THE TRADEMARK TRIAL AND APPEAL BOARD (TTAB) IS A STICKLER FOR RULES
It is very easy to get lost in the substantive arguments of a trademark dispute; who’s right, who’s wrong, what are winning and losing arguments. However, it is critical to remember that before getting into the meat of a case, one must first understand the procedural mechanics of filing and responding to a trademark opposition proceeding. This article contains an overview of the procedural steps and timelines associated with trademark oppositions are brought before the Trademark Trial and Appeal Board (TTAB).
THE PURPOSE OF FILING A TRADEMARK OPPOSITION PROCEEDING
At the core of any trademark opposition is the essential claim that the admittance of a pending trademark would in some way be unfair or illegitimate to the Plaintiff, or Opposer, under various theories of law. For example, perhaps the most common reason a trademark opposition is filed is grounded on the Opposer’s claim that the new trademark, if registered, would cause a likelihood of confusion with the Opposer’s mark. So, where can the Opposer air his grievance and seek to stop the trademark from proceeding to registration? Well, of course, in the Trademark Trial and Appeal Board (TTAB). The TTAB, which is the judicial arm of the U.S. Patent and Trademark Office, hears and rules on trademark oppositions and cancellations and is ultimately responsible for deciding the admissibility or ineligibility of a trademark.
THE MECHANICS OF THE TRADEMARK OPPOSITION PROCESS WITH THE TRADEMARK TRIAL AND APPEAL BOARD
COMPLAINT AND NOTICE:
Make no mistake, a trademark opposition proceeding is a very serious undertaking and, in many respects, a quasi-virtual lawsuit similar to traditional civil actions filed in the judicial system.
The aggrieved party who is making the complaint is known as the Opposer. The Opposer first files a Notice of Opposition to the TTAB, which sets forth the preliminary case, for why they are opposing a trademark. The Opposer, like in a “real lawsuit”, must serve a copy of the Notice of Opposition to the Applicant (The Applicant is the party who owns the trademark application) or their representative. Next, once the Notice of Opposition is filed and served, the TTAB issues an “institution order” to both the Opposer and the Applicant which sets forth the procedural terms of the action. The institution order contains both an immediate due date for the defendant’s, “Answer”, and a broader time-schedule for the discovery period and trial.
The Answer, which must be submitted to the TTAB within 40 days from the date on the institution order, is a short, concise denial of the claims made in the Notice of Opposition. Each claim presented in the Complaint must be responded to by with a corresponding answer that either affirms, denies, or claims ignorance as to the truth of the Opposer’s Claim. For example, if one of the claims in the Complaint were something to the effect of, “Applicant’s trademark is sufficiently similar to Opposer’s trademark such that its registration would cause a likelihood of confusion with Opposer’s trademark”, the Applicant would, “Deny.” If the Opposer makes the claim that, “Opposer has been using its trademark for 10 years”, Applicant would plead ignorance based on not having a sufficient amount of information to address the claim. Answers may also include arguments that affirm the Applicant’s rights over the trademark. For example, the Applicant might point out that a portion of the trademark is diluted by virtue of the fact that it is ubiquitous in the given industry. In certain cases, a particularly bold Applicant may actually seek cancellation of the Opposer’s registration(s).
The institution order will also include a date for a discovery/disclosure conference, which is typically 30 days after the Answer is due. Federal Rule Civil Procedure 26(f) outlines what must be discussed during the conference. The topics that must be discussed include: (i) settlement; (ii) modifications to the discovery/trial calendar; (iii) stipulation for declaration versus deposition testimony; (iv) expert testimony and scheduling; (v) preservation of discoverable information; (vi) development of a discovery plan; (vii) any issues about electronically stored information including form of document production proposed; and (viii) any changes to the TTAB’s Standard Protective Order. The idea here is that the TTAB wants to do everything in its power to avoid a long and drawn out suit, which would clog and tie up its own office. The Mandatory Discovery conference is designed to facilitate an (optimistically) amicable exchange between the parties so that they can reach a quick and mutually satisfying agreement.
Before either the Opposer or the Applicant may file a disclosure or discovery request with the TTAB, both parties are obligated to serve Initial Disclosures under FRCP 26(a)(1)(A) – (B). Here, the parties are simply required to deliver to the otherside basic administrative information. For example, the name and address of individuals who are likely to have “Discoverable information”, certain documents containing information that the disclosing party may seek to employ in support of its claims, a calculation of damages etc.
The discovery period begins 30 days after the Answer is filed. The parties have 30 days from the start of the discovery period to make Initial Disclosures, which include: (i) the name, address, and telephone number of each person who may have discoverable information that the disclosing party may use in support of its claims or defenses; (ii) a description by category and location of all documents, electronically stored information, and tangible things that are in possession, custody, or control of the party and that the disclosing party may use to support its claims or defenses. Note that there is no obligation to disclose the name of every witness, document, or thing.
After each party has made Initial Disclosures, they may seek discovery. Similar to a federal court proceeding, the discovery period enables each party to ask the other questions about their claims. They can demand to see documents and evidence that support the claims being made. Witnesses can be calls as well. Discovery is about information gathering. It is both a process and tool each side may use to gather incriminating information about the other party. Unfortunately, Discovery may very well be the most expensive part of the entire proceeding and can take untold hours of time. It is critically important for the Applicant to discuss financial considerations with his trademark attorney prior to proceeding and ensure he/she has a full appreciation for the financial commitment he is about to assume when diving into the Discovery pit.
As a procedural matter, the TTAB gives 180 days for the discovery period. That time period can be extended by the TTAB or as agreed upon by the parties’ counsel and to this end, the TTAB will generally grant requests to extend discovery (even if such a request happens more than once).
The motions available in a civil action are also available in a TTAB opposition (e.g., motions to dismiss, motions to compel, motions for summary judgment). Unlike civil actions, any disposed witnesses or their representatives who live outside of the United States during TTAB discovery, are asked to submit their testimony in writing. Sometimes, a foreign witness may need to offer an oral deposition if both parties agree to those terms, or an oral deposition is ordered by the TTAB because either party has shown good cause. Proving good cause to the TTAB is extremely rare, but if the foreign party or its representatives will be in the U.S. during the discovery period, they may be deposed.3
The deadlines for disclosure of the identification of experts who will testify is 30 days prior to the close of discovery. FRCP 26(a)(2) outlines how expert witnesses are disclosed.
The TTAB doesn’t like suprises and either party who plans to use an expert witness must notify the TTAB. The TTAB may suspend, at its discretion, proceedings to allow for discovery limited to certain experts. Within these pretrial disclosures, each party must disclose the identities of their witnesses, the list of subjects each witness will testify to, and a listing of documents and things that will be presented during the witnesses’ testimony. If one party plans to use an expert witness solely to refute other party’s expert, then disclosure is required within 30 days of the adverse party’s disclosure.
Remember, unlike a civil action, the TTAB does not sit for a live trial during an opposition. Instead, an opposition trial is conducted through what are known as “testimony periods.” Here’s how testimony periods work:
First, the Opposer has a 30-day testimony period to submit evidence. Then, the Applicant has a 30-day testimony period to submit evidence, after which, the Opposer has 15 days to submit rebuttal evidence. The evidence on both sides generally takes two forms.
One type of evidence comes from either sides’ deposed witnesses. The adverse party has the right to attend the depositions and cross-examine the witnesses. Either party can also depose the other party’s witnesses or third parties during its own testimony period. However, this action takes a subpoena issued by a district court.
The other type of evidence comes in the form of documentary evidence through what is known as a “Notice of Reliance.” A Notice of Reliance is a written statement identifying the evidence and describing how it is relevant. The types of documentary evidence that can be submitted through a Notice of Reliance include discovery depositions of witnesses, the adversary’s responses to correspondence, certain types of printed publications (e.g., books, newspapers, and magazine articles), and official records such as court or Board decisions and third-party trademark registrations.
BRIEFING THE CASE
Upon completion of the testimony periods, the next stage is the, briefing of the case. Remember, ultimately, each party is attempting to prove their case. The brief is the mechanism to succinctly marshal forth all of the evidence brought to light and craft a narrative which communicates to the decision makers, why their arguments should prevail. Thus, the trial brief is allows each party to develop a summary of the evidence, discuss the facts of the case and offer their strongest arguments.
The TTAB here too has procedural restrictions both on the number of pages the two respecrive parties are permitted to present and the time frame underwhich the briefs must be submitted. The Opposer must file their main brief within 60 days after the close of their rebuttal testimony period while the Applicant must file their main brief within 30 days after the Opposer’s filing date. The job then of the TTAB is to consider the broader evidence and the summation of that evidence in the Trial Brief’s and reach a decision on the merits of the case.
ORAL HEARING AT THE TTAB
While less common, either party maintains the right may request an oral hearing of their arguments. Why would this happen? Perhaps an attorney for one of the parties feels that the facts of the case are such that they are more easily communicated through oral discourse rather than relying strictly on the brief to do the work for them.
If the request is granted, a panel of three Administrative Trademark Judges will decide the case.
The oral argument before the judges is like an appellate argument in a civil action. Each party has only 30 minutes. Opposer’s counsel argues first, Applicant’s counsel argues second; and Opposer’s counsel argues again if they didn’t use up their 30 minutes in their initial arguments.
It’ll usually take the TTAB 3 to 6 months to issue a written decision. The losing party can either accept the decision or file a request for reconsideration within 30 days of the Board’s decision.
WHAT HAPPENS IF EITHER PARTY LOSES
The losing party has the right to file an appeal with the U.S. Court of Appeals for the Federal Circuit or to a U.S. District Court (for a de novo review in which the parties can introduce new evidence and assert claims and counterclaims for infringement, dilution, etc.) These appeals must be filed within 60 days of the TTAB’s final decision. Again, here it is important for the losing party to understand the financial costs and ramifications of taking the case to a Federal Court. The “conventional” court system is simply much more complicated, and therefore expensive, than proceedings undertaken in the TTAB and a trademark attorney should be consulted prior to making this more serious move.