Practical Advice for TTAB proceedings was the subject of a session at INTA Boston 2019.
The topics of discussion were as follows:
Difference between TTAB and District Court. Proceedings before the TTAB are usually more narrow and streamlined. This is due, in large part, on the limited jurisdiction of the Board to issues of registrability only.
Scheduling. The TTAB gives the parties a little more flexibility on the scheduling, particular where both parties consent to extensions of time. In District Court, the court is usually more rigid and often seeks to force the parties to either commit to trial or to engage in settlement discussions. That being said, there are certain mandatory deadlines in the TTAB that are not flexible, including serving discovery at least 30-days prior to the expiration of the period
Admission of Evidence. In the TTAB, Notices of Reliance and Testimony declarations are the most-used vehicles for admission of evidence. Direct evidence can be either through trial testimony deposition (in part of your case-in-chief) or by declaration. Self-authenticating evidence, generally in the form of internet print-outs, trademark registrations, and other publicly available materials, can be admitted through Notice of Reliance. Declarations also give the opposing party the option to either cross-examine the declarant, or attack the testimony in the form of your client’s own rebuttal affidavit.
Strategic Choices. The issue of whether to proceed before the TTAB or district court is often dependent on the various factors. Some of these include whether the mark is an intent to use, or perhaps in the venue where you believe your client may obtain a more favorable outcome. Since the TTAB’s jurisdiction is on issues on registration only, it often looks at three main factors in making a decision: (a) similarity of marks; (b) similarity of goods; and (c) similarity of trade channels. These factors are often predictable and do not consider in great detail marketplace use as it relates to likelihood of confusion. If a party files an opposition, there is always the risk that a declaratory judgment action in district court may be the responsive pleading. In certain cases, a trademark applicant who is a defendant in an opposition can trigger its insurance coverage if it brings a declaratory judgment action for non-infringement.
Role of Interlocutory Attorney. All contested motions are referred to the interlocutory attorney (IA). The IA is also responsible for conducting the discovery conference (if requested). Parties can also establish that they prefer to appear at deposition telephonically and to have motion be determined by phone rather than written opinion.
The speakers were Roxanne Elings, Kathleen McCarthy, and Judge Elizabeth Dunn of the U.S. Trademark Trial and Appeal Board. The moderator was Pamela Chestek.