Gilson on Trademarks: A New Era in Trademark Trial and Appeal Board Inter Partes Litigation

Gilson on Trademarks: A New Era in Trademark Trial and Appeal Board Inter Partes Litigation


Welcome to a new era in Trademark Trial and Appeal Board inter partes litigation. The new Board rules impose on litigants a complex series of requirements that substantially increase their work, add to the cost of litigation, and probably discourage the filing of some oppositions and cancellation proceedings. Parties must file initial disclosures without being asked, participate in pretrial discovery, pursue discovery and settlement conferences, and pay strict attention to more deadlines than before. The many differences in scale between Board cases and federal court infringement cases now are fewer. This commentary written by Anne Gilson LaLonde discusses the import of the new TTAB rules. She writes:
 
      New Rule 2.121(e) describes what is required of a party in making its pretrial disclosures: the name, phone number and address of each witness from whom it plans to or may take testimony; general information about the witness such as relationship to a party, job title if employed by a party, and occupation; a “general summary or list” of the subjects the witness is expected to testify about; and a summary or list of the kinds of documents and things that may be introduced as exhibits during that witness’s testimony. If a party does not plan to take any witness testimony, it must make a pretrial disclosure of that information. New Rule 2.121(e). Pretrial disclosure of witness testimony is not a substitute for a notice of examination under Rule 2.123(c) or 2.124(b).
 
     Under the Board rules [effective] November 1, [2007], each party will make its pretrial disclosures under USCS Fed Rules Civ Proc R 26 (a)(3)(A) and (B) fifteen days before its testimony period. The Board does not strictly follow USCS Fed Rules Civ Proc R 26 (a)(3)(C), which requires identification of each document or other exhibit that a party expects to or may offer. 72 FR 42242, 42246. It is not necessary to have pre-trial disclosure of plans to file notices of reliance. New Rule 2.121(e).
 
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     Under the amended rules, the plaintiff will directly serve the defendants before filing its complaint with the Board, just as a plaintiff in federal court would do before filing a complaint with the court clerk’s office. When an opposer or cancellation petitioner files its complaint with the Board (that is, the notice of opposition or petition for cancellation), it must also concurrently serve a copy of the complaint along with any exhibits thereto on the owner of record or its designated attorney or domestic representative. One can also check assignments on TARR to determine who the most current application or registration owner is.