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Posts Tagged ‘TTAB’

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11
Mar

TPAC Quarterly Meeting Summary (March 2012)

Posted by ipelton on: March 11th, 2012

The following is a summary of the key points discussed at the March 8, 2012, public meeting of the Trademark Public Advisory Committee (TPAC) at the USPTO.

The meeting covered many topics, including legislative and funding issue, performance measures, developments at the TTAB, and “Trademarks Next Generation.” The most newsworthy item was the announcement by Commissioner for Trademarks Deborah Cohn that a cease and desist letter has been sent by the Office of the Solicitor of the U.S.P.T.O. to the outfit calling itself “United States Trademark Registration Office.” This company has been sending confusing solicitations to trademark applicants and registrants that are of questionable value and are clearly intended to look like official government correspondence. More on these “trademark scams” below.

CFO’s update by Anthony Scardino:

  • The USPTO budget in FY2012 includes $18 million dollars for “Trademark Next Generation” computer items.
  • The FY2013 budget was recently submitted to Congress
  • The FY2013 budget includes funding for an additional 12 Examining Attorneys

Legislative Update by Dana Colarulli:

  • The USPTO’s Detroit office is on target for opening in July
  • The USPTO has received bids for opening two additional satellite locations – more than 60 locations have participated in the process and more than 500 comments have been received
  • Other legislative issues related to AIA and other patent issues

Commissioner Cohn’s update:

  • Performance measures through the end of January 2012 show that trademark operations is exceeding or within the desired range for nearly all targets [see documentation below for details].
  • 75% of all applications processed from start-to-finish entirely electronically.
  • Application filings are up approximately 7.5% over the same time last fiscal year.
  • 11 new Examiners were hired in September and are now ‘on production.’ 15 new examiners have been hired to start March 12, 0212, and another 10 will start in May 2012.
  • Trademark telecommuting workforce continues to expand – it now includes employees in 25 of the 48 continental United States.
  • The “tri-lateral” meeting has become the “TM5″ as it now includes China and Korea as full members. The group met in December 2011 and discussed a variety of issues, including a project to have each member use common status indicators for trademark records and an effort (led by OHIM) for harmonize identifications among the TM5.
  • Craig Morris is leading an effort to expand education and outreach by the USPTO to groups that are not in the trademark bar, and specifically to reach small businesses. A working group has been put together and has met and is working on ways to: engage the private sector to increase free or low cost trademark legal services; provide more CLE’s on trademark policing issues; and to reach out beyond the trademark bar.
  • USPTO held a roundtable on issues related to identification of goods and services on February 24, 2012. The goals for the USPTO are to re-design the structure of the ID manual, to possibly update the descriptions within the manual, and to increase collaboration with industry groups to understand their issues and topics better.
  • USPTO is co-hosting a series of roundtables with INTA. Two have already been held in NYC, upcoming ones include Alexandria, VA, Wilmington, DE, and Boston, MA.
  • The Official Gazette will no longer be printed on paper at some point in the near future (this year). There are only 150 print subscriptions worldwide.
  • 2012 Trademark Expo will be held October 19th and 20th.

Solicitations from trademark related vendors:

  • The volume has “blossomed” in recent months.
  • USPTO has placed new warning on the trademark landing page.
  • Commissioner Cohn announced that a cease and desist letter was sent last week by the Office of the Solicitor of the U.S.P.T.O. to the outfit calling itself “United States Trademark Registration Office.”
  • United States Trademark Registration Office has been sending trademark applicants and registrants solicitations that are deceptive.  Many have thought they are from the USPTO given the similarity in names and the letter’s official look and feel.
  • Commissioner Cohn noted that the letter invokes Section 43(a) of the Lanham Act.
  • The Commissioner also noted that if anyone – attorneys, applicants, etc. – have any information about United States Trademark Registration Office or have been mislead by their mailing, they are encouraged to file an on-line consumer complaint with the Federal Trade Commission (“FTC”), at www.FTC.gov and/or contact the USPTO via TMFeedback@uspto.gov.

TTAB Update – Judge Rogers:

  • A new senior attorney, Cheryl Butler, was recently hired. Her duties include updates to the TBMP. An update to the TBMP is planned for sometime around May.
  • Cindy Greenbaum has been hired a the newest TTAB judge. She for the moment still in her former role managing the interlocutory attorneys until that role is be filled by a new hire, for which the process is underway.
  • TTAB is deploying a new “quality review” unit. The unit was formerly a pilot program and will now become permanent. One of its roles is to help to ensure accuracy in the history of proceedings in TTABvue, which is also helpful for having better and more consistent data for use in performance and other measures.
  • 20 precedents have been issued so far this (fiscal) year, up from the 38 issued the previous year.
  • The backlog of cases at the TTAB has increased lately [see data below]. The number of incoming filings has seen some numbers up and some down from quarter to quarter over the last few years. But given increases in application filings the last two years, it is likely that TTAB filing numbers will trend up more consistently in the future if the application filing increases continue.
  • A few more cases are under ACR than in the previous years.
  • TTAB may hold an ACR roundtable over the summer once the staffing issues are addressed and filled.
  • The number of cases operating under the old rules is down to 268, 58 of which are suspended for settlement.

CIO’s report – John B. Owens II & Raj Dolas

  • TEAS update a few months ago allowed for the submission of additional “non-primary” addresses. However, a glitch in the USPTO system meant that until recently many of the “non-primary” addresses were not receiving any updates. USPTO is now fixing this situation.
  • Many projects are underway for a variety of new and/or improved computer systems.
  • TSDR 2.0 will be coming soon and will include links to assignment and TTAB documents.
  • I asked about TSDR and the phase out of TARR. I noted that:
    • a static link would be very useful to practitioners so they could provide to clients and others to view their filings online.
    • more advance notice to outside users about the “sunsetting” or changing of systems would be very useful
  • The CIO noted that they were aware of the disruption caused by the planned TARR > TSDR changeover but that TSDR will replace it and will be a much better and more flexible system. TSDR does have capability for generating static links and they will likely make that information available.

Trademark Public Advisory Committee (TPAC) – March 9, 2012 documents

18
Nov

Introducing the “TTABulator” blog

Posted by ipelton on: November 18th, 2011

I recently launched a new blog called TTABulator™. TTABulator (http://ttabulator.wordpress.com) will be a space for posting data, case summaries and analysis related to the USPTO’s Trademark Trial and Appeal Board. 

It will begin by publishing weekly (approximately) listings of the newest TTAB cancellation and opposition filings. Those interested in seeing who recently opposed marks and which marks have recently been opposed will find this data useful and interesting.

In the future, I hope to be adding more commentaries, summaries and analysis of TTAB cases and procedures. If you have any ideas, please leave a comment or send me an email.


3
Nov

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:

 

26
Oct

Guide to Changes in the Trademark Trial and Appeal Board Manual of Procedure (TBMP)

Posted by ipelton on: October 26th, 2011

In May 2011, the Trademark Trial and Appeal Board (“TTAB”) released the long-awaited 3rd Edition of its Trademark Trial and Appeal Board Manual of Procedure (“TBMP”).[1] This guide summarizes and highlights the most significant changes included in the 3rd Edition of the TBMP, providing particular attention to new and significantly revised sections.

The TBMP was created to “serve as a comprehensive and ready resource for practitioners.”[2] Though the TBMP is neither a binding authority nor a substitute for controlling statutes, rules, or decisional law, it contains invaluable depth and details regarding the Board’s practice and procedure.

The 3rd Edition provides a well deserved update of the Manual. Following the release of the 1st Edition in 1995, the 2nd Edition of the TBMP was published on May 1, 2003 and revised once, in March of 2004. During the years between the 2nd and 3rd Editions, the TTAB issued more than 300 precedential decisions as well as a significant package of rules changes that took effect for proceedings commenced on or after November 1, 2007. The 3rd Edition incorporates amendments to the Trademark Rules of Practice, the Trademark Act, and the applicable Federal Rules as of November 15, 2010. Many of the most significant changes in the 3rd Edition relate to five topics:

  • 2007 changes to the Trademark Rules of Practice;
  • using ESSTA for electronic filing of TTAB documents;
  • Accelerated Case Resolution (“ACR”) options;
  • expanded precedents concerning Madrid Protocol applications; and
  • expanded details regarding concurrent use proceedings.

At more than 1,300 pages, the 3rd Edition is the most comprehensive version of the TBMP to date.  Its creation was a massive undertaking lasting several years and requiring the efforts of many Administrative Trademark Judges and other staff members. The TTAB has indicated its intent to provide more frequent updates in the future. 

In this 24 page guide, we have summarized most of the additions and changes included in the 3rd Edition.  We have underlined or otherwise emphasized changes that we consider to be particularly significant or interesting. Sections that were unchanged in the 3rd Edition have been omitted from this guide. Though many of these changes may already be well-known to frequent TTAB practitioners, we expect that a quick review of this document will bring to light several previously unknown or long-overlooked changes, even among the most experienced TTAB veterans.

Guide to Changes in the Trademark Trial and Appeal Board Manual of Procedure (TBMP), 3rd Edition

[1] The full text of the TBMP is available at http://www.uspto.gov/trademarks/process/appeal/Preface_TBMP.jsp

[2] Chief Administrative Trademark Judge J. David Sams, Preface to TBMP (2nd Ed.), May 1, 2003.

19
Aug

Anatomy of a TTAB hearing

Posted by ipelton on: August 19th, 2011

Upon motion for an oral hearing, the Trademark Trial and Appeal will hear arguments in cases before it. Our firm has appeared before the judges of the TTAB in many cases. Being local, I have always felt that it is advantageous to have an opportunity to have a dialogue about the case – and the facts and the law – with the judges. Much of the benefit of the hearing is getting questions from the judges and being able to respond to them.

 The Board’s rules manual says:

An oral hearing is optional and is scheduled only if a timely request therefor is filed by a party to
the proceeding. The oral hearing provides a party with one last opportunity to emphasize its
strongest arguments, and to refute its adversary’s arguments. It is particularly useful in cases
with complex issues or a complex record, or where the defendant needs to respond to arguments
in the plaintiff’s reply brief. If neither party requests an oral hearing, the case will be decided
on the evidence made of record during the testimony periods. TBMP Sect. 802.01.

Some more details about TTAB hearings:

Hearings are generally before a panel of three judges.

In an inter partes proceeding, each party is allowed up to 30 minutes for its argument.

In a hearing on ex parte appeal of a USPTO refusal to register a trademark, the appellant is allowed 20 minutes to argue and the Examining Attorney is given 10 minutes.

The party arguing first may reserve time for rebuttal. When there is a counter-claim, the defendant/counter-plaintiff may also be able to reserve time for rebuttal solely with regards to the counter-claim.

 The Board can arrange for parties to appear at the hearings via video conference if necessary. Otherwise, the hearings are generally in a courtroom at the offices of the Board in Alexandria, Virginia.

When a hearing is requested and then scheduled, the Board issues a notice. See example below.

For more details about TTAB hearings, see Trademark Trial and Appeal Board Manual of Procedure (TBMP), Section 802.

Occasionally, the TTAB will hold a live hearing in a more public venue, usually a bar association conference. We are honored to be participating in such a case in September at the fall meeting of the Virginia State Bar’s 23rd Annual Intellectual Property Fall CLE Weekend Seminar. See details in the hearing notice below.

[scribd id=62218957 key=key-1awcax8587enokafdgh6 mode=list]

 

Trademark Trial and Appeal Board – Notice of Oral Hearing

 

 

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