Friday, April 22, 2011

TTAB Seeks Comments on Its Possible Involvement in Settlement Discussions

In a Notice published (here) today in the Federal Register, the USPTO seeks comments on the extent to which the TTAB "should become more directly involved in the settlement discussions of parties to inter partes proceedings."

The purpose of this notice of inquiry is to determine whether the involvement of an Administrative Trademark Judge (ATJ) or Board Interlocutory Attorney (IA) would be desirable by parties, and if so, how extensively and at what points in proceedings. In addition, to the extent stakeholders voice a preference for assistance in settlement discussions but prefer such assistance to be provided by mediators or individuals other than Board judges and attorneys, it will be useful for the Board to receive suggestions on this option.

What do you think? Please leave a comment.


At 11:36 AM, Anonymous Anonymous said...

This is a very bad idea for anyone who thinks that the TTAB still has a role to play in (relatively) informal disputes over trademark registration, and not as a quasi Article III court with no jurisdiction to enjoin use.

With all due respect, are they going to hire lawyers who have spent years in private practice litigating cases and negotiating settlements for these jobs?
Because if they are not, and they envision having people who have spent (for the most part) their entire career as trademark office examiners and never tried a case in court acting like "mediators" telling lawyers who actually practice law why they should settle cases, this is doomed to fail on multiple fronts.

This will add nothing to the process, just waste time.
Most federal courts do not have mandatory mediation because if the parties want to settle, they will at some point. But it is not because even a federal judge tells them they HAVE to.

This will have the opposite effect - - people will stop filing TTAB cases.
When I have a client who wants to mediate, it costs thousands of dollars to prepare position papers, sit down with the client and go over what they want, what they will give and what they can achieve. We are supposed to tell clients that they should expect to spend $30-50K in a mandatory mediation proceeding? Over a trademark application?
The practical problems are enormous. You can't "mediate" over the phone, the whole point is the personal side of it, being in the same room. Are you going to require a business person with decision making authority to be on the line?

Are they going to make people fly up to Virginia for such mediation? Now we're really talking serious money.
And if they don't mediate in good faith or have a business person as part of this, then what? You're going to sanction them?

If the goal is to make TTAB proceedings increasing expensive, formalistic and impractical and cause people not to use the process, then this is a great idea. Otherwise, it is ridiculous and everyone who practices in this field should say so.
This is really off the rails.

At 1:22 PM, Anonymous Anonymous said...

The Board acknowledged two-thirds of its cases are resolved without Answer being filed. A much higher percentage are resolved before trial.
Required settlement conferences would only further complicate a Board registrability proceeding, making Courts look more cost-effective for parties.
Hopefully, this Board suggestion will be completely dropped.

At 11:58 AM, Anonymous Anonymous said...

With the recent absurd decisions coming from the Board we are supposed to have them assist us in resolving cases? Ya right.
The Board is already overworked as it is.
They need to spend time getting their decisions right first.


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