2018 Tenth Annual AIPLA Trademark Boot Camp. AIPLA Quarles & Brady LLP USPTO

Transcription

1

2 2018 Tenth Annual AIPLA Trademark Boot Camp AIPLA Quarles & Brady LLP USPTO

3 Board Practice Tips & Pitfalls Jonathan Hudis Quarles & Brady LLP (Moderator) George C. Pologeorgis Administrative Trademark Judge Trademark Trial and Appeal Board Andrew P. Baxley Interlocutory Attorney Trademark Trial and Appeal Board 3

4 Topics for Discussion ESTTA: Enhancements in place and scheduled for release TTAB Practice Pleadings Board s Standard Protective Order Initial Meeting of the Parties Suspension of Proceedings for Settlement Initial Mandatory Disclosures 4

5 Topics for Discussion (cont d) Discovery Motion Practice Pre-Trial Disclosures Trial and ACR Briefing Oral Argument TTAB Fees 5

6 ESTTA Enhancements ESTTA is the Board s electronic filing system. Electronic Systems for Trademark Trials and Appeals.

7 ESTTA Enhancements: Deployed June 2017 Form Updates: Added a category under the General Form inter partes option to file specific motions for review of the Board decision. Choices are as follows: Request for Reconsideration of a non-final Board decision Request for Reconsideration of a final Board decision Appeal/Cross Appeal to Federal Circuit or District Court Also allows parties to enter the case number. 7

8 ESTTA Enhancements: Deployed June 2017 Efficiency updates: Enhanced the summary judgment form to ask parties to validate more information to try to pre-determine the timeliness of the motion. Revamped the ESTTA filing receipt to include more information to the public: Added the availability of the public address as another way to communicate with the TTAB Assistance Center Clarified when to use ESTTA.uspto.gov Added information about the potential delay to view manually processed new oppositions and cancellations on TTABVUE 8

9 ESTTA Enhancements: Anticipated 2018 Modify Consent Motions form (Opposition or Cancellation) to utilize the proceeding s internal schedule. Options to extend: 30, 60 or 90 days Options to suspend: 30, 60, 90, or 180 days System adds the selected # of days to all open dates in the proceeding schedule Upon release, active oppositions and cancellation proceedings should have an internal proceeding schedule. If a proceeding does not have an internal schedule or incorrect dates displayed in the schedule, the filer will be prompted to contact the Board for assistance. Modification will simplify the form and reduce errors. 9

10 TTAB Practice Rules for filing and service.

11 Filing and Service File only through ESTTA unless prevented by technical problems or extraordinary circumstances: Paper filings for initial complaints, answers and extensions of time to oppose Require Petition to Director and fee Require showing of technical problems or extraordinary circumstances See 37 CFR 2.101(b)(1) - (3); 2.102(a)(1) - (2); 2.106(b)(1); 2.111(c)(2); 2.114(b)(1) All other paper filings Do not require a Petition to Director Require showing of technical problems or extraordinary circumstances within the filed paper See 37 CFR 2.126(b) Extensions of time to oppose and notices of opposition against Section 66(a) applications MUST be filed through ESTTA without exception. See 37 CFR 2.101(b)(3) and 2.102(a)(1) 11

12 Paper Filing - Technical Problems ESTTA is unavailable USPTO will cross-check time and duration to confirm unavailability Users are encouraged to check USPTO System Status TTAB s Outage Page Problems at filer s end Must describe in detail 12

13 Paper Filing - Technical Problems - Examples There is no ESTTA form Certain filings pertaining to extensions of time to oppose. Objection to further extensions of time to oppose (applicant). TBMP 210. Request to reconsider an extension of time to oppose (applicant). TBMP Relinquishment allows a potential opposer to relinquish the time remaining in an extension of time to oppose. TBMP 217. Respond to a Board inquiry or order (applicant or potential opposer) 13

14 Paper Filing - Technical Problems - Examples DFC Expo LLC v. Coyle, 121 USPQ2d 1903 (TTAB 2017) TTAB checked ESTTA status and duration of unavailability Take-Two Interactive Software, Inc. v. Spark Your Rockstar, Serial No (Comm r May 16, 2017) (dismissed as moot not precedent) Technical problems with USPTO payment system Filing was timely and certain fees were refunded Anhing Corp. v. Viet Phu, Inc., Serial No (Comm r May 26, 2017) (dismissed as moot - not precedent) Technical problem with ESTTA - resolved Filings were timely and certain fees were refunded 14

15 Paper Filing - Extraordinary Circumstances Relevant facts and accompanying evidence Disasters Fire Hurricanes, snowstorms Extended power outages Medical emergencies Remember: Commissioner is not empowered to waive or suspend a requirement of the Trademark Act 15

16 Service of Complaint Plaintiff no longer required to serve complaint on defendant Proceeding commenced by filing in the Office a timely complaint with required fee See 37 CFR 2.101(a) - (b) and 2.111(a) - (b). Board will issue notice of institution and serve notice of opposition on adverse party in the form of a TTABVUE link/address See 37 CFR 2.105(a); 2.113(a). Currently, the Board will serve a notice of institution and petition to cancel on adverse party via mail, even though there may be an address of record for defendant. 16

17 Electronic Service Between the Parties Except for initial complaint, all documents and filings must be served by unless parties stipulate to alternative means Make sure your and street addresses are up-to-date Parties expected to facilitate electronic communication with each other (e.g., FTP file transfer) Absent agreement, documents served by alternative means (e.g., First Class Mail, hand delivery) must be accompanied by written explanation within the served paper See 37 CFR 2.119(a) and (b) 17

18 TTAB Practice Pleadings and discovery conference.

19 Pleadings Party(ies) Seeking Extensions of Time to Oppose vs. the Opposer(s) Allegations Made Through ESTTA vs. Asserted in Complaint Making Your Registration(s) of Record The Downside of Asserting Too Many Registrations Subject to Counterclaims Subject to Increased Discovery Obligations 19

20 Pleadings (cont d) The Downside of Asserting Dilution Asserting the Elements of a Claim Without support facts may be insufficient Ashcroft v. Iqbal, 556 U.S. 662 (2009) Bell Atlantic Corp. v. Twombly, 550 U.S. 554 (2007) Asserting Blanket Defenses Without Supporting Facts is a Mistake Asserting Proper/Mandatory Counterclaims ( and Don t Forget the Proper Fee(s)!) 20

21 TTAB s Standard Protective Order Revised TTAB Standard Protective Order (as of June 24, 2016) Automatically imposed in inter partes proceedings Applies to all pending and new cases Exceptions apply Parties may modify by stipulation but subject to Board approval Changes include: Update to explicitly include disclosures (required and supplemental) Applies to testimony by declaration/affidavit as well as deposition 3 to 2 tiers of designations: Confidential Confidential Attorneys Eyes Only (Trade Secret/Commercially Sensitive) Inclusion of personal health, medical and financial information in Confidential-Attorneys Eyes Only tier Clawback provision 21

22 Initial Meeting of the Parties: Discovery Conference Topics include Standard Protective order: modify? Agreement as to How Papers are to be Served, Trademark Rules 2.119(b) & (c) Claims, defense, discovery Settlement and Methods-of-Discovery should be discussed Accelerated Case Resolution (ACR) Seeking Board Participation How and When to Ask When Appropriate to Ask 22

23 Suspension of Proceedings for Settlement Before Answer Filed After Answer Filed but before Meeting of the Parties Cautionary Tales of Continually Suspending for Settlement Without Real Settlement Activity No expectation Board will grant Requirement for status report 37 C.F.R (c) 23

24 Procedure: Suspension Board may suspend proceedings sua sponte - 37 CFR 2.117(c) Has discretion to condition approval of consented suspension on providing necessary information about status of settlement talks, discovery, or trial activities - 37 CFR 2.117(c) Proceeding is suspended upon the filing of a potentially dispositive motion - 37 CFR 2.127(d) Proceeding is suspended for other motions (e.g., compel) when suspension order is mailed No change from prior practice Board retains ability to manage its docket 24

25 TTAB Practice Discovery and disclosure.

26 Initial Mandatory Disclosures What Disclosures (Before the Board) Must Contain Witnesses & documents having discoverable information that may be used to support claims or defenses For identified witnesses: names, addresses, phone numbers For identified documents: categories Documents Relationship to Discovery Relationship to Proofs Allowed at Trial Amending Disclosures 26

27 Discovery Request what is truly relevant To claims and defenses Proportional to needs of case Consequences of failure to timely respond The special case of Requests for Admissions Admission deemed admitted, Fed. R. Civ. P. 36(a)(3) Moved to Test Sufficiency Inadequate/incomplete response Objections Counting Interrogatories, Document Requests and Requests for Admission before the Board Deadlines for Propounding/Taking Discovery before the Board 27

28 Discovery (cont d) Limits on discovery requests 75 Interrogatories, 75 Requests for Admission, and 75 Requests for Production o 37 CFR 2.120(d), (e) & (i) May move for good cause to exceed limits o 37 CFR 2.120(d), (e) & (i) One comprehensive RFA to authenticate specific documents produced by adverse party o 37 CFR 2.120(i) Discoverable items include ESI as well as documents and tangible things - 37 CFR 2.120(e) & (f) 28

29 Discovery (cont d) Proportionality in process and procedure expressly adopted - 37 CFR 2.120(a)(1) Must serve discovery early enough so that responses (including production or inspection) will be due no later than the close of discovery - 37 CFR 2.120(a)(3) 29

30 Discovery (cont d) No per se cap on number of extensions of discovery period But extensions should be limited If too many extensions are requested, Board may condition further extensions upon a required showing, or may deny further extensions entirely Cf. 37 CFR 2.117(c) Expert disclosure deadline must always be scheduled prior to the close of discovery - 37 CFR 2.120(a)(2)(iv) 30

31 Response Times: Motions and Discovery Additional 5 days for acting within prescribed period no longer allowed - 37 CFR 2.119(c) All 15-day response and reply deadlines for briefing a motion are amended to 20 days - 37 CFR 2.127(a) Summary judgment motions: time for response or filing of motion under Fed. R. Civ. P. 56(d) remains at 30 days; reply is amended to 20 days - 37 CFR 2.127(e)(1) Responses to written discovery: remain 30 days in accordance with Fed. R. Civ. P. 33, 34 & CFR 2.120(a)(3) 31

32 TTAB Practice Motions

33 Motions in General Wide range of motions available. See TBMP Chapter 500. Consented motions often granted through ESTTA Filing a motion that is potentially dispositive of any aspect of a proceeding automatically suspends case - 37 CFR 2.127(d) Potentially dispositive motions include: Motions to Dismiss Insufficient Pleadings Motions for Summary Judgment Motions to Dismiss for Failure to Prosecute Motions for Judgment based on Discovery Sanctions 33

34 Motions to Compel Motion to compel initial disclosures due 30 days after deadline for initial disclosures - 37 CFR 2.120(f)(1) Must include Showing of good faith effort to resolve issues before filing Copies of discovery requests and responses/objections Motion to compel discovery or to test sufficiency of responses to Requests for Admission must be filed by the day prior to the deadline for the first pretrial disclosure - 37 CFR 2.120(f)(1) & (i)(1) Once deadline passes, any subsequent resetting of first pretrial disclosure deadline will not reset the time to file a motion to compel 34

35 Motions: Summary judgment - timeliness Motions for summary judgment cannot be filed prior to service of initial disclosures 37 CFR 2.127(e) unless Based on issue or claim preclusion Based on lack of jurisdiction by the Board Motions for summary judgment must be filed by the day before deadline for plaintiff s pretrial disclosures - 37 CFR 2.127(e)(1) Once deadline passes, any subsequent resetting of first pretrial disclosure deadline will not reset the time to file a motion for summary judgment Parties may stipulate to an abbreviated trial 35

36 TTAB Practice Pretrial disclosures and trial

37 Pre-Trial Disclosures Witness and Document Disclosures Relationship to Initial Disclosures, Discovery Responses and Declarations attached to Motions Motions to Strike Pretrial Disclosures 37

38 Trial and ACR Do the Parties Want a Full-Blown Trial? Can Efficiencies be Achieved through Accelerated Case Resolution? Making One s Registration(s) Properly of Record Tight and Concise Testimony Depositions Direct Examination Laying Foundations Objections and Cross-Examination 38

39 Trial Testimony by deposition Testimony by affidavit or declaration 37 CFR 2.123(a) Subject to right of adverse party to take cross-exam Deposition transcripts must be submitted one page per sheet and with a word index 37 CFR 2.123(g)(1) and (3) TTAB judges and attorneys do read the submissions Standardized requirements for notices of reliance, including Internet evidence 37 CFR 2.122(g) 39

40 Trial (cont d) Notice of Reliance Internet materials - 37 CFR 2.122(e)(2) Current copy of information from USPTO databases Pleaded registrations Registrations (pleaded or unpleaded) owned by any party - 37 CFR 2.122(d)(2) Pending applications - 37 CFR 2.122(e) Indicate generally the relevance and associate with one or more issues - 37 CFR 2.122(g) File of subject application or registration Is of record without any action by the parties - 37 CFR 2.122(e) Statements in affidavits or declarations in file history record are not testimony - 37 CFR 2.122(b)(2) 40

41 Trial (cont d) Notice(s) of Reliance Why Documents are being Submitted Trademark Rule(s) of Practice under Which Discovery Responses are being Submitted Trademark Rule(s) of Practice under Which Documents are being Submitted Be Strategic in what is Submitted 41

42 Trial (cont d) Use of discovery deposition and written discovery responses - 37 CFR 2.120(k) Of the adverse party (a FRCP 30(b)(1) or 30(b)(6) deposition): may be introduced by notice of reliance: 37 CFR 2.120(k)(1) Must file a motion with pretrial disclosures if A party s own witness Or a third-party witness Under specific circumstances (e.g., unavailability of witness) 37 CFR 2.120(k)(2) 42

43 Trial (cont d) Witness not included in pretrial disclosure Move to quash notice of testimony deposition - 37 CFR 2.121(e) Move to strike if testimony presented by affidavit or declaration - 37 CFR 2.121(e) 43

44 Trial Briefs Evidentiary objections may be made in an appendix or by way of a separate statement of objections, neither of which is included in the page limit Briefs exceeding the page limit may not be considered by the Board See 37 CFR 2.128(b) 44

45 TTAB Practice Ex Parte Appeals

46 Ex Parte Appeals to the Board Record must be complete - 37 CFR 2.142(d) New evidence cannot be submitted after filing notice of appeal except: Timely request for reconsideration [TBMP ] Request for remand granted No change to substance of rule Expressly addresses a recurring mistake made by applicants 37 CFR 2.142(b)(2): Main brief limited to 25 pages. Explicitly notes that reply brief shall not exceed 10 pages 46

47 TTAB Practice Briefing tips; Oral argument

48 Briefing Keep it Concise Do Not Discuss Factors Not at Issue in the Case Evidentiary Objections may be a Separate Document Place a Short Summary of Arguments Up Front Do Not Attach Materials to Brief Citations to Fed. Cir. and TTAB Decisions; Infringement Decisions not as Relevant 48

49 Oral Argument Rarely Changes the Ultimate Result Good Practice in Factually Complicated Cases May be Helpful to Bring Sample of Product 49

50 TTAB Practice Judicial Review of Board decisions

51 Judicial Review of TTAB Decisions Rules are reorganized to align with PTAB Time for filing for judicial review= 63 days from Board s decision Copies of notices of appeal, notices of election, and complaints should be filed with the Board via ESTTA Avoids premature termination of proceedings Copies of notices of appeal must be served on every other party to the proceeding In ex parte proceedings, notices of appeal must be filed with the Director, addressed to the Office of General Counsel. If the review is by way of civil action, the summons and the complaint must be served on the Director. In inter partes proceedings, notices of appeal and notices of election must be served on all parties and filed with the Director, addressed to the Office of General Counsel. 37 CFR

52 TTAB Fees

53 Fees New, Per Application New fees for extensions of time to oppose are per application, not per class No charge for initial 30-day extension $100 (ESTTA) or $200 (paper) next 60 days $200 (ESTTA) or $300 (paper) last 60 days Option to request 90 days in an initial extension remains available Fee required attributed to the latter 60 days of the 90-day period requested All fees are due upon filing 53

54 Current TTAB Fees Fee Code Rule Description Fee Fee (a)(16)(i) Filing a Petition to Cancel on Paper, per Class* $ (a)(16)(ii) (a)(17)(i) (a)(17)(ii) (a)(18)(i) (a)(18)(ii) New New New New 2.6(a)(22)(i) 2.6(a)(22)(ii) 2.6(a)(23)(i) 2.6(a)(23)(ii) Filing a Petition to Cancel through ESTTA, per Class Filing a Notice of Opposition on Paper, per Class* Filing a Notice of Opposition through ESTTA, per Class $500 $400 $400 Ex Parte Appeal to the Trademark Trial and Appeal Board Filed on $300 Paper, per Class* Ex Parte Appeal to the Trademark Trial and Appeal Board Filed through ESTTA, per Class $200 Filing a Request for an Extension of Time to File a Notice of Opposition under 2.102(c)(1)(ii) or (c)(2) on Paper,* per application $200 Filing a Request for an Extension of Time to File a Notice of Opposition under 2.102(c)(1)(ii) or (c)(2)) through ESTTA, per application $100 Filing a Request for an Extension of Time to File a Notice of Opposition under 2.102(c)(3) on Paper,* per application $300 Filing a Request for an Extension of Time to File a Notice of Opposition under 2.102(c)(3) through ESTTA, per application $200 54

55 Questions? Thank You. 55

56 56