Parties to trademark oppositions have tools at their disposal that have the potential to save money on trademark opposition attorneys by bringing about a swift resolution of the dispute. This is the idea behind the Accelerated Case Resolution (ACR) program of the Trademark Trial and Appeal Board.

ACR allows for the parties to receive a prompt determination of their respective claims and defenses, without the delay and uncertainty of a standard trademark opposition case.  ACR is the result of a realization that parties often spent considerable sums of money on the preparation and filing of summary judgment motions. Historically, most summary judgment motions are denied, resulting in costly legal fees that do very little to bring about a final determination of the case.

In an effort to encourage parties to explore settlement options, the Trademark Board instituted rules requiring the parties to discuss claims, defenses, and settlement possibilities at the beginning of the case.  Under ACR, the parties may request that the Interlocutory Attorney act as a settlement mediator.  In order to take advantage of ACR, the parties should make a genuine effort to determine whether a settlement is achievable without the need for costly litigation.  This requires good-faith dealing by both parties and their attorneys.

If you are a party to a trademark opposition, be sure to ask your attorney about whether your case is a good candidate for ACR resolution.

Recent TTAB filing statistics reveal that COVID-19 has not substantially impacted U.S. trademark opposition filings.  While trademark opposition filings are slightly below pace compared to last year, trademark cancellation activities are on the rise.  This is good news for brand owners and practitioners everywhere.  Our previously reported summary of 2019 TTAB statistics may be found here.

2020 year to date (YTD) filing information (which includes three quarters) with percent changes over the same time period last year are reflected below:

  1.  Extensions of time to oppose:  14,399  (YTD -6.4%)
  2.  Trademark oppositions:  5,045 (YTD -3.3%)
  3.  Trademark cancellations: 1,865 (YTD + 2.5%)
  4.  Appeals:  2,495 (YTD – no statistical change)

In addition, 2020 YTD TTAB internal case pendency and other relevant statistics are as follows:

  1.   Cases decided:  487 (YTD- no statistical change)
  2.   Average appeal pendency: 13 weeks (YTD + 2.4%)
  3.   Average pendency of trials: 18 weeks (YTD +17.6%)
  4.   Cases awaiting decision: 194 (YTD -5.8%)
  5.  Trial cases- average pendency: 149.7 weeks (YTD -6.8%)
  6.  ACR trial cases- average pendency: 93.5 weeks (-25.9%)
  7. # of ACR cases decided:  13 cases (compared to 27 total ACR cases for fiscal year 2019
  8. Contested motions- average pendency: 11.8 weeks (YTD + 2.6%)
  9. Number of cases with motions awaiting decision: 199 (-17.8%)
  10. Number of contested motion decisions issued:  781 (+3.9%)
  11. Number of contested motions resolved by decision: 977 (YTD + 5.8%)

Conclusion:   Based on year to date statistics,  COVID-19 has not had a significant impact on filing activities.  In fact, trademark cancellation filings have increased 2.5% over the same time period last year.  Trademark opposition filings are only slightly down.  What has increased significantly, however, is the average pendency of trials (+17.6% over last year).  This could be due, in part, to consented motions of time to extend trial dates due to COVID-19 related disruptions earlier this year.  The second key indicator is the number of contested motion cases awaiting decision, which have decreased 17.8% over last year’s reporting period.  Again, this could be due to COVID-19 disruptions as opposed to increased TTAB efficiencies in ruling on contested motions.

 

Trademark oppositions in the United States are, on average, the most expensive in the world.  So what does it take to protect and enforce brands in other countries?

Over the coming months, some of the world’s leading trademark professionals will be sharing with us insight on the trademark opposition process in their own jurisdictions.   By doing so, American companies will be able to better gauge what is needed to protect their valuable brands on a global basis.  This series of useful posts will include brand enforcement guidance and tips such as:

  1.  Case assessment.   Prior to bringing a trademark opposition, it is important to first determine the strength of one’s own trademark rights.  This analysis depends, in part, on the legal requirements for priority, standing, and likelihood of confusion that exist in each country.
  2.  Duration and costs.   Some countries have streamlined opposition processes that save clients both time and money.  Others are similar to the U.S. system and could result in protracted litigation and increased fees.  We’ll find out which world trademark jurisdictions offer the most value for brand protection.
  3.  Dispute resolution alternatives.   INTA’s Trademark Mediators Network is a non-litigation alternative to contested trademark proceedings. Currently, there are over 150 approved INTA mediators across the globe, each with unique training and insight to help litigants achieve their brand protection goals in a collaborative manner.  We’ll hear from our experts whether mediation is used in trademark disputes in their countries, and if so, in what types of cases.

In addition to providing practical advice, each guest commentator will share his or her professional background and experience.  We hope that our world trademark opposition overview will assist U.S. companies and inhouse counsel to make informed decisions about their international trademark portfolios.

To international trademark associates:   If you would like to be considered as a guest column commentator, please contact the blog publisher.

The U.S. Trademark Trial and Appeal Board has disclosed first and second quarter filing and pendency statistics for 2018.   Year to date (YTD) statistics as compared to the same period in 2017 include the following:

U.S. Trademark Trial and Appeal Board filings

  • extensions of time to oppose:  9,498  (+2.7% YTD)
  • trademark oppositions: 3,211 (+4.3% YTD)
  • trademark cancellations: 1,143 (+8.8% YTD)
  • trademark appeals: 1,643 (+4% YTD)

Pendency of Proceedings  (commencement to completion processing times)

  • trial cases (average):  140.6 weeks (-10.6% YTD)
  • trial cases (median):  126 weeks (-14.9% YTD )
  • ACR trial cases (average): 112 weeks (-6.2% YTD)

Contested Motions

  • decisions issued:  535 (+8% YTD)
  • average pendency: 9 weeks (+15.4% YTD)
  • cases awaiting decision: 172 (+17% YTD)

Of note is the increase in trademark cancellation proceedings as well as trademark oppositions.  This may be a sign of greater brand enforcement efforts by companies.  At the same time, there are mixed performance trends within the TTAB itself.  While the pendency of proceedings has decreased, the average pendency of contested motions has increased.   One reason may be due to the inability of counsel to fully cooperate in discovery disputes, with an increase in contested motions being an unfortunate result.

TTAB filing and performance data for 2015 and 2016 may be found here.

Practitioner’s Note:   The importance of cooperation with opposing counsel in the prosecution or defense of TTAB proceedings should not be overlooked.   Where antagonism and lack of communication are the norm, increased client expenses and unnecessary motion practice often follow.  This can have a direct impact on the  risk and costs associated with trademark opposition proceedings. 

Trademark opposition filings increased in 2016, according to a recent report released by the United States Patent and Trademark Office.  A summary of comparative 2015 findings can be found in our publication here.

Highlights of the report include the following performance statistics for 2016 U.S. Trademark Trial and Appeal Board activities:

  • Trademark 0pposition filings totaled 5,881 compared to 5,290 in 2015
  • Trademark cancellation filings totaled 1,848 compared to 1,763 in 2015
  • Trademark appeals filings totaled 3,121 compared to 2,992 in 2015

For the same period, the TTAB issued 35 precedential decisions, which was within its target range of 35-40 per year.   The average pendency of precedential decisions was 32.5 weeks for final decisions, compared to 48.1 weeks for the previous annual time frame.  The average time of interlocutory orders was also reduced, going from 45 weeks in 2015 to only 25 weeks in 2016.    The length of inter partes cases, however, has not changed substantially, with the average of decided trademark opposition and trademark cancellation cases being 154.3 weeks from commencement to conclusion in 2016, compared to 161.2 weeks in 2015.

Trademark opposition considerations.    When contemplating commencing a trademark opposition, it is best to keep in mind the following:

  1.  Estimated duration.    Most trademark opposition cases settle before the trial phase, which means that statistically, the probability that it will go all the way to judgment is unlikely.   That being said, a company should be prepared for all contingencies.  This means taking into account factors that could either exacerbate or shorten the litigation process.
  2.   Early case assessment.   An early case assessment and plan of action is an integral part of a proactive trademark opposition litigation strategy.
  3.   Accelerated case resolution.    The U.S. Trademark Trial and Appeal Board has an accelerated case resolution (ACR) program that when used properly, can shorten the duration of a proceeding.   Details will be discussed in later posts.

To learn more about U.S. trademark oppositions or to discuss your company’s case, contact James Hastings at Collen.

The United States Patent and Trademark Office recently released its TTAB filing and performance statistics for the fiscal year 2015.

While there have not been any substantial deviations from 2014 filing statistics, the recent Supreme Court decision in B & B Hardware, Inc. v. Hargis Industries, Inc. will most likely result in an increase in the number of trademark opposition proceedings instituted in the U.S. Trademark Trial and Appeal Board.  This is due to the fact that trademark opposers may now perceive the TTAB to be a superior forum in which to contest a trademark applicant’s right to register, and ultimately use, a trademark in commerce.

Trademark Trial and Appeal Board Filings – FY 2015

The following is a breakdown of relevant TTAB filings for the fiscal year 2015, with percent changes over FY 2014 filing figures indicated in parentheses:

  • Trademark oppositions: 5,290 (-4%)
  • Trademark Cancellations:  1,763 (+2.3%)
  • Extensions of time to oppose:    17,132   (-1%)
  • Appeals:  2,992 (+7%)

As one can see, with the exception of the number of appeals filed, there has been little change in year over-year filing volume between FY 2015 and FY 2014.  The number of trials for the year was 123 compared to 132 in FY 2014.

Of particular note is the low number of cases decided under the TTAB’s accelerated case resolution program (ACR).  Once touted as a less costly and more streamlined alternative to traditional proceedings, there were only 10 cases decided under ACR procedures in FY 2015. Even more surprising in the negligible difference between the pendency of normal cases vs. ACR proceedings, with the average total pendency of trial cases being 161.2 weeks versus 138.6 weeks for ACR cases.

The volume of trademark opposition case filings will be watched closely in FY 2016 to see if predictions come true as to whether there will be an increase in notice of trademark oppositions filed by brand owners seeking to take advantage of the strategic ramifications of the B & B Hardware decision.

As has been discussed in prior postings, the Trademark Trial and Appeal Board’s rules for U.S. Trademark Opposition and U.S. Trademark Cancellation proceedings are contained in the Trademark Board Manual of Procedure (“TBMP”) an over 1,000 page “how-to” guide of handling inter-partes matters before the Board.

The purpose of the TBMP is to provide trademark attorneys with basic information generally useful for litigating cases before the Trademark Office. The second edition of the TBMP last was revised in 2004.  The current third edition was revised and published by the Trademark Office in May 2011.  The Third Edition highlights several new development practices, including the following changes designed to make the trademark opposition and trademark cancellation process be easier on litigants and to encourage early settlement:

  • Mandatory discovery conferences to discuss settlement and claims and defenses
  • Disclosures of initial witnesses, experts, and other pretrial matters
  • Emphasis on Accelerated Case Resolution (ACR”); and
  • Efficiencies such as a shift from paper to electronic filings

The manual is devoted primarily to opposition and cancellation proceedings, since they are the two most common types of cases before the Trademark Trial and Appeal Board. It also includes additional information on interference proceedings, concurrent use proceedings, and ex parte appeals to the Board.  The third edition also incorporates all statutory changes, including changes to the Trademark Rules of Practice and Federal Rules of Civil Procedure.  In keeping with the Trademark Board’s emphasis on and innovations in electronic initiatives, the new third edition is available online on the USPTO website in a searchable format.

The Board welcomes suggestions for improving the content of the Manual and making its understanding and application helpful to all U.S. trademark lawyers.

 

The U.S. Patent and Trademark Office  (USPTO) has adapted to the COVID-19 era.  Yet, performance challenges in certain operational areas remain.  This is the conclusion of the USPTO FY 2020 Annual Report.  Our previous article on TTAB statistics in the age of COVID-19 may be found here.

TTAB FY 2020 performance.   The TTAB is responsible for the adjudication of trademark opposition, trademark cancellation, and ex parte appeals. The USPTO fiscal year commences on October 1 and ends on September 30 of the following calendar year.

Fiscal year (FY) 2020 had its pre-COVID operational challenges from day one.  These included:

  • a backlog of cases from FY 2019;
  • an increase in TTAB filings by trademark owners;
  • a steep escalation in motion practice;
  • a significant increase in cases ready for decision (RFD); and
  • the ratio of RFD trial cases to Trademark Appeals was heavily titled towards trial cases

In 2020, the Board continued to address its backlog of cases, hiring more attorneys and judges to its staff.  In total, brought on more than 40 combined attorneys and judges.  This is the highest level ever.   As a result, by third-quarter, decisions on the merits and motions were all processed within goals.  Total annual goals, however, were not met.

Strategic Initiatives.  FY 2020 also had certain strategic goals realized.  For example, the Trademark Board completed a two-year pilot program to encourage early resolution of trademark cancellation cases.  This early resolution model is for trademark cancellation cases involving abandonment or non-use claims.   The TTAB also commenced an analysis of Accelerated Case Resolution (“ACR”) cases to determine its effectiveness to date over a several year period.  This is for the purpose of encouraging litigants to utilize ACR, which in theory could be less expensive and lengthy than traditional proceedings.   Whether ACR is preferred for cancellation and opposition proceedings is the subject of future articles.

The Board also began outlining a new pilot project, expected to begin in FY 2021.  This project will focus on having pre-trial conferences with parties in selected cases.  Other TTAB enhancements include a new digital Reading Room where users can search TTAB opinions.

Conclusion.  The U.S. Trademark Trial and Appeal Board has made significant progress over the past year.  It has adapted well to having its employees work virtually due to COVID-19.  The transition of more TTAB employees to a virtual work environment will likely continue even after the pandemic.  What will remain, however, are certain case management inefficiencies that result from Board practices that have remained unchanged over the years.

TTAB filing statistics for 2019 reveal an increase in contested proceedings combined with greater delays in rendering final decisions.

The data, made available by the U.S. Trademark Trial and Appeal Board, reflects an increase in activity by litigants in both trademark opposition and trademark cancellation proceedings.   Our 2018 summary is found here.  Relevant 2019 data compiled by the U.S. Trademark Trial and Appeal Board is below.  The numbers in parentheses reflect the rate of change over fiscal year 2018.

Oppositions  (+7.1%)

  • 2019:  6,955
  • 2018:  6,496

Cancellations  (+7. 7%)

  • 2019:  2,426
  • 2018:  2,253

Extensions of time to oppose  (+6.7%)

  • 2019:  20,502
  • 2018:  19,208

Appeals (+3.4%)

  • 2019:  3,333
  • 2018:  3,223

The increase in filing activity across all proceeding types has apparently placed a greater burden on TTAB staff resources.  This fact combined with a greater number of motions being contested has lead to greater delays in rendering decisions:

Number of decisions on motions issued (-7.4%)

  • 2019:  1002
  • 2018:  1082

Average pendency of decision (+17%)

  • 2019:  11.5 weeks
  • 2018:  9.4 weeks

No. cases with motions awaiting decision  (+46.7%)

  • 2019:  242
  • 2018:  165

With an increase in filings and contested motion practice, an increase in the number of matters awaiting final decision is not surprising.   Yet, the Board has been able to decide more cases in 2019 as compared to 2018 results:

Cases decided (11.3%)

  • 2019:  651
  • 2018:  585

Most notably, the average pendency of trial decisions (from the time a case is ready for decision until a written decision is rendered) has experienced significant delays:

Pendency of Trial Decisions (+61%)

  • 2019:  15.3 weeks
  • 2018:  9.5 weeks

The number of appeals and trial proceedings awaiting decision have also increased:

Awaiting decision at end of period  (+58.5%)

  • 2019:  206
  • 2018:  130

Conclusion.  While the TTAB’s reported data is quite useful, it does not reflect the underlying causes for the delays in both motion and trial decisions.  It could be that an increased volume in initial filings combined with a greater tendency of parties to file contested motions is one of the causes.  This is particularly true in situations where parties cannot resolve discovery differences that result in increased (and sometimes unnecessary) motion practice.   Given current trends, it may be beneficial for both the Board and parties to reexamine how to improve participation in Accelerated Case Resolution (ACR) as well as other rules designed to streamline proceedings for greater efficiencies.

trademark symbol

The Trademark Trial and Appeal Board recently released filing statistics for fiscal year to date 2019.    These updated figures includes year-to-year changes in the filing of appeals, notices of oppositions, and petitions for cancellations.  It also provides useful information on the disposition of cases.

The below highlights are for the first two-quarters of 2019.  The