Wednesday, June 22, 2011

More Comments on TTAB Settlement Involvement: AIPLA, IPO, and John Farmer

AIPLA, IPO, and former TPAC Chairman John B. Farmer have submitted letters in response to the USPTO's Notice (here) requesting comments on the extent to which the TTAB "should become more directly involved in the settlement discussions of parties to inter partes proceedings." [TTABlogged here]. Paul Reidl's comments were posted here yesterday.

AIPLA comments here: Based on a survey of its Trademark Law Committee members, the majority view is that "The Board should be involved in settlement discussions only on an 'as needed basis' by stipulation of both parties." The parties "already devote time and resources to settlement discussions," and involvement of the Board "would likely delay action on the case."

IPO comments here: In a brief letter, IPO states its belief that the TTAB "should not become more directly involved in settlement discussions." Most cases settle anyway, and so any Board involvement in settlement would be applicable only to "a very small percentage of proceedings, and IPO does not believe that a policy of increased Board involvement would necessarily benefit that small percentage of proceedings."

John B. Farmer comments here: Mr. Farmer urges that settlement "intervention" be mandatory in all cases, occurring at specific junctures. His concern is that while the parties delay taking in action in cases, the public has an interest in having disputes over registration issues resolved expediently.

Text Copyright John L. Welch 2011.


At 11:38 AM, Anonymous Joe Dreitler said...

Paul Reidl pretty much said all that needs to be said on the subject and he said it well. Most lawyers and clients will not negotiate "use" issues in a TTAB settlement. Since the Board has no jurisdiction over use, few people would agree to mediation with the TTAB that deals with anything other than 1 subject - should the registration issue or not? Mediation is a time consuming and expensive proposition in preparation for the parties, their counsel and the mediator, if done properly. I just do not see how this could be justified in many cases on a cost basis given that the "stakes" are a registration, not limitations on use.


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