Thursday, June 11, 2015

Ken Germain: After B&B v. Hargis, TTAB Litigants Should Consider Expert Testimony

In his latest article, Kenneth B. Germain advises that the Supreme Court’s decision in B&B v. Hargis has made it more important to consider hiring a legal expert in inter partes proceedings before the Trademark Trial and Appeal Board. The Brave New World of Possibly Preclusive TTAB Proceedings: How Expert Testimony Can Strengthen Your Case.

Many believe that the B&B v. Hargis decision, holding that a TTAB ruling on likelihood of confusion may have preclusive effect in infringement litigation, will have significant impact on the way TTAB cases are handled. Over the years, TTAB proceedings have become more like federal litigation due to various rule changes and the ever-growing importance of trademarks in the economy. B&B v. Hargis is another step in that direction, since the decisions of the Board may now have added significance for the brand owner. And why think that the Supreme Court's ruling will apply only in the Section 2(d) context? For example, what about the Board's recently ruling on dilution-by-blurring in the Yankees case?

Ken Germain posits that the wise TTAB litigator should consider the possibility of expert testimony.

So, with inter partes TTAB cases/decisions having become much more likely to have expansive and lasting effect, what adaptive litigation strategies might be worth considering? Engagement of a potential expert witness on trademark/unfair competition law ... is one such strategy.

Mr. Germain suggests what issues may be particularly appropriate for expert testimony, when to look for an expert, how to find one, and how much one may cost. Welcome to the new TTAB world!

Read comments and post your comment here

TTABlog note: The linked article has been provided with the permission of BNA’s Patent, Trademark & Copyright Journal, 90 PTCJ 2104, 05/22/2015, Copyright 2015 by The Bureau of National Affairs, Inc.

Text Copyright John L. Welch 2015.


At 9:32 AM, Anonymous Anonymous said...

I have practiced before the TTAB for several decades, involving hundreds of cases, and have yet to use a legal expert. The Board doesn't need an expert to tell it what the law is. Not worth the money in my book

At 8:12 AM, Anonymous Anonymous said...

Agree. The Board knows the law. You may not like their decision on your facts, but they don't need anyone telling them the law. Just another way to increase the costs and complexities of TTAB practice and make it unaffordable to a large % of filers.


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