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.