Next month, the procedural rules governing trademark registration disputes are changing. They present new strategic considerations for brand owners protecting their trademark rights.
The Trademark Trial and Appeal Board ("TTAB") is implementing its first major procedural rule change since 2007. Unlike Article III federal courts, which adjudicate disputes over the use of a trademark, the TTAB resolves the narrower question of whether a trademark is entitled to federal registration. Effective January 14, 2017, the revisions will overhaul many aspects of TTAB procedure. They apply to both new and pending cases.
How will the changes affect brand owners? The answer depends on their objectives. On the one hand, the changes should make TTAB proceedings more efficient overall. For example, they will facilitate paperless transactions, impose new limits on discovery, and offer new tools for parties to reach early resolution. In a straightforward registration battle, they should help.
On the other hand, the streamlining may have unintended costs. For example, it may frontload discovery battles that previously could be postponed to the later stages of a dispute. The revisions also do nothing to strengthen sanctions for parties that do not comply with discovery obligations, an enduring problem in TTAB proceedings that Article III courts handle better. The stakes in TTAB disputes remain significant, particularly given last year's Supreme Court decree (in B&B Hardware, Inc. v. Hargis Industries, Inc.) that a TTAB finding that one mark is confusingly similar to another can have preclusive effect in federal court proceedings. Given that fact, a streamlined TTAB case may not always prove to be the best venue for relief. In close calls, it may tip brand owners toward seeking the more comprehensive relief of federal courts.
The new rules include the following changes:
- Complaints, Filings, and Service. The Board is now responsible for effecting service of complaints, which it will do only by email. All case filings must now be made through the Board's electronic filing system, ETTSA, with very limited exceptions. Service is completed by email rather than physical mail, with no extensions for mail service.
- Discovery Limits: Parties may serve a maximum of 75 requests for production of documents and 75 requests for admission, matching the existing limit for interrogatories. All discovery must be served early enough to ensure that responses are served within the 6-month discovery period.
- Accelerated Case Resolution and Testimony. The rules expressly contemplate stipulations designed to expedite proceedings, such as limiting the amount or length of discovery, shortening the trial period, stipulating to facts, and allowing for motion evidence to be converted to trial evidence. Trial testimony may now be submitted by declaration or affidavit, subject to the right to oral cross-examination.
- Confidentiality. The Board is granted express authority to treat certain materials as not confidential, notwithstanding a particular confidentiality designation provided by a party.
A comprehensive record of the rules changes is available here.
The bottom line for brand owners: the TTAB's rules changes should improve the efficiency of garden variety trademark registration battles. For more critical disputes, they may nudge parties toward the more comprehensive relief of federal court.
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