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.