Posts Tagged ‘TTAB’
Yesterday at the Spring IP conference of the ABA Section of Intellectual Property Law, following a live hearing of a TTAB cancellation case, Chief Administrative Law Judge Rogers provided a summary of the recently proposed rules changes.
The proposed rulemaking was made public on Monday. Comments to the TTAB are due by June 3, 2016.
The proposed changes are, in my opinion, significant in several ways. They aim to streamline cases to make them a bit less complex and less costly for the parties involved. While generally that would be a admirable goal, and one that could benefit small businesses in particular, my concern is whether it runs contrary to the guidance provided by the Supreme Court last year in B&B Hardware, Inc. v. Hargis Industries, Inc., 135 S. Ct. 1293 (2015). The Supreme Court said that TTAB proceedings have a preclusive effect in later District Court actions when the proper conditions are met. The guidance from the Supreme Court leads me to believe that a preclusive effect could be found in many TTAB cases. For example, the oral hearing that the Board heard yesterday at the conference involved possible cancellation of a registration, and included extensive evidence (including depositions) and arguments regarding sales, advertising, consumers, channels of trade, actual confusion, and more. In short, the case covered essentially all of the same ground that an infringement matter would cover. Simplifying the procedure for the case could effect the chances of a full and fair adjudication of the merits.
It will be interesting to see the nature of the comments from practitioners, bar associations, and other stakeholders in response to the proposed rulemaking.
The TTAB’s summary of the major changes, distributed at the conference, is below.
The full rulemaking can be found at https://www.federalregister.gov/articles/2016/04/04/2016-06672/miscellaneous-changes-to-trademark-trial-and-appeal-board-rules-of-practice.
Erik Pelton authors chapter in ABA’s “A Legal Strategist’s Guide to Trademark Trial and Appeal Board Practice”
I am honored to have written Chapter One in the newly published book from the American Bar Association, A Legal Strategist’s Guide to Trademark Trial and Appeal Board Practice. The book covers the entire TTAB Opposition and Cancellation process, as well as Ex Parte Appeals, and is a true practitioner’s guide to the rules and procedures of the TTAB.
Chapter One (Inter Partes Matters: General Background and Prefiling Considerations) by yours truly is available for now as a free sample on the publishers website, where the entire book can be purchased:
Jonathan Hudis has edited this wonderful resource that features many other excellent authors, and I am thankful to Jonathan and the ABA Section of Intellectual Property Law for the opportunity to contribute to this work.
A recent application for CLEAN ENERGY OPTION was refused as descriptive. On appeal, the matter was resolved with the examiner before a final decision by the Trademark Trial and Appeal Board (TTAB). All of this information and these materials are public record, of course.
The brief shows the formatting of an appeal brief. It also provides some examples of substantive arguments regarding descriptiveness, in particular double entendre. Note that an Ex Parte Brief generally features far more formalities than an office action response.
Upon receiving a Final Refusal from the USPTO to a trademark application, the applicant may file an appeal to the Trademark Trial and Appeal Board. When such an appeal is made, each party (the applicant and the USPTO Examining Attorney) will submit briefs and potentially an oral argument to a panel of three administrative judges from the Board who will then rule regarding the registrability of the trademark.
What does an Appeal Brief consist of? Generally, it cannot present new evidence but must rely on the record already created. The Appeal Brief may present arguments regarding the registrability and the evidence, and may attempt to counter arguments made by the Examining Attorney in the Final Refusal. The Appeal Brief should also describe the evidence of record and the procedural history, along with an index of the cases and statutes cited.