Four Tips for Practicing Before the Trademark Trial and Appeal Board

Trademark disputes may be heard in different forums: state courts, federal courts, and the Trademark Trial and Appeal Board (TTAB). Most disputes are heard in federal court, but many are brought before the TTAB, an administrative agency within the U.S. Patent and Trademark Office (USPTO). While the TTAB follows procedures analogous to the Federal Rules of Civil Procedure (FRCP), and TTAB proceedings are generally less expensive than federal court proceedings, TTAB practice does have some significant variations. Before representing a client before the TTAB, attorneys should understand some of the key differences in order to prepare their trial strategy.

Tip 1: TTAB Remedies Are Limited

The TTAB functions like a court in trademark matters, but the available remedies are more limited than a federal or state court. The TTAB only has authority to decide whether a trademark application should be granted and the trademark registered, and whether a registration should be maintained or cancelled. The TTAB does not decide who has the underlying right to use a trademark. This means that a party cannot recover damages, attorney fees, or costs, or obtain injunctive relief in a TTAB proceeding. So, at the outset, some strategic decisions must be made as to the desired outcome for the client and whether it can be achieved in the TTAB as opposed to federal or state court.

Tip 2: TTAB Case Management Is Set by Rule, Not a Judge

A TTAB proceeding is governed by the Lanham Trademark Act of 1946, as amended, (Trademark Act), 15 U.S.C. § 1051 et seq.; the rules of practice in trademark cases (commonly known as the Trademark Rules of Practice) may be found in Parts 2 and 7 of Title 37 of the Code of Federal Regulations (C.F.R.); and the rules relating to the conduct of practitioners and the representation of others before the USPTO may be found in Part 11 of 37 C.F.R. and the Trademark Trial and Appeal Board Manual of Procedure. The USPTO rules governing procedure in inter partes proceedings before the TTAB are adapted, in large part, from the FRCP, with modifications due primarily to the administrative nature of the TTAB proceedings.

Upon the filing of a case, the TTAB serves the initial pleading on the defendant. At the same time, the TTAB issues a standard case management order setting the schedule and deadlines for pleadings, conferences, discovery, disclosures, and trial. Without modification, the schedule provides for about 18 and a half months from the time the initial pleading is filed through the date to request post-trial oral argument (if any). The schedule can be modified with the consent of the parties and the approval of the TTAB. In addition, the TTAB imposes a standard form protective order in every proceeding, which again can be modified by the parties with the consent of the TTAB.

Tip 3: The TTAB Discovery Rules Are Similar to the FRCP but Have Some Differences

In the TTAB standard order, the discovery phase is limited to 180 days, unless extended by the parties. In general, the TTAB will grant requests for extension, even repeated requests.

Discovery in the TTAB is governed by the FRCP, unless a specific TTAB rule applies. The traditional types of discovery (document requests, interrogatories, requests for admission, and depositions) are all available in a TTAB proceeding, with some variations. For example, the TTAB allows 75 interrogatories (including subparts) and 75 requests for admission, while the FRCP only allows 25 interrogatories and an unlimited number of admission requests.

The information provided in the initial disclosures is also different in a TTAB proceeding. Because damages are not an issue in TTAB proceedings, initial disclosures are limited to the names, addresses, and locations of potential witnesses and descriptions and locations of documents to be produced under FRCP 26(a)(1)(A)(i) and (ii). No disclosures regarding potential damages or insurance coverage are required due to the TTAB’s inability to award damages.

Another difference between discovery in TTAB cases and federal or state court proceedings is that depositions of foreign parties or their representatives may be taken only upon written questions unless the parties agree to an oral deposition, or the TTAB grants a party’s motion upon a showing of good cause. But if the foreign party or its representative will be physically present in the United States, an oral deposition may be taken upon notice.

Tip 4: There Is No Live Testimony in the TTAB

One other significant difference between federal and state court trials and a trial in the TTAB is that there is no live testimony at a trial in the TTAB. Instead, each party has “testimony periods” in which to submit its written evidence and rebuttal evidence.

Care must be taken early in the discovery period to determine what documents will be needed in the trial, and how to properly introduce the evidence. There are three principal ways of introducing documentary evidence in a TTAB proceeding:

1. A party may depose its own witnesses during the trial period and introduce documents through the witnesses, which is similar to direct testimony in a state or federal court proceeding, and is subject to cross-examination.
2. A party may submit documents by way of a written declaration (conforming to the Federal Rules of Evidence) and attach documents. When doing so, however, the party must also make the witness available for cross-examination.
3. A party may also submit certain documents through a “notice of reliance” in which the party identifies the evidence and its relevance to the case. But the documents that can be admitted through a notice of reliance are limited to:
   
   1. discovery depositions of an adverse party;
      
   2. answers to interrogatories and admissions of an adverse party;
      
   3. trademark registrations;
      
   4. printed publications;
      
   5. Internet materials; and
      
   6. official records. Documents produced in response to requests for production cannot be admitted in a notice of reliance unless they fall into one of these categories, so particular consideration must be taken as to how to introduce business documents (e.g. business plans, sales reports, etc.).

Practitioners who do not appear before the TTAB regularly may be lulled into complacency by the apparent similarity between the FRCP and TTAB procedures. However, these and other differences highlight that attorneys must take care to understand the TTAB procedures in order to properly implement a trial strategy.