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Posts Tagged ‘opposition’

Last week, several notable and interesting trademark opposition cases were filed at the Trademark Trial and Appeal Board of the USPTO:

Trademark image Trademark image

  • Selfie Inc. opposed registration of SELFIE + for Downloadable camera app for photo distribution
  • The Edison Institute DBA The Henry Ford (which includes the Henry Ford museum and attracts nearly 2 million visitors) opposed THE WRIGHT BROTHERS bumper stickers and other items from The Wright Family Foundation

As with Oppositions in general, many of these cases will be likely settled. Some of the application will likely be abandoned. Neither action is necessarily an indication of whether the claims had legal merit.

 

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.

TTAB Roundtable Summary

Posted by ipelton on: November 3rd, 2011

Earlier this week, the Trademark Trial and Appeal Board held a stakeholder roundtable at the USPTO campus in Alexandria, Virginia. This was the first roundtable conducted by the TTAB in several years; the last such panel was assembled in 2006 as the Board considered the last major package of amendments to its rules. To my knowledge, we were the only firm that attended the roundtable in person other than those participating in the panel itself. What follows is a brief summary of the roundtable.  More detailed impressions and ideas generated by the roundtable will be published here on the IPelton® blog in the future, when the TTAB allows for public comments on the issues involved.

The Set Up

The TTAB selected participating organizations for the roundtable who then sent representatives. The participants were:

TTAB Chief Administrative Trademark Judge Gerard Rogers

TTAB Managing Interlocutory Attorney Cindy Greenbaum

American Bar Association Intellectual Property Section:

Cheryl Black

Jonathan Hudis                    

Association of Corporate Counsel:

Alica Del Valle (via videoconference link)

Erica Fischer  

American Intellectual Property Law Association:

Linda McLeod

Steve Meleen

International Trademark Association:

Lynda Roesch       

Intellectual Property Owners Association:

Beth Chapman

Jay Hines       

Trademark Public Advisory Committee:

Jody Drake    

The panel met in the South Atrium of the USPTO Madison building. Several other TTAB judges and USPTO officials were in attendance. Deputy Under Secretary and Deputy Director Teresa Stanek Rea provided opening remarks and noted that, while the TTAB functions very well, the USPTO is always seeking greater transparency and opportunities to continue building a user friendly and business friendly regime.

An agenda was posted on the TTAB website in advance.

While the rountable meeting was webcast and open to the public, the public was not permitted to participate, ask questions, or comment during the hearing. Judge Rogers stated that the video and the transcript would be made available on the TTAB website (http://www.uspto.gov/trademarks/process/appeal/index.jsp). He also indicated that there will be some opportunity for others to comment once the transcript is posted.

Key Takeaways from the Roundtable:

  • The majority of stakeholders do not favor greater Board participation in settlement discussions, except in some exceptional cases.
  • The majority of stakeholders do not favor reducing or restricting the parties’ options for extensions or suspensions of Board proceedings.
  • Judge Rodgers indicated that the Board believes it has the authority to impose stronger sanctions, including monetary sanctions, although it has generally chosen not to do so.
  • Some called for the Board to exercise greater sanction power. Others called for no increase in the use of such powers over fears of “satellite litigation.”
  • While a large portion of TTAB cases are settled or end in default, the Board does not currently maintain statistics regarding these cases.
  • The Board indicated that it is exploring when and how to take greater involvement in managing those relatively rare cases with very large records or overly contentious litigants. The Board cited the recent meeting and orders in Blackhorse .v Pro Football, Inc. [a.k.a “Redskins II”] (TTABlog® summary here) as an example of such participation.
  • The Board noted that there are approximately 325 disputes still operating under the old rules; of these approximately 86 are suspended for settlement discussions.
  • Board Judges noted that many cases have records that are far larger than necessary. The issue is not so much the size of the record, but the amount of the record that lacks any real relevance to the issues before the Board.
  • The Board is aiming to provide via its website in the very near future four “flavors” of ACR proceeding structures that parties seeking a shorter proceeding may wish to use; three of the four involve the parties consenting to a final decision on cross-motions for summary judgment.

Next Steps

The Board indicated that it may hold another roundtable on the subject of accelerated case resolution (ACR) in the spring. Some stakeholders called for a roundtable on modifications to the Board’s standard “Protective Order” and other topics. The Board noted that it was taking all the discussions and comments from the roundtable under advisement, and it may summarize those proposals which would require statutory or regulatory changes versus those which it could enact without such procedures.

My Initial Comments 

Transparency is wonderful. A more transparent government agency is better and more successful. Additional opportunities to comment directly to the USPTO and the TTAB – whether in person, online or in other forums – benefits users of the system, the public, and the agency. As a whole, therefore, the roundtable was a great idea and additional roundtables should be encouraged, along with other opportunities for the USPTO and TTAB to interact with their users and to receive direct comments and suggestions from them.

For these very reasons, I had two disappointments with the roundtable this week. The first is that the public was not invited to participate in this roundtable. I look forward to an opportunity to provide the TTAB with comments and suggestions when they make the opportunity available; hopefully soon and in conjunction with a posting of the transcript and video from the roundtable. My second disappointment is the lack of diversity of interests reflected in the roundtable panel itself. While the comments received were wide-ranging, I have to wonder if a larger panel or a panel that was inclusive of additional perspectives (not just the large bar associations) could have generated an even livelier discussion with even more ideas, suggestions, comments, and feedback provided to the TTAB.

Related Post:

 

Anatomy of a trademark opposition Answer

Posted by ipelton on: June 21st, 2011

When a trademark application receives preliminary approval from the U.S. Patent and Trademark Office, it is published in the public record in the Official Gazette. During the publication period, other parties have an opportunity to file a ‘Notice of Opposition’ to the trademark application if they believe it should be prevented from registering. The most common ground for opposition is an alleged likelihood of confusion with another trademark that has priority by virtue of earlier use or an earlier application filing date.

If the trademark applicant defends the Notice of Opposition, the first step in the proceeding – which is akin to litigation – is the filing of an Answer.

An answer contains several key elements:

  • A response to each allegation in the Notice of Opposition
  • Affirmative defenses
  • Amplification of statements made in Answer that deny or address the claims in the Notice of Opposition
  • Appointment of Counsel (if applicable)
  • A certificate of service of the filing to the other party
  • Filing with the Board

Below is an Answer filed in an proceeding at the Trademark Trial and Appeal Board (TTAB). The records from the TTAB for the proceeding can be viewed here.

[scribd id=58169905 key=key-uo9avc73yyzfy5zeap5 mode=list]

What is a “bona fide intent” to use a trademark?

Posted by ipelton on: January 29th, 2010

There are two types of trademark applications in the US:

  • one based on current use of the trademark in commerce in the US for the goods or services claimed [a 1(a) application]
  • one based on a “bona fide intent” to use the trademark in commerce in the US for the goods or services claims [a 1(b) application]

In recent years, several oppositions to applications filed based on the “bona fide intent” have been cancelled because the applicant could not provide enough evidence to support its claim that it had a bona fide intent.  How much evidence should be required to show that an intent is bona fide?  Should evidence of  the applicant’s “bona fide intent” be required at all if there is no evidence showing that the intent in filing the application was malicious or deceptive?  These are questions that may be re-examined in a new light given last year’s decision by the Court of Appeals for the Federal Circuit in Bose, which made it clear that claims of fraud are subject to a higher standard, and that they must be proven by “clear and convincing” evidence.  At least that is what our office argued this week in a filing to the Trademark Trial and Appeal Board.

Full brief here: http://ttabvue.uspto.gov/ttabvue/v?pno=91178539&pty=OPP&eno=50

Here is  an excerpt:
[A] declaration regarding an Applicant’s bona fide intent to use its mark is
exactly the type of statement that Bose addresses and for which the Federal Circuit mandates a
higher standard. Consequently, Bose requires that an allegation that an applicant under §1(b)
lacked a bona fide intent to use the mark on goods and services must be plead with particularity
and proven with clear and convincing evidence. FRCP 9(b); Bose, 91 USPQ2d 1938.

In other words, a declaration regarding an Applicant’s bona fide intent to use its mark is exactly the type of statement that Bose addresses and for which the Federal Circuit mandates ahigher standard. Consequently, Bose requires that an allegation that an applicant under §1(b)lacked a bona fide intent to use the mark on goods and services must be plead with particularityand proven with clear and convincing evidence. FRCP 9(b); Bose, 91 USPQ2d 1938.

Comments from any attorneys who have encountered this issue or have any thoughts on it are welcome.