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.

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