©2013. Published in Landslide, Vol. 6, No. 1, September/October 2013, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.
Feature
Profiles in IP Law: An Interview with Chief Judge Gerard F. Rogers
Cheryl L. Black
The Honorable Gerard F. Rogers began his career in public service at the United States Patent and Trademark Office on December 7, 1987. “It’s hard to forget the anniversary of Pearl Harbor Day, but that was when I started at the office as an examining attorney,” he said. Twenty-six years later, that examining attorney—hired straight out of law school—is now chief administrative law judge for the Trademark Trial and Appeal Board (TTAB or Board).
Landslide® magazine sat down with Chief Judge Rogers after the ABA Intellectual Property Law (ABA-IPL) Section’s Inaugural Trademark Day, held at the USPTO on April 24, 2013, to discuss his rise to the highest position of the federal agency’s trademark administrative tribunal and the changing landscape of the Board over the past two and one-half decades. The interview covered a variety of topics, including advantages of practicing before the Board, current initiatives, personnel and organizational changes, pendency issues, and an increased stakeholder engagement.
Career Path from Examining Attorney to Chief Judge
Has your entire legal career been at the USPTO?
Yes. I was examining attorney, then a staff attorney for the Commissioner for Trademarks—at that time known as the Assistant Commissioner for Trademarks. The Commissioner’s Office had two attorneys; I did a training detail there and then they added another attorney position. I applied for and obtained that position. I was for a time there writing speeches, preparing CLE materials for the Assistant Commissioner, and working on petition decisions. I found it particularly interesting to work on petitions that came to the Commissioner’s Office from the Board seeking review of orders that the Board had issued.
How did you feel reviewing Board orders?
It always felt a little odd to me because I knew that the judges and the attorneys at the Board—even then, before I was working with them—were very smart, capable people. I always thought it kind of odd that the structure called for review of their work in the Commissioner’s Office, but that’s the way the structure has been and remains to this day.
How did you end up at the Board?
At that time in 1992, the Board was composed of nine judges, then known as members, and six attorneys, and that was the full extent of the Board. Openings at the Board did not come up frequently, because it was much smaller and there wasn’t much turnover. So, when one of the attorneys left and there was a position open, I applied for it and was lucky enough to get it. I’ve been at the Board since 1992.
You started at the Board in 1992 as an interlocutory attorney. How many years were you a Board attorney?
Seven years, until my appointment as a judge on, again, a memorable day—July 4, 1999.
A Comparative Look at Board Practice and Procedures
In what ways does the Board’s practice differ from district court cases that make it an attractive alternative?
There are two main areas where our practice differs significantly, and the entire question of the district court’s jurisdiction is very different than the Board’s.
In terms of procedures and the way we handle cases, we have what are known as “paper trials.” People don’t come here and put witnesses on the stand; we don’t have trials conducted here at the Board. It’s a very different kind of proceeding, with its positives and negatives. Many trademark practitioners consider the “paper trial” that is utilized by the Board, as compared to in-court presentation of witnesses and evidence, to be a less expensive and therefore more attractive option than a district court proceeding.
The other aspect of our practice that is significantly different than that of most district courts is that we have always been much more liberal in terms of granting consented extensions and consented suspensions to allow parties to focus on settlement talks without having to concurrently work through discovery and trial issues. In the rocket docket in the Eastern District of Virginia and in many other courts, the local rules will encourage parties to discuss settlement, but they will be moving their cases forward at the same time.
While some stakeholders would like to see the overall pace of Board trial cases move more rapidly from commencement to decision, many others have told us time and again that they value the willingness of the Board to provide ready access to stipulated extensions and suspensions when settlement talks are underway. In other words, the Board is widely perceived as somewhat more accommodating of settlement talks and more willing to provide the time for such talks without requiring the parties concurrently to pursue discovery and trial activities, as they will typically have to do when involved in district court proceedings.
Also, I’ve often been told that the accessibility of our attorneys and their willingness to participate in phone conferences with the parties is a very useful aspect of Board proceedings.
Another benefit to any party seeking resolution of a trademark dispute at the Board is that our attorneys and judges work on trademark cases day and night, day in and day out. Thus, mark owners and trademark practitioners will have their evidence considered and arguments heard by experts in trademark law. The courts just do not see as many trademark cases as the Board does. While the Board’s decisions are not binding when parties to a Board proceeding later find themselves involved in a district court case, often Board decisions will be considered persuasive by the court.
Do you think paper trials make a stronger case for the use of accelerated case resolution (ACR)?
I think they go well together. The fact that we essentially have paper trials makes ACR particularly suitable for Board proceedings as does our limited jurisdiction. Because of our limited jurisdiction, we should generally see less variety in the types of evidence presented and much less evidence overall than would necessarily come in many district court proceedings. Therefore, ACR works well with the nature of our proceedings.
Making the Case for ACR
You have been a proponent of ACR for a number of years. In fact, Landslide magazine’s January/February 2010 issue includes a USPTO Q&A with yourself entitled “TTAB ACR: An Overview.” Since that time, the TTAB has solicited input from stakeholder organizations for suggested approaches to ACR (now posted on the TTAB home page) and engaged stakeholders in a roundtable discussion on the utilization of ACR and the potential for adoption of ACR options as default or standard procedures in Board proceedings. From your perspective, are parties more willing to adopt ACR measures than they were three years ago? If so, to what do you attribute the change? If not, why?
I’d like to begin my answer to this question by thanking the ABA for seeking that Q&A material for the earlier issue of Landslide magazine. The answers provided for that series of questions actually became the basis for the Board’s current set of “Frequently Asked Questions” on ACR that is posted on the Board’s webpage. One could say that the ABA-IPL Section helped lay the foundation for the ACR section of the Board’s webpage.
As for the willingness of parties to adopt ACR, it should be noted that the Board decided to market ACR as an option prior to the 2007 amendment of its rules governing trial cases, but the rules changes institutionalized the marketing campaign by requiring parties to discuss ACR as an option in the settlement and discovery planning conference.
While parties to Board cases had occasionally stipulated to alternative approaches to discovery, trial, and briefing of trial cases before the Board institutionalized a set of alternatives and denominated it ACR, these alternative approaches were unfamiliar to most parties and practitioners. The rules changes and the requirement that ACR be discussed in discovery conferences have raised ACR’s profile.
As your question implicitly acknowledges, adoption of a full-fledged ACR process by many parties has been somewhat slow to take hold at the Board. Nonetheless, I do see a steady increase in the number of cases that utilize some form of ACR, some more effectively than others. And we also see parties routinely adopting efficiencies typical of ACR cases in many cases that otherwise progress according to the established rules. Examples of such efficiencies include routine agreements by parties to utilize testimony by declaration or affidavit, and agreements to make greater use of the notice of reliance procedure, so that some testimony can be avoided altogether.
I believe that economic pressures have indirectly aided the Board in its efforts to convince parties to exchange information in more efficient ways, both to facilitate settlement discussions and to facilitate trial of cases that cannot be settled. Many law firms and clients are looking for ways to save time and money. We also see some law firms embracing ACR as a way to show clients that the firms can provide quality representation in a trial on the merits of a registrability question, without running up costs more typically associated with district court litigation. As mark owners start pushing their attorneys to consider ACR, there should be even more movement toward using ACR.
While I believe the trend is toward more utilization of ACR, and that law firms will want to be well-versed in ACR options so as to be in a position to discuss with clients suitable options for addressing their legal issues, broader adoption of ACR will take some time. In part this is attributable to inertia and the tendency of many attorneys to pursue the prosecution or defense of Board cases in ways that are familiar, rather than ways that are unfamiliar. That is why the Board has put so much effort into making information about ACR available on its webpage. That information shows the movement toward ACR and should help alleviate concerns of those who are unsure about actively pushing for utilization of alternative approaches to Board trial cases.
For more detailed discussion of the pros and cons of ACR, from the perspective of various practitioners and stakeholder organizations, readers are invited to consult the transcript of the USPTO “Roundtable on ACR” that is posted on the Board’s webpage at www.uspto.gov/trademarks/process/appeal (follow “Roundtable on ACR—Transcript” hyperlink). The discussion at that roundtable was very useful, and the Board has set up an e-mail address ([email protected]) for collecting comments and suggestions from stakeholders on ACR.
Based on stakeholder feedback, is there a possibility that the Board will propose rules to include ACR processing options in certain cases?
One of the goals of the ACR roundtable was to discuss best practices and find out what has worked well for various practitioners and stakeholders. In addition to what we heard from stakeholder representatives during that discussion, we’ve learned a good deal from the conferences Board attorneys have with parties about ACR, as well as through what we see parties agreeing to do in the name of efficiency in many cases. There are many best practices that have been identified.
In various presentations at CLE programs, conferences, and the like, Board speakers have alluded to the possibility of these best practices influencing future changes in Board practice. After all, there is no reason not to share with all who find themselves involved in Board trial cases the best practices that have been adopted by many others.
It is not unusual for an administrative agency like the USPTO to engage in updating of rules to reflect changes in practice resulting from Board or court decisions, changes in federal rules of procedure or evidence, and the like. For some years now we have known of various tweaks to our rules for trial cases that we would need to consider proposing in any housekeeping or updating process. It would be entirely logical to include in any such effort best practices gleaned from ACR proceedings.
How much of a role does or can the Board play in encouraging and assisting parties to use ACR? How would a party go about enlisting Board involvement?
The Board’s involvement in the promotion of ACR manifests itself in various ways. It starts with the requirement that parties discuss the option in conference; and the detailed information about ACR options that is posted on our webpage helps aid those discussions. Of course, there have also been numerous public discussions of the subject, whether in conferences, at the Trademark Public Advisory Committee meetings, or via the roundtable.
On a more granular level, the Board’s interlocutory attorneys help market ACR by bringing it up in phone conferences, other than discovery conferences, and suggesting it as an option in orders that dispose of various motions, such as orders on motions for summary judgment and pleading amendments. In one instance, the Board attorney utilized an otherwise routine order suspending proceedings, after the filing of a motion for summary judgment, to suggest that the parties consider “transforming” that filing into the initial ACR filing and agreeing to have the case decided by ACR. And it was suggested at the ACR roundtable that Board attorneys engage in more hands-on review of motions for summary judgment when they are filed at the Board, rather than after they are completely briefed, so that the attorneys might then be able to identify cases that would be suitable for disposition by ACR and would be able to discuss the option with the parties before full briefing of the motion for summary judgment. That is an approach we believe has great potential for identifying cases in which ACR would be appropriate, and we have taken steps to ensure that Board attorneys have greater time and opportunities to engage in this type of screening.
Parties, however, need not wait for the Board to push for consideration of ACR, and are free to request a conference with a Board attorney whenever they would like to discuss ACR options. Many practitioners may believe that they should not contact the Board attorney assigned to a case unless there is a contested motion pending, or some other disagreement between the parties has manifested itself. But practitioners should feel free to seek the aid of a Board attorney even when parties are engaged in cooperative discussions regarding how a case should proceed. It may be particularly helpful to engage the Board attorney assigned to the case when one practitioner is familiar with ACR options but the other may not be. In that way, the practitioner less familiar with the options will have confidence that any discussion of ACR options will include the guidance of the Board attorney.
Besides ACR, are there procedures or changes that the Board would like to see adopted that would help increase the efficiency of proceedings?
I think that will be the subject of ongoing discussions with stakeholders for some time to come. In my time at the Board, if I may dare to sound a bit like an old-timer, I’ve seen a lot of change at the Board. We’ve developed and now routinely use our standard protective order, which prevents a lot of disputes regarding discovery that we used to see quite often. The use of phone conferences with our attorneys has gone from the very occasional, only-in-extraordinary-circumstances sort of thing to a routine matter—some of our attorneys may involve parties in phone conferences to help resolve half or more of their discovery disputes, which is tremendous for all involved. And the adoption of a disclosure and conferencing regime for trial cases has paid its own dividends.
Unlike the district courts, which have very diverse civil and criminal dockets, the types of cases we see, while varied in their complexity, size of their records, etc., are much more alike than are the cases in the district courts. And that provides the Board with the option to communicate with stakeholders who have, in large measure, very common interests, despite the fact that they may be adversaries in particular cases. With those common interests and the Board’s willingness to adapt its processes and procedures to benefit all stakeholders, I’m hopeful that we will continue to develop new ways of handling our proceedings.
Board Structure and Reorganization
Since you were appointed chief judge, the Board has hired a number of judges and interlocutory attorneys. You have also created new positions, such as the staff attorney to serve as editor of the Board manual. You have added new Board details opportunities for examining attorneys. Can you elaborate on the present structure of the Board and the reason for the expansion?
Staffing levels at the Board are largely a function of the workload at the Board. During the ’90s, while the economy was expanding, so too was the workload at the Board and the need for judges and attorneys to handle the workload. During the “aught” decade, as some refer to the last decade, and as we all are well aware, the economy has had its ups and downs. There were periods of time when hiring plans were put on hold because of economic issues or declines in workloads, but generally speaking, the Board’s staff of attorneys and judges is larger now; certainly much larger than when I started at the Board in 1992.
The Board now has 22 judges and myself as chief judge, and 13 attorneys plus the managing attorney. The current staffing level is about right for the workload that we have, but we are keenly aware of the recent increases in trademark application filings and that filings at the Board also are beginning to increase. We will continue to monitor both filing levels and staffing levels and try to keep them in sync.
We also have set up a quality review unit to review the work of our paralegals. Each year, the paralegals handle upward of 20,000 consented or uncontested filings in appeals and trial cases. Consistent handling of all of these matters is critical to keeping the many thousands of proceedings we have pending at any one time all moving in the right direction.
Apart from the attention we have paid to the judges, attorneys, and paralegals, the Board has, as you noted, added a senior level attorney position and developed its administrative staff. The need for the former became quite obvious as the Board transitioned from the second edition of its manual of procedure, the Trademark Trial and Appeal Board Manual of Procedure (TBMP), to the third edition in 2011. Seven years elapsed between the second and third editions of the manual, and the Board made a commitment to stakeholders to issue annual revisions, rather than occasional revisions. To be in a position to be able to honor that commitment, the Board needed an individual with great knowledge of Board practice, whose primary commitment would be to prepare annual updates of the manual, so we added the senior level attorney/TBMP editor position. Also, this addition to our staff will aid the Board in its preparation and issuance of a significant number of precedential decisions each year. That’s another commitment the Board has made to stakeholders—to issue a significant number, around 45–50, of precedents each fiscal year. It takes a good deal of work to identify and prepare so many precedents for issuance each year.
The need for the Board to develop a stronger administrative staff resulted from a number of factors: (1) the inexorable movement toward electronic filing and electronic case files, which requires more attention to IT issues; (2) more stakeholder outreach as evidenced by our roundtables and more robust webpage offerings; (3) the USPTO’s and the Board’s expansion, including a good deal more telework; and (4) very significantly, the relatively recent reorganization of parts of the USPTO that resulted in the Board becoming a separate business unit that reports directly to the Office of the Under Secretary and Director. Previously, the Board was part of the USPTO’s Office of General Counsel (OGC), and the Board received a good deal of administrative support from OGC. Now, the Board has to do a lot more on its own.
Can we expect to see any further changes or additions to Board personnel?
For the present, the Board is well situated for the tasks ahead, but IT issues and the USPTO’s transition to the Trademarks Next Generation end-to-end electronic processing will mean the Board may need to add more capacity for dealing with new systems; and new means for interaction with stakeholders and parties to our cases, as well as the development of new metrics and performance measures, will mean data collection and analysis will be ever more critical.
Some of your more recent hires have been attorneys outside of the USPTO. Was it a conscious decision to hire private practitioners? If so, why?
The Board has always desired diversity in its staff, and this includes the diverse perspectives on our legal work that can be brought to bear when the professional experience of our attorneys and judges is broad and deep. There are still, at the USPTO, many traditional career paths, such as the one I followed, which led me from trademark examining attorney to, ultimately, chief judge of the Board. But the changing landscape in the practice of law has also made government service more attractive to very well-qualified professionals than in the past. Whether you are talking about patent examiners, trademark examiners, or professionals at the Patent and Trademark Boards, when the USPTO advertises these days to fill vacancies, the talent pool is tremendous. And the Board is always on the lookout for talented and experienced additions to its staff, wherever they may come from.
Board Pendency
There has been a lot of scrutiny over the Board’s backlog of cases. Are the complaints justified?
Yes and no. Yes, to the extent that some stakeholders want cases to move through the Board more quickly and to be resolved more expeditiously, and any delays are rightly something to be concerned about. On the other hand, I’m not sure that all of our stakeholders understand the resources we have to operate with, what our goals are, and how we strive constantly for improvement. It will be critical for the Board, moving forward, to be more open and transparent about its workload, the efforts being undertaken to manage that workload, the performance measures and metrics that we employ to measure our successes, and to engage stakeholders more in discussion about how the Board can better serve the trademark community.
Over the last year or so, the Board’s inventory of cases waiting for decisions on the merits by Board judges has decreased significantly. Inventory had to come down before pendency to disposition would follow, but we are beginning to see very positive signs there. We’ve also worked with the Board’s attorneys to free up time for them to target older pending contested motions for disposition, and we are seeing a reduction in inventory there, too. So, in regard to the discrete tasks that the judges and attorneys perform on pending appeal and trial cases when needed, we are making significant progress.
As for the broader question of whether end to end, or commencement to completion, processing of Board cases is still too long, I do not disagree with those critics who say so. I am committed to ensuring the Board can process all appeal and trial cases as efficiently as possible. On the other hand, you will recall our earlier discussion of how many of our stakeholders prefer the Board’s more flexible approach to handling cases, and its willingness to allow the parties ready access to stipulated suspensions and extensions to accommodate settlement talks. The flip side of that coin is that proceedings will tend to take longer if the parties take advantage of extensions and suspensions in trial cases. And for appeal cases, it is quite routine for the Board to have to docket appeals and suspend them right away, as we send application files involved in those appeals back to examining attorneys, so that they can consider requests for reconsideration. In a sense, many appeals are not ready for the Board to begin work when the notice of appeal is filed.
We know from discussions held during the 2011 roundtable on performance measures that the Board will need to develop new and better measures that account for time the Board spends working on cases, and factor out the time that accrues from things like requests for reconsideration and remands in appeal cases, and stipulated extensions and suspensions in trial cases. Perhaps with a clearer understanding of where delays occur, the Board can more thoroughly discuss with stakeholders possible solutions that will balance stakeholder desire for flexibility and the Board’s need to keep cases moving toward settlement or resolution.
Will changes and enhancements to the Board’s electronic filing system and the eventual adaption of Trademarks Next Generation improve the type and detail of data the Board is able to capture?
Yes. We certainly hope to be able to do that, and I always think of it as a chess game where there are two players and they have timers. They each hit their timers when they play, and their timer is running when they’re trying to decide on a move. If we could somehow set up our system so that one timer would be running for the parties and one timer would be running for us and at the conclusion of the case we can see how much of the overall time was attributable to the parties’ timer and how much was attributable to the Board’s timer, we would be able to capture very useful information.
Board Outreach
The USPTO, in general, and the Board, in particular, have been intentional about their transparency with stakeholders. The dialogue with the trademark community has led to a number of changes in USPTO trademarks operations and practice. What would you say have been the most significant improvements to the Board as a result of stakeholder input?
Stakeholders have benefited the most from the Board’s commitment to issue a significant number of precedents every year. As recently as fiscal year 2005, the Board issued only 12 precedents. In fiscal year 2006, the Board issued 55 precedents. And in the seven years between then and fiscal year 2012, the Board has averaged over 50 precedents a year. That’s a lot of guidance for stakeholders. More recently, we have produced three consecutive annual revisions of the TBMP, which again provides great guidance and instruction. And most recently, we have posted on our webpage charts and dashboard graphs that reveal a lot of information about the work that comes into and flows through the Board. All of these, I hope, help provide greater understanding of the Board and make for more informed discussions of the work we do.
What has been the greatest challenge to increased user involvement?
Ensuring that the opinions provided to the Board at roundtables and through other means represent the wide array of stakeholder interests, including large and small businesses, in-house and outside practitioners, domestic and foreign filers, etc. That’s the area we need to focus on to ensure that we hear from all who have a stake in the Board’s operations.
Future of the Board
You have been chief judge for three years now. As you look to the future, what changes do you envision for the Board in the next five years? Ten years?
It’s difficult to predict specific changes that will come, but it is clear that the Board’s workforce is likely to become more geographically diverse, as has occurred with the rest of the USPTO. I’ve no doubt that electronic filing options and the ability of stakeholders to communicate seamlessly with the Trademark Operation and the Board will be much enhanced with Trademarks Next Generation. Internally, I see a Board with more clearly defined goals and responsibilities, so that we will be able to plug people into slots for administrative tasks, paralegal work, attorney and judge positions, and the Board will be able to just hum along. We want to avoid situations where retirements or departures interfere with plans for progress and improvements at the Board. At the same time, we want to develop an organizational culture that embraces change and is able to adapt to changing practices in the law and in the marketplace.