Wednesday, May 31, 2017

TTABlog Bonus: 2017 Edition of "Advanced Practice Tips from the TTAB"

Here is the latest version of "Advanced Practice Tips from the TTAB," which provides highly useful guidance on how to navigate many of the procedural issues/hurdles faced by the TTAB practitioner. This 2017 edition incorporates the January 2017 Rule changes.

I offer a few TTAB tips off the top of my head (some duplicative of the TTAB's tips):
  • As soon as the proceeding is commenced, start thinking about what you have to prove, and planning how you will prove it. 
  • If you have a pro se party on the other side, or a difficult attorney, request participation of a Board representative at the mandatory discovery/settlement conference. This may also provide an opportunity to knock out badly pleaded or groundless claims (like fraud).
  • Midway through the discovery period, check your initial disclosures to make sure that you have named the individuals that you expect to call as witnesses. If not, amend the disclosures pronto.
  • Docket a date for services of written discovery at least 30 days before the close of discovery, because written requests must be served on or before that date in order that responses will be due by the close of discovery. If you are planning to take a discovery deposition, you may want to move that date back even farther.
  • Study the rules and the TBMP so that your pleaded registrations are properly made of record. But remember, generally, that although the TBMP may be cited, it is a guidebook; it is not the law.
  • Be reasonable in dealing with the other side. In my experience, The Board and its interlocutory attorneys appreciate advocates who are reasonable (and respectful), which can benefit you in the short and the long run.
Read comments and post your comment here.

TTABlog comment: At page 6 of the Board's paper, I think the Board understates the impact of the Jack Wolfskin and Juice Generation decisions on the potential probative value of third-party registrations and use in the likelihood-of-confusion context. For example, see the Board's ROSE SENIOR LIVING decision, TTABlogged here.

Got any tips of your own?

Text Copyright John L. Welch 2017.


At 7:47 AM, Anonymous Anonymous said...

In re Justin's is an unusual case (and a nice break from the ever increasing number of 2(e)(1) appeals).


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