Tuesday, April 26, 2005

Leo Stoller At Forefront Of TTAB Drive For Increased Electronic Filing

My fellow Chicagoan Leo Stoller provides considerable content for the TTABlog, in part because he travels at the forefront of the TTAB's steady drive for increased electronic filing in Board proceedings. Okay, maybe he's the drivee and not the driver, but nonetheless . . . .

Route 66 -- Chicago
Click on photo for larger picture.

Two months ago, in Stoller v. Northern Telepresence Corp., Opposition No. 91162195, certain "glaring discrepancies" in the mailing of Mr. Stoller's requests for extension of time to oppose led the Board panel to order that all subsequent papers in that proceeding be filed via ESTTA. (TTABlogged here).

This month, in Central Mfg. Co. v. Dreamworks L.L.C., Opposition No. 91156858 (April 6, 2005), TTAB Interlocutory Attorney Cindy B. Greenbaum issued a similar order, requiring Stoller's company, Central Mfg. Co., to file all of its papers via ESTTA. Again, questions arose regarding the dates when Central had mailed certain documents:

". . . the Board recognizes that on at least two occasions, the Board has not received copies of opposer's filings. In fact, with respect to applicant's motion to join, the Board received applicant's reply and supplement thereto on April 1, 2005 and April 4, 2005, respectively, but, as noted above, the Board remains unsure whether opposer actually filed a response, and/or whether such response is timely. The Board also notes that applicant has used the Board's electronic filing systems (ESSTA) [sic!] for all filings in this matter, and the Board has had no problems receiving applicant's filings."

"In an effort to promote efficiency and maintain control over the Board's docket," the Board ordered Central to use ESTTA for all future filings in the opposition.

The Board's reasoning in ordering Stoller and Central to file via ESTTA applies in good measure to all Board proceedings. In every case, ESTTA allows the Board more efficient control over its docket. ESTTA also provides the same benefits to the involved parties: increased efficiency and control over their own dockets. Certain TTAB documents (e.g., oppositions to Madrid-based applications, as well as requests for extension of time to oppose such applications*) already must be filed electronically, and it seems inevitable that before too long the Board will require virtually all documents to be filed in electronic form.

One problematical area, however, is the filing of confidential documents. As the PTO website warns, ESTTA should not be used for such filings:

Board files are government records available to the public for inspection and copying. Parties desiring to file confidential documents in a Board proceeding may only do so pursuant to a court order, an order of the TTAB, or a stipulation of the parties which permits such filings. Confidential documents must be filed under separate cover as prescribed by Trademark Rule 2.126(d). DO NOT USE ESTTA TO FILE CONFIDENTIAL DOCUMENTS; such filings should be made in paper only. Failure to follow the proper procedure for filing confidential documents may result in public disclosure of the papers. *** For more information on filing confidential materials, see Trademark Rule 2.27(3), 2.126(d); TBMP § 412.04.

A redacted copy of the confidential document must also be furnished, and it may be filed electronically via ESTTA. Another alternative to paper filing may be filing on a CD-ROM. (See Rule 2.126).

* See the Board's recent citable decision in In re Börlind Gesellschaft für kosmetische Erzeugnisse mbH, 73 USPQ2d 2019 (TTAB 2005), TTABlogged here.

Text and Chicago photograph ©John L. Welch 2005. All Rights Reserved.


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