Tuesday, April 18, 2006

Background Reading for Your Comments on the Proposed TTAB Rules

Now that the PTO has extended until May 4, 2006, the comment period on the proposed TTAB Rule Changes, we all have plenty of time to file our comments. You may want to peruse certain comments that have already been filed, including those of INTA, AIPLA, and ABA-IP. Those and others are collected at the TTAB-Rules blog. Also of relevance to your mission are two articles from The Trademark Reporter discussing delay at the TTAB and offering suggestions for improving the situation. [These articles are made available with permission of the TMR].

John M. Murphy, in his article in the July-August 2004 issue of The Trademark Reporter, reviewed the TTAB's Section 2(d) inter partes cases decided in the year 2003, some 67 in all, and concluded that Board proceedings take too long and are unnecessarily complicated. That 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), was discussed here at the TTABlog in November 2004, where I reported:

"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 the summer of 2005, Anthony Fletcher provided a "qualitative look" at TTAB delay, and offered some suggestions for improvement. Anthony Fletcher, "TTAB Delay: A 'Qualitative' View," 95 Trademark Reporter 583 (May-June 2005).

Based on his many years of experience in litigation before the courts and the TTAB, Mr. Fletcher identified and addressed four causes of delay at the TTAB:
  1. parties stipulating to seemingly endless extensions and suspensions;
  2. the TTAB's opting-out of several federal rules for case management;
  3. a culture to which case management is alien; and
  4. seemingly endless delays in the decisional process.
In a nutshell, Mr. Fletcher suggested, inter alia, limiting the number of extensions and suspension in most cases, adopting and adapting several of the "unutilized" Federal Rules to provide more case management by the Board, mandating that the parties provide automatic disclosure on certain subjects, developing a "case management culture" at the Board, and streamlining the decisional process. His article, and that of Mr. Murphy, provide important insight into the issues the the Board attempts to address in its proposed Rule changes.

Like those two authors, I also suggested (in my November 2004 posting) that more active case management by the TTAB was needed. I'm sure that most attorneys who have been involved in Board inter partes proceedings would make the same recommendation.

TTABlog Thank You: Again, I thank The Trademark Reporter for granting permission to provide links to the Murphy and Fletcher articles. The Murphy article is Copyright © 2004 the International Trademark Association and reprinted with permission from The Trademark Reporter®, 94 TMR 800 (July-August 2004). The Fletcher article is Copyright © 2005 the International Trademark Association and reprinted with permission from The Trademark Reporter®, 95 TMR 583 (May-June 2005).

Text Copyright John L. Welch 2005-6.


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