The resolution of trademark opposition and trademark cancellation motions by telephone conference is discretionary with the Trademark Trial and Appeal Board. Generally, the Board may schedule a conference at the request of one or more parties, or on the Board’s own initiative.
Contacting the Trademark Board attorney. If a party believes that a matter may be resolved by telephone rather than written motion, the party must first contact the interlocutory attorney by telephone. The initial contact should be limited to a brief statement of the issues to be addressed, with no discussion of the merits. At that time, the Board attorney will determine whether the issue is best suited for a telephone conference. If so, the Board attorney may require each party to file a motion or brief or written agenda to frame the issues for the conference. Should the Board attorney feel that the issue is better suited for disposition by written motion, he/she will advise the parties.
Time for requesting conference. A party that intends to file a motion may request a telephone conference before it filed the motion. The non-movant that is served with a written motion may request that the motion be resolved telephone. Parties are encouraged to contact the board attorney at the earliest possible time so as to avoid delay. The Board will arrange for a time for the conference at its earliest convenience.
Initiation by the Board. The trademark board attorney, in his/her own discretion, may institute a telephone conference to dispose of a pending motion. In such a case, the Board attorney will either indicate that the responding party must first file a written response, or be prepared to make an oral response during the telephone conference.
Best practices. Parties with matters before the Trademark Trial and Appeal Board should take advantage of the use of telephone conferences with the Board to decide or narrow discovery disputes. The resolution of disputes by this mechanism, without the need for extensive motion practice, serves the interest of tboth parties. Telephone conferences, in many cases, are also a more cost-effective means for the parties and also serve to narrow the issues for adjudication, leading to possible early resolution of the trademark opposition or cancellation proceeding.
Parties are encouraged to discuss the use of telephone conferences with the Trademark Board with their trademark opposition attorney or trademark cancellation attorney. Further information on the use of teleconferencing to resolve issues before the TTAB may be found on the Trademark Trial and Appeal Board website.