Every U.S. trademark application must be "published for opposition" after it has cleared examination by the U.S. Trademark Office. Publication of the trademark application gives third parties an opportunity to object to the application on various grounds, including, most commonly, conflict with a senior trademark. A third party who wants to object to the published application must file within 30 days of its publication a "notice of opposition" with the Trademark Trial and Appeal Board ("TTAB"), which is the administrative body charged with resolving disputes over the registrability of trademarks. Governed by the Federal Rules of Civil Procedure and Evidence, with some regulatory modifications, an opposition proceeding involves various trappings of civil litigation, including written discovery, depositions, motion practice and a unique form of "trial" on the merits. The sole issue in an opposition proceeding is the right to register a trademark. These administrative proceedings have no binding effect on the right to use a trademark. The vast majority of opposition proceedings settle before a final decision on the merits, but those that don't are often lengthy and time-consuming, and can be costly.

Recognizing that some parties want a quicker and less costly alternative to a typical opposition proceeding, the TTAB is encouraging use of its Accelerated Case Resolution ("ACR") procedure, which is pitched as the "economical and efficient" alternative to a typical TTAB case.1 Broadly speaking, ACR offers various alternatives to a traditional TTAB contested proceeding and its attendant full discovery, testimony periods and trial briefs. While the procedure itself has been available since the 1980's, the designation "ACR" is relatively new, and parties are now required to discuss during their scheduling conference whether ACR should be used in their case.

ACR can take a variety of forms, and the TTAB is flexible with its use. A common form includes: (1) an agreement at the parties' scheduling conference to use ACR, with the approval of the Trademark Office Interlocutory Attorney overseeing the case; (2) limited discovery; (3) no testimony periods; and (4) trial briefs, with stipulations regarding the introduction of evidence. After briefing is completed, the TTAB will issue a decision on the merits within 50 days. The only requirements for use of ACR are an agreement by the parties and approval by the TTAB. The TTAB will not grant unilateral requests for ACR. The TTAB, in some cases, may contact the parties to encourage use of ACR.

The TTAB will allow use of ACR in various types of cases, but the most appropriate cases generally involve one or more of the following:

  • Minimal discovery;
  • Likely stipulation to material facts;
  • A limited evidentiary record;
  • Likely grounds for summary judgment submissions with a stipulation that the TTAB can resolve any factual disputes; and/or
  • Likely stipulation to the admissibility of the trial record with limited substantive objections.

Contentious cases, or complicated cases not fitting into the above characteristics, are not appropriate candidates for ACR.

The use of ACR, under the right set of circumstances, would eliminate the expense and effort necessarily involved in a more comprehensive TTAB case. Consider using ACR the next time you are faced with a contested proceeding before the TTAB.

Footnotes

1 Judge Gerard F. Rogers, TTAB ACR: An Overview, LANDSLIDE, January/February 2010, at 51-55; see also Trademark Trial and Appeal Board Home Page, at www.uspto.gov/trademarks/process/appeal/index.jsp . This article's content is derived in part from both of these sources, and additional information regarding ACR can be found at both sources.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.