Thursday, December 20, 2007

Recommended Reading: "An Introduction to the New Trademark Trial and Appeal Board Rules"

In their Trademark Reporter article entitled "An Introduction to the New Trademark Trial and Appeal Board Rules" (pdf here), James R. Robinson and Kathleen E. McCarthy provide a useful summary of the new TTAB rules, with commentary on some of the decisions that practitioners will face in practicing under the new regime.

The authors see the following to be the most significant changes to the TTAB Rules:
  • The plaintiff must serve the defendant directly with the complaint to initiate the case and must file proof of service
  • The parties must hold an initial discovery conference within 30 days after the answer is served.
  • The parties are required to make mandatory disclosures at the discovery and trial stages that were not required under the prior Rules.
  • The TTAB's Standard Protective Order will be applied in all cases. However, the parties can move to modify it or to substitute a different order.
The authors note that the Board expects the new Rules to reduce delay in TTAB proceedings, but they note that the standard initial schedule for a proceeding will be some 50 days longer in order to accommodate the discovery conference and disclosure rules. In addition, a number of new motions are now available to parties, some of which will likely bring about suspension of the proceeding.

The initial discovery conference raises a number of questions, not the least of which are whether a party should request Board participation in the conference, and what to do during the conference, whether or not a Board member participates. In this blogger's view, the discovery conference may be the most significant aspect of the Rule changes because it provides an opportunity for each party to seek settlement and to focus in on the important issues that will advance its cause. In that context, the benefits and risks of having an interlocutory attorney involved should be carefully considered.

It may be a while before we have some general appreciation of how these new Rules are working, but for now the Robinson and McCarthy article will help us cope with the Rule changes and start us thinking about their strategic and tactical implications.

TTABlog note: Thanks again to The Trademark Reporter for granting permission to provide a link to this article, which is Copyright © 2007 the International Trademark Association and reprinted with permission from The Trademark Reporter®, 97 TMR 1380 (November-December 2007).

Text Copyright John L. Welch 2007.


Post a Comment

<< Home