In an effort to facilitate case management and to reduce litigation expenses, the Trademark Trial and Appeal Board permits certain motions to be hear via telephone conference.  These include motions in the pleading phase, discovery phase, and/or the trial phase of a trademark opposition or trademark cancellation proceeding.

Examples of motions that the board may dispose of by way of telephone conference include:

  • motions to extend deadlines
  • motions to suspend proceedings
  • disputes regarding interrogatory numbers and limitations
  • motions to compel the attendance of a witness at deposition
  • motions to quash a notice of deposition

The availability of telephone conferences is not limited to motion practice. Additional matters that the parties might want to consider bringing before the board by phone include disputes involving:

  • the right of priority to obtain discovery multiple discovery responses where a narrowing of the issues is warranted; and
  • matters where board guidance would be helpful in interpreting the rules of practice before the trademark trial and appeal Board.

Parties are encouraged to take advantage of the Board’s willingness to expedite matters by phone.  While it may not be effective for all matters, the resolution of disputes by phone are in the best interest of all parties, particularly when decisions on formal written motions take approximately 3-4 months to be resolved.

Futher information on the Board’s telephone conferencing dispute mechanism may be found on the Trademark Trial and Appeal Board website of the United States Patent and Trademark Office.