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Archive for June, 2012

Anatomy of initial disclosures at TTAB

Posted by ipelton on: June 29th, 2012

In a trademark opposition or cancellation at the Trademark Trial and Appeal Board (TTAB), one of the elements of the first stages of the proceeding is “initial disclosures” from the parties. 

What are initial disclosures?They are sort of a road map for the discovery each party intends to take. The name potential witnesses and types of documents that could be relevant in the case. According to the TTAB rules: 

Pursuant to Fed. R. Civ. P. 26(a)(1), a party is not obligated to disclose the name of every
witness, document or thing that may have or contain discoverable information about its claim or
defense, but merely the witnesses, documents and things having or containing discoverable
“information that the disclosing party may use to support its claims or defenses.”

When are initial disclosures required? The timing of the disclosures is set in the Board’s scheduling order. They are after the discovery conference between the parties. And they must be served by a party prior to serving discovery. Note that a party may be obliged to supplement and update its initial disclosures if its scope of information, documents and witnesses changes. [See TTABlog®" Precedential No. 21: TTAB Excludes Opposer's Sole Trial Witness Due To Failure to Previously Identify Her.]

What do initial disclosures look like? Disclosures are not supposed to be filed with the Board, only served on the other parties. The address or telephone number of possible witnesses should be provided. The location of documents should be listed.

What if a party fails to make initial disclosures? The party may be subject to a motion to compel and, eventually, sanctions.

For more details about initial disclosures, see the TTAB Manual of Procedure (TBMP) Sect. 401.02.

I have provided a sample Initial Disclosures below [click images to enlarge].

Here are some relevant Board decisions posted over at TTABulator.com:

91196325

05/14/2012 TRIAL DATES RESET N Applicant moved to extend time to serve initial disclosures for a 2nd time after its first such motion was granted. Applicant showed good cause and motion granted, though Applicant cautioned regarding additional extensions.

91203404

05/17/2012 TRIAL DATES RESET N Applicant moved to extend time to serve initial disclosures. Applicant’s recent change of counsel found to constitute good cause and motion granted.

91203404

05/17/2012 TRIAL DATES RESET N Applicant moved to extend time to serve initial disclosures. Applicant’s recent change of counsel found to constitute good cause and motion granted.

A  notice published this week, as well as a blog post by Victoria Espinel, the administration’s Intellectual Property Enforcement Coordinator, requests public comments regarding the administrations strategy for intellectual property enforcement.

Specifically, the White House seeks comment regarding 

(i) overall strategy regarding the U.S. government’s IP enforcement efforts,

(ii) combating existing or emerging threats “to American innovation and economic competitiveness posed by violations of intellectual property rights over the next five to ten years,” and 

(iii) a variety of questions about IP enforcement by the government.

Comments are by 5pm EST on July 20, 2012. More details can be found at the full notice:

http://www.whitehouse.gov/sites/default/files/docs/jsp_2013_frn_final.pdf

I plan to comment (and I will post them here) and I intend to reiterate concerns that the needs are small businesses are not being met, and that the over-enforement of trademark rights is very costly and must be guarded against.

 

Last week, U.S. Intellectual Property Enforcement Coordinator Victoria Espinel released the 2012 U.S. INTELLECTUAL PROPERTY ENFORCEMENT COORDINATOR JOINT STRATEGIC PLAN.

Like previous reports, It touts lots of efforts and initiatives regarding counterfeiting and intellectual property violations. IP enforcement actions and investigations by homeland security, the FBI, and other law enforcement agencies are up significantly.

And like previous reports, it contains nothing specific about aiding small businesses. And nothing about making sure the enforcement efforts are reasonable.

I’m not saying that these efforts are unreasonable. But I am uncertain as to whether anyone is guarding against over enforcement of intellectual property rights. This topic has popped up more often recently (see here too) in the wake of the SOPA and PIPA backlash but is still nascent. Is anyone charged with ensuring that the enforcement doesn’t go too far? Is Congress providing oversight? Are any other independent agencies or bodies monitoring and commenting on this situation? To my knowledge, they are not.

In my opinion, over enforcement of I.P. rights is at least as damaging to our economy as under enforcement. It stifles legitimate business. Ties up our courts with wasteful litigation. And requires parties to spend money that could be better spent on other things – research and development, marketing, new employees, etc. I fear that we are headed towards an IP system where companies that can afford access to courts and to legislators and government official will dictate our intellectual property policies. But these policies should protect all businesses, and the public. They should not be unduly influenced by big businesses.

2012 U.S. INTELLECTUAL PROPERTY ENFORCEMENT COORDINATOR JOINT STRATEGIC PLAN.

 

 

Watching the U.S. Open golf championship last weekend, I got to thinking: is “Arnold Palmer” generic for beverage that is half iced tea, half lemonade? I don’t know.  I have hear many people order “Arnold Palmers” in restaurants and the servers know just what they want – half iced tea, half lemonade. Is anyone infringing a trademark in that situation?  

The Arnold Palmer signature is registered for beverages. U.S.  Reg. No. 2161853.  Mr. Palmer appears to have licensed the name (or the logo?) to Arizona Beverage Company:

Arizona's "Arnold Palmer" drink

The drink has its own Wikipedia page here.

If another party uses the name, but not the signature, to identify a beverage are they infringing the mark? How strong is the mark if it has been called an “Arnold Palmer” by many for years and years? Is it a mark at all?  I don’t have the answers to these complicated questions, but I like raising them. I would love your comments – is the mark enforceable?

Last week the list of applications for creation of new .ANYTHING generic top-level domain names -gTLDs – was made public.

The full list of the ICAAN “reveal day” list of 1,930 new applicants for gTLDs is here.

Many of the top global brands – especially tech and communications companies – are on the list. Google and Amazon filed not only for their core brand names, but for a variety of other possibilities. The list of brand names applied for as .BRAND include household names such as Ford, GE, Apple, Home Depot, Amex, Nike, GAP, NFL, Lexus, Mattel, and McDonalds. The only clear word applied for by two competing companies with matching brand names is .MONSTER which was applied for by Monster energy and Monster cable.

I am intrigued by the names absent from the list of applicants. Here are, in my mind, some of the major brands that opted out of applying at this time:

.COKE (some claim it to be the most popular word in the world)

.MARLBORO

.DISNEY

.ATT

.VODAFONE

.FACEBOOK

.TWITTER

.ADIDAS

.STARBUCKS

.SUBWAY

.BURGERKING

.IKEA