Some Suggestions for Streamlining TTAB Proceedings

By the time I got to Phoenix for the INTA Mid-Year Meeting, I had a chance to read John M. Murphy's recent article entitled "Playing the Numbers: A Quantitative Look At Section 2(d) Cases Before The Trademark Trial and Appeal Board," 94 Trademark Reporter 800 (July-August 2004). Articles about the TTAB are rare, and this one deserves thoughtful consideration.
JW Marriott Desert Ridge Resort & SpaPhoenix, Arizona
Mr. Murphy reviews the TTAB's Section 2(d) inter partes cases decided in the year 2003, some 67 in all, and concludes that Board proceedings take too long and are unnecessarily complicated. The median time from filing to decision was 3.2 years, with the longest running 18.2 years (with the help of 22 extensions of time). In nearly half of the decisions, the first two du Pont factors – the similarity of the marks and the similarity of the goods/services – were the only decisive, with other factors (like channels of trade and the defendant’s intent) playing a subsidiary role.

Murphy lays the blame for these problems on the lack of supervision of proceedings by the Board and on the extensive discovery permitted. He thinks that, in light of the simplicity of the issues in many cases, more proceedings should be decided on summary judgment. Murphy also urges that discovery be curtailed -- through mandatory disclosures coupled with limits on the number of depositions and interrogatories -- and he recommends closer case management by the Board to reduce “delay, nuisance and expense.”

In my own experience, cases are often delayed because the parties want them delayed – e.g., in order to discuss settlement, or just to avoid the expense of going forward at that time. Thus “delay” in and of itself is not necessary undesirable. We can all agree, however, that “nuisance” should be eliminated and “expense” minimized. That’s where the Board and its interlocutory attorneys should aim their efforts – by keeping a close and critical eye on the duration of the discovery period, and by expanding the use of telephone conferences between the interlocutory attorney and counsel to decide discovery disputes promptly and rein in obvious abuse. I would also limit the number of interrogatories to 40 instead of 75, jettison the Rule allowing a responding party merely to file a general objection if it believes the interrogatory count exceeds the limit, and require responses to the first 40 parts and subparts regardless of the total count. I also believe that some type of mandatory disclosure should be instituted, and that the Board’s standard protective order should be entered automatically in every case, unless the parties jointly request that it be modified or eliminated in a particular case.

I expect to discuss TTAB reforms in future postings. If you have any thoughts on the matter, please e-mail them to me at jwelch@foleyhoag.com.