Wednesday, August 10, 2016

TTAB Test: Can the TTAB Order the Parties to Mediate?

In this Section 2(d) cancellation proceeding, Respondent Cooper moved to compel the parties to mediate. The Board denied Cooper's motion, pointing out that, although the Board encourages settlement, the Board does not compel parties to mediate. Cooper then petitioned the Director seeking reversal of the Board's denial. How do you think this came out? Rhythm Holding Limited v. Raymond W. Cooper, Cancellation No. 92060118 (August 9, 2016).

Cooper contended that the Board "adopted a per se rule" that it does not compel mediation, and therefore abused its discretion because the parties had all but settled the matter, with the exception of the monetary amount to be received by Cooper. Plaintiff Rhythm observed that the parties once discussed settlement, including an offer and counter offer which were rejected, but there was no outstanding proposal.

Cooper maintained that the Board has the authority to compel mediation under Fed. R. Civ. P. 16, which addresses pretrial conferences, scheduling and management, and which is generally applicable to Board proceedings pursuant to Trademark Rule 2.116(a), 37 C.F.R. § 2.116(a).

The Director, however, found Cooper's s reliance on Rule 16 to be misplaced. Rule 16 does not expressly require compulsory mediation, though the provisions permit flexibility to facilitate settlement.

The Board does not require settlement, that the parties engage in settlement discussions or compel mediation. Rather, the Board encourages settlement, and several aspects of Board practice and procedure, including its discovery practice and its usual willingness to suspend proceedings for reasonable times while parties negotiate for settlement, serve to facilitate the resolution of cases by agreement. TBMP § 605.01. Were the parties mutually to agree to enter into mediation, the Board similarly would facilitate their endeavors.

It is clear that no Board rule exists requiring mediation be compelled; that, as acknowledged by [Cooper], the Board has not compelled mediation as part of its practice; and the federal rule relied upon by [Cooper] does not require that mediation be compelled. Thus, the Board did not abuse its discretion or commit clear error in denying [Cooper]’s motion to compel mediation.

Read comments and post your comment here.

TTABlog comment: The petition to the Director was filed on April 27, 2015 (not 2016, as stated by the Director) and decided in August 2016. Does this give you any ideas as to how to de-rail an inter partes proceeding for months and months?

Cooper's reference to Petitioner as a "trademark troll" drew a rebuke from the Director, who noted that "[a] party making unsubstantiated accusations runs the risk of being found to have acted improperly. Fed. R. Civ. P. 11(b)."

Still to be decided is Cooper's motion to compel telephonic communications between the parties. Will that one go to the Director as well?

Text Copyright John L. Welch 2016.


At 9:27 AM, Anonymous Mike Powell said...

Thanks for sharing this. Mediation is such a valuable tool that benefits parties and counsel involved in IP disputes. Unfortunately, many still don't understand how to use mediation appropriately for IP disputes. Glad the TTAB rejected this misguided approach.


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