• Skip to primary navigation
  • Skip to content
  • Skip to primary sidebar

McCarter & English Logo

  • People
  • Services
  • Insights
  • Our Firm
    • Leadership Team
    • Social Justice
    • Diversity, Equity & Inclusion
    • Pro Bono
    • Client Service Values
    • Alumni
  • Join Us
    • Lawyers
    • Summer Associates
    • Patent Professionals
    • Professional Staff
    • Job Openings
  • Locations
    • Boston
    • Philadelphia
    • East Brunswick
    • Indianapolis
    • Stamford
    • Hartford
    • Trenton
    • Miami
    • Washington, DC
    • New York
    • Wilmington
    • Newark
  • Share

Share

Browse Alphabetically:

  • A
  • B
  • C
  • D
  • E
  • F
  • G
  • H
  • I
  • J
  • K
  • L
  • M
  • N
  • O
  • P
  • Q
  • R
  • S
  • T
  • U
  • V
  • W
  • X
  • Y
  • Z
  • All
Bankruptcy, Restructuring & Litigation
Blockchain, Smart Contracts & Digital Currencies
Business Litigation
Cannabis
Coronavirus Resource Center
Corporate
Crisis Management
Cybersecurity & Data Privacy
Delaware Corporate, LLC & Partnership Law
Design, Fashion & Luxury
E-Discovery & Records Management
Energy & Utilities
Environment & Energy
Financial Institutions
Food & Beverage
Government Affairs
Government Contracts & Global Trade
Government Investigations & White Collar Defense
Healthcare
Hospitality
Immigration
Impact Investing
Insurance Recovery, Litigation & Counseling
Intellectual Property
Labor & Employment
Life Sciences
Manufacturing
Products Liability, Mass Torts & Consumer Class Actions
Public Finance
Real Estate
Renewable Energy
Sports & Entertainment
Tax & Employee Benefits
Technology Transactions
Transportation, Logistics & Supply Chain Management
Trusts, Estates & Private Clients
Venture Capital & Emerging Growth Companies
  • Broadcasts
  • Events
  • News
  • Publications
  • View All Insights
Search By:
Insights Publication Magazine & Glasses
Main image for 5 Tips To Avoid Stepping On TTAB Landmines
News|Quote

5 Tips To Avoid Stepping On TTAB Landmines

Law360

5.20.2016

Whether you’re an experienced general litigator or a freshly minted trademark associate, taking a case before the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board for the first time can be a daunting task. Here are five tips to avoid making easy mistakes — from experts who’ve seen them made.

Remember: It’s About Registrations, Not the Real World

It might sound obvious, but experts Law360 spoke with said one thing above all else: Newbies need to continually remind themselves of the fundamental distinction between the board and federal court.

While federal courts are tasked with looking at the way trademarks function in the real world, the board is exclusively interested in the significantly more abstract and narrow issue of whether marks deserve to be registered. Those two endeavors obviously overlap quite a bit, but forgetting the nuanced ways in which they don’t can trip up newcomers in a variety of subtle ways.

“You might find yourself with great arguments, but just not great arguments that the board is going to care about,” said Keith Toms, a partner at McCarter & English LLP.

Think Twice Before a Motion To Compel

As in federal court, when an adversary before the board is refusing to turn over important materials during discovery, a party can file a motion to compel to force its opponent to do so.

But, far more so than in federal court, moving to compel production from an opponent at the TTAB has a tendency to throw the case into slow motion.

“It often takes many months to get a decision on a motion to compel, and the case is generally stayed while the board is considering it,” McCarter’s Toms said. “It’s a tool for when somebody really isn’t playing ball, but it can drag the case into a long period where nothing happens.”

Triple-Check the Rules on Evidence

Several different experts surveyed by Law360 described the TTAB’s procedural rules with the same term: “idiosyncratic.” Perhaps nothing exemplifies that better than the board’s procedural requirements for submitting evidence.

“A surprising number of oppositions get torpedoed because the registrations were not properly made part of the record,” McCarter’s Toms said.

sidebar

pdfemail

Related People

Media item: Keith Toms
Keith Toms

Partner

Related Services

Intellectual Property
Subscribe to our Insights
McCarter & English, LLP
Copyright © 2023 McCarter & English, LLP. All Rights Reserved.
  • Login
  • Attorney Advertising
  • Privacy
  • Awards Methodology
  • Contact
  • Subscribe
  • Sitemap

The McCarter & English, LLP website is for informational purposes only. We do not provide legal advice on this website. We can provide legal advice only to our clients in specific inquiries that they address to us. If you are interested in becoming a client, please contact us, but do not send any information about your specific legal question. We cannot serve as your lawyers until we establish an attorney-client relationship, which can occur only after we follow procedures within our firm and after we agree to the terms of the representation.

Accept Cancel