The U.S and other countries are quickly transforming from manufacturing driven economies into information based economies. As a corollary to this shift, companies’ intangible assets, such as intellectual property, are becoming increasingly important. One such intellectual property asset is trademarks. Trademark assets are especially important as they protect the goodwill associated with a particular company. Consequently, businesses today are taking more precautions to protect their trademark assets.
One manner by which companies protect trademark assets is through the U.S. Trademark Trial and Appeal Board (TTAB). The TTAB is a board which hears disputes regarding the registration or cancellation of a federally registered trademark. The TTAB generally hears three types of cases: (1) opposition to a trademark registration; (2) cancellation of a registered trademark; or (3) applications for concurrent use registrations. The TTAB has recently made significant changes to its procedural rules. Companies often rely on in-house counsel to litigate TTAB matters; therefore, it is imperative that businesses stay informed of the pertinent rule changes. This article will address the most significant rule changes.
The TTAB rule changes generally bring TTAB closer in line with the Federal Rules of Civil Procedure. The first significant change involves the commencement of a TTAB proceeding. A TTAB matter is commenced when a party files a notice of opposition to a trademark application; a party files a petition to cancel a registered trademark; or a party files a concurrent use application.
Under the old rules, a petitioning party would file the petitioning documents with the TTAB. The TTAB would then forward those documents on to the necessary defendants. This caused delay and confusion, as the petitioning party often corresponded with TTAB subsequent to filing petitioning documents, but prior to the defendants receiving such documents from TTAB. The amended TTAB rules require a party petitioning for cancellation or opposition to serve the defendant directly. The new rule streamlines the commencement process because it removes TTAB as an intermediary for the petitioning documents. The new method also ensures communication and promotes settlement negotiations between the parties. The amended rules regarding commencement of a proceeding do not apply to concurrent use applications.
Another significant TTAB rule change deals with discovery. Parties engaged in federal litigation are required to make certain disclosures prior to receiving discovery requests. The prior TTAB rules contained no such requirement. However, the amended rules bring TTAB more in line with the initial disclosure requirement of the Federal Rules of Civil Procedure by requiring parties to exchange certain information shortly after the commencement of a proceeding. The information required for initial disclosures include the names of individuals holding information which a party may use to support a claim or defense and the documents or other pieces of evidence the party may use to support a claim or defense. The amended rules preclude a party from seeking further discovery until after it has made the initial disclosures.
The amended TTAB rules will significantly change the way parties practice before the TTAB. The new rules alter, among other things, the procedure for commencing a case and the schedule for discovery in a proceeding. These changes will streamline the TTAB process; however, failure to comply with the rules can make the process more costly and time consuming. Therefore, it is important that companies, as well as their counsel, become familiar with the changes.
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Devon Eggert, an associate in our Chicago office and a member of our Intellectual Property practice group, concentrates his practice in intellectual property, commercial litigation, and bankruptcy. If you have questions regarding the article above, please contact Devon via deggert@querrey.com or via 312-540-7148.
