TTAB is Considering Dropping Citations to USPQ in favor of Westlaw
In a recent Board decision, In re Pro Eagle LLC, Serial No. 97738815 (February 9, 2024), the Board announced in a footnote that it is conducting an "internal Board pilot program exploring the possibility of broadening or altering acceptable forms of legal citations in Board cases." It appears that the Board may decide to drop USPQ citations in the future. The footnote from the Pro Eagle case is quoted below.
As part of an internal Board pilot program exploring the possibility of broadening or altering acceptable forms of legal citations in Board cases, the citations in this opinion vary from the citation forms recommended in Trademark Trial and Appeal Board Manual of Procedure (TBMP) § 101.03 (June 2023). This decision cites precedential decisions of the Court of Appeals for the Federal Circuit and the Court of Customs and Patent Appeals only by the page(s) on which they appear in the Federal Reporter (e.g., F.2d, F.3d, or F.4th). Precedential decisions of the Board and the Director will be cited only to WESTLAW (WL) and initial citations to Board decisions will include a parenthetical indicating the decision’s precedential status. There will be no citations to the United States Patents Quarterly (USPQ). Practitioners, however, should continue to adhere to the practice set forth in TBMP § 101.03 until further notice from the Board.
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TTABlogger comment: What do you think? Is this bad or good for practitioners? Why is the Board considering this change?
Text Copyright John L. Welch 2024.
posted by John L. Welch @ 2/12/2024
16 comments
16 Comments:
The Board may be considering the change because it is 2024 and no one keeps massive libraries of reporters anymore (and hasn't for a decade), but everyone has access to Westlaw or Lexis (and not through block-oriented green-screen monitors). In ye olden times, splitting out the USPQ saved shelf space, but there's no need for it now that our "shelf space" is infinite (like the Longines Symphonette).
The USPQ is available online.
Everyone does not subscribe to Westlaw. Not sure why this is even an issue. Citations to any published decisions shold be accepted, no matter where they are reported.
I think this is a long-overdue modernization of T.T.A.B. procedure. While back in the day I relied heavily on the USPQ, today it is a shadow of its former self and outmoded. It’s time the T.T.A.B. got in sync with modern citation systems.
Should the Board allow citation to the slip opinions of the CAFC and TTAB, which are available free on-line?
There are likely two drivers. First, the Board may be responding to the expense of the USPTO subscribing to BloombergLaw in order to access the USPQ. Second, the Board may be looking for a uniform means of finding caselaw. Nonetheless, the fact that not everyone has access to Westlaw is definitely an issue that needs to be considered. Regardless of the end result of the study folks will likely need to include a notation of "Precedential" in cites because we will no longer have the USPQ moniker to separate precedential from non-precedential decisions.
I agree with these comments:
- Citations to any published decisions should be accepted, no matter where they are reported; and
- The Board should allow citation to the slip opinions of the CAFC and TTAB, which are available free on-line.
I will add that I do not think it is proper for the TTAB to favor one vendor over another.
On Westlaw, I have a subscription only to McCarthy and I use LEXIS / others for case research.
Westlaw is not very friendly to small and solo practitioners, in my opinion -- in pricing or service.
Private systems are not bound to keep numbering systems or case management policies. Seems like it would benefit established law firms with Westlaw accounts, and now small firm attorneys or pro se litigants. These things change. It's pretty easy to find decisions online, but it's not easy to find Westlaw citations. I have been in law for over 25 years, and I only used Westlaw in law school. Even if Westlaw is a choice, is it really that hard to cite to the USPQ?
I think it is terrible idea for the Board to "cite only to Westlaw" as a lot of us do not use Westlaw. The Board should cite to its own depository of decisions in the TTAB Reading Room, and to the Federal Reporter for appellate case law.
While perhaps Anonymous did not realize that USPQ is available on-line, he or she should be given extra credit for the "They Might Be Giants" reference..."not to put too fine a point on it."
I suspect the high cost of BloombergLaw is driving this change. My large law firm limits the attorneys who have access to BloombergLaw due to its cost, but I have been allowed to have one of the seats because we need it to access USPQ cites online.
John-- where is the USPQ available online? Or did you mean it's online through a paid service?
The standard for citations should be the citations that everyone has FREE access to. Forcing practitioners to use Westlaw for TTAB citations is outrageous. TTABlog citations to TTAB opinions should be the standard...
The USPQ is online, but not free. In fact, it's too expensive.
Thank you for bringing this to the attention of your readers. I don't much mind whether the Board cites to Westlaw or the USPQ in its opinions, as long as I can find the case. I use Fastcase (free from my Bar association), the TTABlog, and/or the Board's reading room to find and read most decisions.
Your comment did cause me to (re)read TBMP 101.03 which provides: "Citation to all TTAB decisions should be to the [USPQ], if the decision appears therein." This is a bigger issue to me than how the Board cites to cases. I don't have a subscription to Westlaw, Lexis, or Bloomberg. Therefore for opinions not published in a Federal Reporter, I can either cite to the PTO's electronic database by case number, or I can visit a local law school library and find a USPQ citation the old-fashioned way.
As noted by a comment above, I would be in favor of dropping the requirement that practitioners cite to the USPQ in briefs, and permit citation to the PTO electronic database for Board decisions not otherwise published in a Federal Reporter. Of course this would require that the Reading Room include all Board decisions. Last time I checked, it was missing many of the older decisions cited in the TBMP.
Yes, the USPQ is available online, for a price, just as WL is. My point was that in 2024, the USPQ is redundant. All the points here about cost and availability are equally true with respect to other litigation fora, most of which rely on WL and LEXIS for otherwise unpublished citations. -Original Anonymous
Another solo with a Lexis subscription here. I don't have Westlaw, and I usually have no means of getting the WL cite for a case.
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