June 26, 2015

Arguing Before The Trademark Trial and Appeal Board

by Guest Blogger


Today I argued before a three-judge panel of the U.S. Patent and Trademark Office Trademark Trial and Appeal Board ("TTAB").

The TTAB is comprised of twenty-three administrative judges who settle disputes regarding trademark registration. The disputes can be between two parties who have a conflict regarding rights to register a mark under U.S. trademark laws, or may be between an individual seeking to register a mark and the U.S. Patent and Trademark Office ("USPTO") itself regarding the USPTO's refusal to register an applied-for mark. The first category of cases are referred to as inter partes matters. The second category are referred to as ex parte matters.

Hearings before the TTAB are optional, and are scheduled at the request of the parties. However, in an inter partes proceeding if either party requests a hearing the Board will schedule a hearing. The Board is very accommodating of the parties' schedules and provides a number of dates and times from which to choose.

All arguments are conducted in Alexandria at the U.S. Patent and Trademark Office in the Board hearing room, which was much a like a very small courtroom. The arguments are not recorded and there is no special AV equipment available for hi-tech displays or exhibits. If you want to use an easel, bring your own.

Each side is provided thirty minutes to make his argument to the TTAB. The party in position of plaintiff may reserve a portion of her thirty minute slot for rebuttal. I have heard of one case in which the plaintiff reserved his full thirty minutes for rebuttal, effectively flipping the order of presentation of the argument.

The Board is known to ask questions of counsel during arguments and they certainly did in my case. I found the Judges to be familiar with the Briefs. They had pointed questions at the ready regarding the Board rules and the law.

Thirty minutes is just enough to hit on the high notes of your argument after fielding the Board's questions, so if you go, be ready with a tight presentation. The period of time between argument and a written decision on the case was estimated to be 12 weeks.

Just a word to fellow Kentuckians, those bearing Kentucky driver's licenses require an escort within the USPTO restricted space â leave extra time!