• Geographic descriptiveness,
misdescriptiveness, and deceptiveness.
• Priority determinations
80
In re Newbridge Cutlery Co.
• Reversing a Section 2(e)(2) refusal to
register NEWBRIDGE HOME for cutlery,
the CAFC ruled that "[t]he conclusion that
Newbridge, Ireland, a town of less than
twenty thousand people, is a place known
generally to the relevant American public
is not supported by substantial evidence."
81
Issues of Law
• Equivalence and tacking (?)
• Scandalousness (In re Fox).
• Issue and Claim Preclusion
• Section 2(b) governmental insignia
83
In re Houston and District of
Columbia
• CAFC, in upholding the TTAB’s affirmance
of the USPTO’s Section 2(b) refusals to
register the governmental seals of the
District of Columbia and the City of
Houston: “We review the Board’s legal
conclusions, including its interpretation of
the Lanham Act, without deference.”
84
Briefs and Oral Argument
• Appellant’s brief is due sixty days after the
USPTO serves the certified list of the
record.
• Appellee has 40 days to file its brief after
appellant’s brief is filed.
• A reply brief may be filed within 14 days.
85
Briefs and Oral Argument
• The appendix to the briefs must be filed by
the appellant within seven days after the
last brief is served and filed.
• The CAFC generally allows oral argument.
The maximum time allowed is 30 minutes
per side. Typically each side gets 15
minutes.
86
In re Tam
• 11-22-13 Notice of Appeal
• 01-07-14 Docketed by CAFC
• 04-21-14 Opening brief (after extension)
• 08-04-14 USPTO brief (after extensions)
• 09-02-14 Reply brief
• 10-01-14 Joint Appendix
• 01-09-14 Oral argument
87
CAFC or District Court?
• If the issue on appeal is one of fact, the
applicant must consider that the CAFC will
review the issue on a “substantial
evidence” standard.
• But the ruling on likelihood of confusion is
reviewed on a de novo basis.
88
CAFC or District Court?
• CAFC appeal is on a closed record, so
expenses may be kept down.
• District Court judge may give more
deference to a TTAB ruling.
89
Some Recent CAFC Decisions
• In re Newbridge Cutlery Co.
[NEWBRIDGE HOME]: Section 2(e)(2)
geographical descriptiveness – Reversed.
(2015).
• In re St. Helena Hospital [TAKETEN]:
Section 2(d) – Reversed (2014).
90
Some Recent CAFC Decisions
• In re Nordic Naturals, Inc. [CHILDREN’S
DHA]: Genericness – Affirmed (2014).
• In re Geller [STOP THE ISLAMISATION
OF AMERICA]: Section 2(a)
disparagement – Affirmed (2014).
91
Some Recent CAFC Decisions
• In re Houston and D.C. [Governmental
Seals]: Section 2(b) – Affirmed. (2012).
• In re Fox [C&%$ SUCK&%]: Section 2(a)
scandalousness – Affirmed. (2012).
92
Some Recent CAFC Decisions
• In re Miracle Tuesday, LLC [JPK PARIS &
Design]: Section 2(e)(3) – Affirmed (2012).
• In re Viterra, Inc. [XCEED]: Section 2(d) –
Affirmed (2012).
• In re Chamber of Commerce [CHAMBER
OF COMMERCE]: Section 2(e)(1) mere
descriptiveness – Affirmed (2012)
93
Some Recent CAFC Decisions
• In re Becton, Dickinson Miracle [Tube
closure cap]: Section 2(e)(5) – Affirmed.
(2012).
• In re Chippendales USA, Inc.: Inherent
Distinctiveness – Affirmed (2010).
• In re Mighty Leaf Tea [ML]: Section 2(d) –
Affirmed (2010).
94