introduction to the trademark trial and appeal...

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CHAPTER 1

Introduction to the Trademark Trial and Appeal Board

by Elizabeth C. Buckingham

Chapter Contents

§ 1.01 Introduction§ 1.02 History of the Board§ 1.03 Board Authority

[1] Jurisdiction over Registration Only, Not Use[2] No Monetary Awards, Fees, or Costs[3] Sanctions[4] Lawyer Discipline

§ 1.04 Proceedings Before the Board[1] Opposition Proceedings[2] Cancellation Proceedings[3] Concurrent Use Proceedings[4] Interference Proceedings[5] Ex Parte Appeals

§ 1.05 Considerations in When to Appear Before the Board[1] The Factor That Compels an Inter Partes

Proceeding[a] Intent-to-Use Trademark Applications[b] Registrations Based on Foreign Marks[c] No Geographic Overlap in Marks’ Usage[d] Civil Courts Have No Jurisdiction over

Defendant[2] Factors That Suggest an Inter Partes Proceeding

[a] Ability to Lengthen Schedule[b] Requirement of Counsel[c] Amount and Type of Evidence Needed

TRADEMARK TRIAL & APPEAL BOARD 1-2

[d] Ability to Litigate Remotely[e] Costs[f] Keeping Register Clear[g] Willingness to Coexist

§ 1.06 Considerations in When to Appear Before a Court Rather Than the Board

[1] Factors That Compel a Civil Lawsuit[a] Non-Trademark Claims[b] Injunctive Relief—Other Than the

Registration of a Trademark[c] Monetary Relief

[2] Factors That Suggest a Civil Lawsuit[a] Judicial Control[b] Ability to Select the Location of the

Litigation[c] Importance of Dispute/Costs[d] Ability to Outspend Opponent

§ 1.07 Considerations in When to File a Letter of Protest Rather Than Oppose

[1] The Letter of Protest Process[2] When to File a Letter of Protest[3] When Not to File a Letter of Protest

§ 1.08 What Governs Practice Before the Board[1] Lanham Act[2] Trademark Rules of Practice[3] Federal Rules of Civil Procedure and Federal

Rules of Evidence[4] Board and Federal Circuit Decisions[5] Other Case Law[6] Trademark Trial and Appeal Board Manual

of Procedure (TBMP)§ 1.09 Other Resources in Board Practice

[1] Board Electronic Records (TTABVUE)[2] Electronic Filing (ESTTA)[3] Board Website[4] Trademark Manual of Examining Procedure

(TMEP)[5] USPTO Online Trademark Search Tools[6] Allen’s Trademark Digest[7] Blogs and Other Online Resources

1-3 INTRODUCTION § 1.01

§ 1.01 Introduction

To succeed before the Trademark Trial and Appeal Board (“theBoard”), it is important to appreciate the unique attributes of theBoard. As a starting point, this means understanding why the Boardwas created and how it has developed, what are the limits of itsauthority, and which proceedings may be brought before it. Buildingon this information, a party should next understand the multiple con-siderations involved in selecting a forum for a trademark dispute. Thischapter will discuss when a party must resolve its dispute before theBoard, when a party cannot resolve its dispute before the Board, andwhen a party should resolve its dispute before the Board. Board pro-ceedings will be contrasted both to federal district court litigation andto filing a letter of protest against a trademark application with theUnited States Patent and Trademark Office. Finally, this chapterexplores the various print and online resources that govern and assistin practice before the Board.

§ 1.02 TRADEMARK TRIAL & APPEAL BOARD 1-4

1 Pub. L. No. 85-609, 72 Stat. 540 (Aug. 8, 1958).2 Lanham Act §§ 1 et seq.; 15 U.S.C. §§ 1051 et seq.3 For a discussion of ex parte appeals, see § 1.04[5] and Chapter 9 infra.4 For a discussion of opposition proceedings, see § 1.04[1] and Chapters 2

through 6 infra.5 For a discussion of cancellation proceedings, see § 1.04[2] and Chapters 2

through 6 infra.6 For a discussion of concurrent use proceedings, see § 1.04[3] and Chapter 7

infra.7 For a discussion of interference proceedings, see § 1.04[4] and Chapter 8 infra.8 See Lanham Act §§ 17, 20, 21, 24, and 31; 15 U.S.C. §§ 1067, 1070, 1071,

1092, and 1113.9 S. Rep. No. 1960, 85th Cong., 2d Sess. (July 24, 1958), reprinted in U.S. Code

Cong. & Admin. News 3331, 3332; H.R. Rep. No. 2021, 85th Cong, 2d Sess. 2 (June26, 1958).

10 Id. As a point of comparison, as of the end of fiscal year 2011, September 30,2011, there were 8,275 cases pending before the Board. United States Patent andTrademark Office Performance and Accountability Report Fiscal Year 2011, Table 24,Summary of Contested Cases, http://www.uspto.gov/about/stratplan/ar/2011/USPTOFY2011PAR.pdf (last visited April 7, 2012).

11 Pub. L. No. 85-609, § 1(a), 72 Stat. 540 (Aug. 8, 1958); S. Rep. No. 1960, 85thCong., 2d Sess. (July 24, 1958), reprinted in 1958 U.S. Code Cong. & Admin. News3331, 3336; H.R. Rep. No. 2021, 85th Cong, 2d Sess. 3 (June 26, 1958).

12 Pub. L. No. 85-609, § 1(a), 72 Stat. 540 (Aug. 8, 1958).

§ 1.02 History of the Board

The Board was created by a 1958 amendment to the federal trade-mark statute, known as the Lanham Act.1 Under the original LanhamAct of 1946,2 the Commissioner of Patents decided (1) single partyor ex parte appeals of refusals to register trademarks from decisionsmade by the examiner of trademarks3 and (2) multiple party or interpartes appeals of contested proceedings, namely opposition proceed-ings,4 cancellation proceedings,5 concurrent use proceedings,6 andinterference proceedings7 from decisions made by the examiner oftrademark interferences.8 In practice, appeals had been decided by asingle Assistant Commissioner.9 Twelve years after enactment of theLanham Act, the annual caseload of 200 to 300 appeals plus thenumerous administrative duties made the burden on the AssistantCommissioner “unnecessarily heavy.”10

The 1958 amendment made four changes to the Lanham Act. First,the amendment called for the creation of the Board, to consist of theCommissioner and Assistant Commissioners, each serving ex officioas time permits, as well as other specially qualified members appoint-ed by the Commissioner.11 The Board members had to be existingPatent Office employees whose qualifications were approved by theCivil Service Commission.12 Second, it abolished the ex parte appealsto the Commissioner of Patents and replaced them with ex parte

1-5 INTRODUCTION § 1.02

13 Pub. L. No. 85-609, § 1, 72 Stat. 540 (Aug. 8, 1958); S. Rep. No. 1960, 85thCong., 2d Sess. (July 24, 1958), reprinted in 1958 U.S. Code Cong. & Admin. News3331, 3333-3334; H.R. Rep. No. 2021, 85th Cong, 2d Sess. 2 (June 26, 1958).

14 Id.15 Pub. L. No. 85-609, § 1(a), 72 Stat. 540 (Aug. 8, 1958); S. Rep. No. 1960,

85th Cong., 2d Sess. (July 24, 1958), reprinted in 1958 U.S. Code Cong. & Admin.News 3331, 3333; H.R. Rep. No. 2021, 85th Cong, 2d Sess. 2 (June 26, 1958).

16 Pub. L. No. 96-455, 94 Stat. 2024 (Oct. 15, 1980); H.R. Rep. No. 1419, 96thCong., 2d Sess. (Sept. 26, 1980), reprinted in 1980 U.S. Code Cong. & Admin. News4292.

17 H.R. Rep. No. 1419, 96th Cong., 2d Sess. (Sept. 26, 1980), reprinted in 1980U.S. Code Cong. & Admin. News 4292.

18 Pub. L. No. 100-667, § 18, 102 Stat. 3941 (Nov. 16, 1988).19 The Senate Report to the 1988 Act called this legislation “the first overall revi-

sion of the Lanham Act.” S. Rep. No. 515, 100th Cong., 2d Sess. (Sept. 15, 1988),reprinted in 1988 U.S. Code Cong. & Admin. News 5577, 5578.

20 Pub. L. No. 100-667, § 18(1), 102 Stat. 3941 (Nov. 16, 1988).21 S. Rep. No. 515, 100th Cong., 2d Sess. (Sept. 15, 1988), reprinted in 1988 U.S.

Code Cong. & Admin. News 5577, 5597.

appeals to the Board. Third, it eliminated the two-step process forinter partes proceedings (initial decision by the examiner of trade-mark interferences and final decision by the Commissioner) andreplaced them with a single decision in inter partes proceedings bythe Board.13 The abolishment of the internal appeal from inter partesproceedings was consistent with the practice in patent interferences,which had abolished internal appeals in 1939.14 Fourth, the amend-ment changed the number of decision-makers from a single AssistantCommissioner to a three-member Board panel.15

In 1980, Congress amended the Lanham Act to permit vacanciesfor Board positions to be filled from persons outside the office and toeliminate the requirement of Civil Service Commission approval.16

These actions were taken to permit the hiring of the most qualifiedpeople and to eliminate anomalies in the law, since no other Patentand Trademark Office positions at this level contained these restric-tions.17

The Board gained additional powers as part of the Trademark LawRevision Act of 1988.18 As part of the sweeping changes accompa-nying the introduction of intent-to-use trademark applications,19 theBoard was given the authority to limit or modify the goods or ser-vices identified in an application or registration.20 The reason for thechange was to permit the Board to base determinations of likelihoodof confusion on marketplace realities rather than hypothetical facts.21

For example, in an opposition to an intent-to-use application, if thetestimony shows that a mark will be used much less broadly than theproposed goods or services, the Board may limit the description of

§ 1.02 TRADEMARK TRIAL & APPEAL BOARD 1-6

22 S. Rep. No. 515, 100th Cong., 2d Sess. (Sept. 15, 1988), reprinted in 1988 U.S.Code Cong. & Admin. News 5577, 5598.

23 Pub. L. No. 100-667, § 18(1), 102 Stat. 3941 (Nov. 16, 1988); S. Rep. No. 515,100th Cong., 2d Sess. (Sept. 15, 1988), reprinted in 1988 U.S. Code Cong. & Admin.News 5577, 5598.

24 Pub. L. No. 100-667, § 18(3), 102 Stat. 3941 (Nov. 16, 1988); S. Rep. No. 515,100th Cong., 2d Sess. (Sept. 15, 1988), reprinted in 1988 U.S. Code Cong. & Admin.News 5577, 5598.

25 S. Rep. No. 515, 100th Cong., 2d Sess. (Sept. 15, 1988), reprinted in 1988 U.S.Code Cong. & Admin. News 5577, 5598.

26 Pub. L. No. 106-43, 113 Stat. 218 (Aug. 5, 1999). 27 Id.28 Pub. L. No. 104-98, § 3, 106 Stat. 3567 (Jan. 16, 1996).29 See Babson Brothers Co. v. Surge Power Corp., 39 U.S.P.Q.2d (BNA) 1953,

1954-1955 (TTAB 1996).30 Pub. L. No. 106-43, 113 Stat. 218 (Aug. 5, 1999).

such goods or services.22 The Board also gained the ability to deter-mine trademark ownership rights if they conflict with the trademarkregister, such as if rights are acquired through a constructive trust.23

Finally, the Trademark Law Revision Act provided that final judg-ments in Board proceedings will not be entered in favor of intent-to-use applicants in likelihood of confusion cases until the applicant per-fects its rights through actual use and registration of the challengedmark.24 This requirement does not apply to Board proceedingsbrought for reasons other than likelihood of confusion, such asdescriptiveness, so long as the intent-to-use applicant has standing tobring such a claim.25

Another addition to the Board’s powers came with the passage ofthe Trademark Amendments Act of 1999.26 This law granted ownersof famous trademarks the right to oppose trademark applications or topetition to cancel trademark registrations on the ground that suchapplications or registrations would cause dilution of the famousmarks.27 While a federal cause of action for dilution was establishedby the Federal Trademark Dilution Act of 1995,28 in 1996 the Boardheld such Act created only a new cause of action in the federal courtsand did not create a new ground for opposition or cancellation.29 In1999, Congress revisited this issue and explicitly granted such author-ity to the Board.30

1-7 INTRODUCTION § 1.03[2]

1 See: Lanham Act § 17(a); 15 U.S.C. § 1067(a) (“In every case of interference,opposition to registration, application to register as a lawful concurrent user, or appli-cation to cancel the registration of a mark, the Director shall give notice to all par-ties and shall direct a Trademark Trial and Appeal Board to determine and decide therespective rights of registration.”); Lanham Act § 20; 15 U.S.C. § 1070 (“An appealmay be taken to the Trademark Trial and Appeal Board from any final decision ofthe examiner in charge of the registration of marks upon the payment of the pre-scribed fee.”); United States Patent and Trademark Office, Trademark Trial andAppeal Board Manual of Procedure, (“TBMP”) § 102.01 (3d ed., 1st rev., 2012)(“The Board is employed to determine only the right to register.”).

2 See TBMP, N. 1 supra, § 102.01 (“The Board is not authorized to determine theright to use, nor may it decide broader questions of infringement or unfair competition.”).

See also: Tenth Circuit: Water Pik, Inc. v. Med-Systems, Inc., 2011 WL 843916 at *3 (D.

Colo. Mar. 8, 2011) (“Plaintiff’s claims present issues outside the TTAB’s jurisdic-tion, including trademark infringement and unfair competition.”).

Federal Circuit: Person’s Co. v. Christman, 900 F.2d 1565, 1570-1571, 14U.S.P.Q.2d (BNA) 1477, 1481 (Fed. Cir. 1990) (Board cannot adjudicate unfair com-petition issues).

Trademark Trial and Appeal Board: Carano v. Vina Concha Y Toro S.A., 67U.S.P.Q.2d (BNA) 1149, 1151 (TTAB 2003) (“[T]he Board has no jurisdiction todetermine copyright infringement.”); Enterprise Rent-A-Car Co. v. Advantage Rent-A-Car Inc., 62 U.S.P.Q.2d (BNA) 1857, 1858 (TTAB 2002), aff’d 330 F.3d 1333, 66U.S.P.Q.2d (BNA) 1811 (Fed. Cir.), cert. denied 540 U.S. 1089 (2003) (“[T]he Boardhas no jurisdiction to decide issues that arise under state dilution laws.”).

3 See: TBMP, N. 1 supra, § 502.05 (“The Board will not . . . award . . . dam-ages to any party.”); Central Manufacturing Inc. v. Third Millennium TechnologyInc., 61 U.S.P.Q.2d (BNA) 1210, 1213 (TTAB 2001) (“the Board does not imposemonetary sanctions or award attorneys’ fees or other expenses”); Duke University v.Haggar Clothing Co., 54 U.S.P.Q.2d (BNA) 1443, 1445 n.3 (TTAB 2000) (the Boarddoes not have authority to award attorney’s fees, expenses or damages to any party).

4 See: 37 C.F.R. § 2.120(g) (“If a party fails to participate in the required dis-covery conference, or if a party fails to comply with an order of the Trademark Trialand Appeal Board relating to disclosure or discovery, including a protective order, theBoard . . . will not hold any person in contempt or award expenses to any party.”);37 C.F.R. § 2.127(f) (“The Board will not hold any person in contempt, or awardattorneys’ fees or other expenses to any party.”); TBMP, N. 1 supra, § 502.05 (“The

§ 1.03 Board Authority

[1]—Jurisdiction over Registration Only, Not Use

The Board has jurisdiction only to determine whether a party hasthe right to register a trademark.1 It has no authority to determinewhether a party may use a mark, or, conversely, to enjoin a partyfrom the use of a mark.2

[2]—No Monetary Awards, Fees, or Costs

The Board has no jurisdiction to award damages, profits, or othermonetary relief to any party.3 It also cannot hold parties in contemptor award them attorney’s fees or costs.4 Nevertheless, potential Board

§ 1.03[3] TRADEMARK TRIAL & APPEAL BOARD 1-8

Board will not hold any person in contempt, or award attorneys’ fees, [or] otherexpenses . . . to any party.”); Kairos Institute of Sound Healing LLC v. Doolittle Gar-dens LLC, 88 U.S.P.Q.2d (BNA) 1541, 1544 n.6 (TTAB 2008) (the Board will notaward costs or fees); Central Manufacturing Inc. v. Third Millennium TechnologyInc., 61 U.S.P.Q.2d (BNA) 1210, 1213 (TTAB 2001) (the Board does not imposemonetary sanctions or award attorneys’ fees or other expenses); Duke University v.Haggar Clothing Co., 54 U.S.P.Q.2d (BNA) 1443, 1445 n.3 (TTAB 2000) (the Boarddoes not have authority to award attorney’s fees, expenses or damages to any party).

5 See § 1.06[1][b] and [c] infra for a discussion of federal court authority to awardrelief. See § 1.06[2][a] infra for a discussion of federal court authority to hold par-ties in contempt.

6 See 37 C.F.R. § 2.120(g).

“If a party fails to participate in the required discovery conference, or if a partyfails to comply with an order of the Trademark Trial and Appeal Board relatingto disclosure or discovery, including a protective order, the Board may make anyappropriate order, including those provided in Rule 37(b)(2) of the Federal Rulesof Civil Procedure, except that the Board will not hold any person in contempt oraward expenses to any party. The Board may impose against a party any of thesanctions provided in Rule 37(b)(2) in the event that said party or any attorney,agent, or designated witness of that party fails to comply with a protective ordermade pursuant to Rule 26(c) of the Federal Rules of Civil Procedure. . .”

See also, 37 C.F.R. § 2.125(c).

“Upon motion by any party, for good cause, the Trademark Trial and AppealBoard may order that any part of a deposition transcript or any exhibits thatdirectly disclose any trade secret or other confidential research, development, orcommercial information may be filed under seal and kept confidential under theprovisions of § 2.27(e). If any party or any attorney or agent of a party fails tocomply with an order made under this paragraph, the Board may impose any ofthe sanctions authorized by § 2.120(g).”

See also, United States Patent and Trademark Office, Trademark Trial and AppealBoard Manual of Procedure, (“TBMP”), § 527.01(a) (3d ed., 1st rev., 2012). For afurther discussion of motions for discovery sanctions, see § 3.07[6] infra.

7 See TBMP, N. 6 supra, § 527.01(b).8 See id., § 527.01(e).

litigants should remember that a proceeding that begins before theBoard does not necessarily end before the Board. If a party elects toappeal from an inter partes Board decision by initiating a civil actionin a United States District Court, then the district court would havejurisdiction to award injunctive and monetary relief, attorney’s feesand costs and to hold the parties in contempt.5

[3]—Sanctions

Except for the aforementioned limitations, the Board has the author-ity to impose sanctions on parties that fail to comply with Boardorders including protective orders,6 that fail to respond to discoveryrequests at all,7 that fail to respond to discovery requests fully,8 or that


10 See In re Psygnosis Ltd., 51 U.S.P.Q.2d (BNA) 1594, 1596-1597 (TTAB 1999)(Board forbade applicant from filing reply brief or requesting an oral hearing whereevidence attached to applicant’s brief was a “thinly veiled attempt” to defy a priorBoard order refusing to extend the page limits for the brief so as to foreclose coun-sel from “two additional opportunities in which he might attempt to circumvent yetagain the Board’s rules and orders”).

11 See: Fed. R. Civ. P. 11(b)-(d); 37 C.F.R. § 2.193(f) (“The presentation to theOffice (whether by signing, filing, submitting, or later advocating) of any documentby any person, whether a practitioner or non-practitioner, constitutes a certificationunder § 11.18(b) of this chapter.”); 37 C.F.R. § 11.18; TBMP, N. 6 supra, § 527.02.

12 See: Fed. R. Civ. P. 11(c); 37 C.F.R. § 2.193(f) (“Violations of § 11.18(b) ofthis chapter may jeopardize the validity of the application or registration, and mayresult in the imposition of sanctions under § 11.18(c) of this chapter.”); 37 C.F.R. § 11.18(c); United States Patent and Trademark Office, Trademark Trial and AppealBoard Manual of Procedure, (“TBMP”) § 527.02 (3d ed., 1st rev., 2012). See § 3.10[6] infra for a more detailed discussion of Rule 11 sanctions.

13 See 10 C.F.R. § 20(a) (“Canons are set out in §§ 10.21, 10.30, 10.46, 10.56,10.61, 10.76, 10.83, 10.100, and 10.110. Canons are statements of axiomatic norms,expressing in general terms the standards of professional conduct expected of prac-titioners in their relationships with the public, with the legal system, and with thelegal profession.”); TBMP, N. 12 supra, § 115.01.

14 10 C.F.R. § 20(b) (“Disciplinary Rules are set out in §§ 10.22-10.24, 10.31-10.40, 10.47-10.57, 10.62-10.68, 10.77, 10.78, 10.84, 10.85, 10.87-10.89, 10.92,10.93, 10.101-10.103, 10.111, and 10.112.”); TBMP, N. 12 supra, § 115.01.

15 37 C.F.R. § 11.19(b)(iv).16 37 C.F.R. § 11.19(b)(v). For a discussion of signature and certification require-

ments, see §§ 1.03[3] and 2.04[1][b] supra.

fail to respond to discovery requests on a timely basis.9 The Board hasalso imposed sanctions on parties that attempt to circumvent Boardorders.10 Moreover, all filings made with the Board are subject to therequirements of Rule 11 of the Federal Rules of Civil Procedure andthe companion Board Rules 2.193(f) and 11.18.11 Violations of theserules can lead to Board sanctions ranging from holding that facts havebeen established to termination of an inter partes proceeding.12

[4]—Lawyer Discipline

While a complete discussion of lawyer discipline is beyond thescope of this treatise, practitioners before the Board are subject to theCanons and Disciplinary Rules set forth in Part 10 of Title 37 of theCode of Federal Regulations. The Canons set forth the general stan-dards of conduct,13 while the Disciplinary rules “are mandatory incharacter and state the minimum level of conduct below which nopractitioner can fall without being subjected to disciplinary action.”14

Practitioners may be subject to discipline for violation of DisciplinaryRules15 as well as the signature and certification requirements.16

Discipline may include exclusion, suspension, reprimand, censure or


probation.17 The rules governing disciplinary proceedings appear inSubpart C of Title 37 of the Code of Federal Regulations, Part 11,Sections 11.19 through 11.61.

17 37 C.F.R. § 11.20(a).


1 In fiscal year 2011, 78.1% of the inter partes cases filed, or 4,985 out of 6,386such cases, were oppositions. United States Patent and Trademark Office Perfor-mance and Accountability Report Fiscal Year 2011, Table 24, Summary of Contest-ed Cases, http://www.uspto.gov/about/stratplan/ar/2011/USPTOFY2011PAR.pdf (lastvisited April 7, 2012).

For a discussion of the procedures governing opposition proceedings, see Chap-ters 2 through 4 infra. For a discussion of the grounds for and affirmative defensesin opposition proceedings, see Chapters 5 and 6 infra.

2 Lanham Act § 13; 15 U.S.C. § 1063.3 It is not possible to oppose applications on the supplemental register, but the

resulting supplemental registration may be the subject of cancellation proceedings.See Lanham Act § 24; 15 U.S.C. § 1092.

4 See: Lanham Act § 12(a); 15 U.S.C. § 1062(a); 37 C.F.R. § 2.80.5 See: Lanham Act § 13(a); 15 U.S.C. § 1063(a); 37 C.F.R. §§ 2.80, 2.102. 6 In fiscal year 2011, 21.3% of the inter partes cases filed, or 1,362 out of 6,386

such cases, were cancellations. United States Patent and Trademark Office Perfor-mance and Accountability Report Fiscal Year 2011, Table 24, Summary of Contest-ed Cases, http://www.uspto.gov/about/stratplan/ar/2011/USPTOFY2011PAR.pdf (lastvisited April 7, 2012).

For a discussion of the procedures governing cancellation proceedings, see Chap-ters 2 through 4 infra. For a discussion of the grounds for and affirmative defensesin cancellation proceedings, see Chapters 5 through 6 infra.

§ 1.04 Proceedings Before the Board

The Board has jurisdiction over five types of proceedings. Four ofthe proceedings involve disputes between multiple parties, known asinter partes proceedings: opposition proceedings, cancellation pro-ceedings, concurrent use proceedings, and interference proceedings.The fifth proceeding involves a dispute between an applicant fortrademark registration and the United States Patent and TrademarkOffice known as an ex parte proceeding.

[1]—Opposition Proceedings

Opposition proceedings are the most common of the inter partesproceedings.1 In an opposition, the plaintiff is “any person who believesthat he would be damaged by the registration of a mark upon the prin-cipal register,”2 and the defendant is the applicant seeking registrationof its mark on the principal register.3 As part of the trademark applica-tion process, each application on the principal register is published foropposition.4 A person wishing to oppose the application must do soeither within thirty days of its publication or, upon obtaining one ormore extensions of time, within 180 days following publication.5

[2]—Cancellation Proceedings

After oppositions, cancellation proceedings are the next most com-mon of the inter partes proceedings.6 In a cancellation, the plaintiff


7 Lanham Act § 14; 15 U.S.C. § 1064. See also, 37 C.F.R. § 2.111.8 See: Lanham Act § 24; 15 U.S.C. § 1092; 37 C.F.R. § 2.111.9 See: Lanham Act § 14(1) and (3); 15 U.S.C. § 1064; 37 C.F.R. § 2.111(b).10 See: Lanham Act § 24; 15 U.S.C. § 1092; 37 C.F.R. § 2.111.11 In fiscal year 2011, 0.6% of the inter partes cases filed, or thirty-nine out of

6,386 such cases, were concurrent use proceedings. United States Patent and Trade-mark Office Performance and Accountability Report Fiscal Year 2011, Table 24,Summary of Contested Cases, http://www.uspto.gov/about/stratplan/ar/2011/USPTO-FY2011PAR.pdf (last visited April 7, 2012). For a more detailed discussion of con-current use proceedings, see Chapter 7 infra.

12 See: 37 C.F.R. § 2.99(h); 37 C.F.R. § 2.133(c); United States Patent and Trade-mark Office, Trademark Trial and Appeal Board Manual of Procedure, (“TBMP”) § 1101.02 (3d ed., 1st rev., 2012). While it is possible to divide registrations by modeof use as well, the vast majority of concurrent use proceedings seek geographicrestrictions. See TBMP, § 1103.01(d)(2).

13 See Lanham Act § 1(a)(3)(D); 15 U.S.C. § 1051(a)(3)(D).14 See TBMP, N. 12 supra, § 1104.15 See: Lanham Act § 2(d); 15 U.S.C. § 1052(d). TBMP, N. 12 supra,

§ 1103.01(a)-(b).

is “any person who believes that he is or will be damaged . . . by theregistration of a mark on the principal register”7 or on the supple-mental register8 and the defendant is the owner of the registeredmark. A person wishing to cancel a mark must do so within five yearsof the issuance of a registration on the principal register unless theground for cancellation is genericness, functionality, abandonment,fraud, or certain other grounds specified in Section 14 of the LanhamAct, in which case the petition may be filed at any time.9 A personwishing to cancel a mark registered on the supplemental register maydo so at any time after registration.10

[3]—Concurrent Use Proceedings

Concurrent use proceedings are rare.11 They are the sole interpartes proceeding used to divide trademark registrations geographi-cally or by restrictions as to mode of use.12 In a concurrent use pro-ceeding, the plaintiff is the owner of a trademark application whobelieves that he is entitled to registration of a mark on the principalregister subject to one or more identified concurrent users.13 Thedefendants are owners of one or more federal trademark registrations,federal applications, or common law trademarks.14 The plaintiff mustbe using the subject mark in commerce, and the plaintiff’s rights in themark must predate each defendant’s rights in its mark unless thedefendant consents to the plaintiff’s concurrent use registration.15 Aconcurrent use application may also be based on prior Board decisions


16 See TBMP, N. 12 supra, § 1103.02 - 03.17 There have been no interferences filed since 1984. See § 8.01 infra. For a more

detailed discussion of interference use proceedings, see Chapter 8 infra.18 See Lanham Act § 16; 15 U.S.C. § 1066.19 See: United States Patent and Trademark Office, Trademark Manual of Exam-

ining Procedure, (“TMEP”) § 1208.03 (8th ed. 2011); United States Patent andTrademark Office, Trademark Trial and Appeal Board Manual of Procedure,(“TBMP”) § 1002 (3d ed., 1st rev., 2012).

20 See: Lanham Act §§ 12(b) and 20; 15 U.S.C. §§ 1062(b) and 1070; 37 C.F.R.§§ 2.141 and 2.142. For a more detailed discussion of ex parte appeals, see Chapter9 infra.

21 This represents 2,639 out of 9,025 Board cases. United States Patent and Trade-mark Office Performance and Accountability Report Fiscal Year 2011, Table 24,Summary of Contested Cases, http://www.uspto.gov/about/stratplan/ar/2011/USPTOFY2011PAR.pdf (last visited April 7, 2012).

or prior federal court determinations, but the Board typically will notinstitute a concurrent use proceeding in such cases.16

[4]—Interference Proceedings

Interference proceedings are virtually extinct.17 In theory, they areavailable to a trademark applicant who has satisfied all conditions forregistration except for the presence of one or more prior-filed trade-mark applications or prior-issued contestable trademark registrationsand who can document extraordinary circumstances in a petition tothe Director.18 In practice, they are limited to situations involvingmultiple trademark applicants and multiple trademark applications.19

[5]—Ex Parte Appeals

In addition to the various inter partes proceedings, the Board hasjurisdiction over ex parte appeals of the final refusal to register a trade-mark.20 In fiscal year 2011, twenty-nine percent of the cases filed withthe Board were ex parte appeals.21 The plaintiff is the person seekingto register the trademark and the defendant is the examining attorney atthe Trademark Office who has issued the final office action refusingregistration. An applicant wishing to appeal from the refusal must fileits notice of appeal with six months of receiving the final refusal.


1 See, e.g., United American Industries, Inc. v. Cumberland Packing Corp., 2007WL 38279 (D. Ariz. Jan. 4, 2007) (granting defendant’s motion to dismiss withoutprejudice where the defendant had simply expressed an interest in acquiring themark, applied to register the mark, and refused to withdraw its application, but hadnot yet begun to use the mark).

2 See, e.g., Experian Marketing Solutions Inc. v. U.S. Data Corp., 93 U.S.P.Q.2d(BNA) 1037, 1042-1043 (D. Neb. 2009) (case was ripe for adjudication where theplaintiff owned the mark and alleged in complaint, inter alia, that the defendant usedthe mark in a manner likely to cause confusion, mistake, or deception).

3 See, e.g.:Second Circuit: Starter Corp. v. Converse, Inc., 84 F.3d 592, 596-597, 38

U.S.P.Q.2d (BNA) 1947, 1950 (2d Cir. 1996) (actual intent and ability to engageimminently in allegedly infringing conduct sufficient to find an actual controversy forpurposes of a declaratory judgment).

Fifth Circuit: Vantage Trailers Inc. v. Beall Corp., 567 F.3d 745, 750, 90U.S.P.Q.2d (BNA) 1855, 1859 (5th Cir. 2009) (action for declaratory judgment wasproperly dismissed where the plaintiff was not “immediately prepared” to manufac-ture and sell potentially infringing product).

Seventh Circuit: G. Heileman Brewing Co., Inc. v. Anheuser-Busch, Inc., 873 F.2d985, 990-991, 10 U.S.P.Q.2d (BNA) 1801, 1806 (7th Cir. 1989) (an actual contro-versy exists for purposes of a declaratory judgment action where the plaintiff wasactively preparing to produce an allegedly infringing product).

§ 1.05 Considerations in When to Appear Before the Board

Selecting a forum for a trademark dispute is one of the most impor-tant decisions trademark owners and their counsel make in connectionwith enforcing and defending trademark rights. This section will assistpotential parties in understanding when the Board is their only possi-ble forum and when they could also bring a civil lawsuit. When par-ties have options, this section will discuss factors that will help a partydetermine whether to start an inter partes proceeding or civil lawsuit.

[1]—The Factor That Compels an Inter Partes Proceeding

There is only one factor that requires a dispute to be heard by theBoard instead of a court: when the courts do not have jurisdictionover the defendant, typically because the defendant has not yet begunto use its mark in the plaintiff’s territory.1 In order for a court to heara trademark case, the plaintiff typically must allege that the defendanthas used a trademark that infringes, dilutes, or otherwise harms plain-tiff’s rights.2 If no allegedly infringing conduct has occurred, courtsmay also find justifiable controversies where such alleged infringe-ment is imminent.3 Without a claim of actual or imminent infringingconduct, a court will not entertain a complaint that alleges the defen-dant has not yet but might some day use a mark in the future that


4 See, e.g., United American Industries, Inc. v. Cumberland Packing Corp., 2007WL 38279 (D. Ariz. Jan. 4, 2007) (a defendant’s mere consideration of the possibil-ity of using a mark, without a showing of any present activity of infringement or con-crete steps taken towards such activity, is insufficient to maintain a cause of action).

5 See id. 6 See:First Circuit: Kusek v. Family Circle, Inc., 894 F. Supp. 522, 532 (D. Mass. 1995)

(“mere registration does not create the mark [or] amount to use of the mark”).Second Circuit: Macia v. Microsoft Corp., 152 F. Supp.2d 535, 539 (D. Vt. 2001)

(filing an intent-to-use trademark application was not trademark infringement).Seventh Circuit: Geisha, LLC v. Tuccillo, 525 F. Supp.2d 1002, 1015-1016 (N.D.

Ill. 2007) (defendant’s filing of an intent-to-use application insufficient to establishan actual controversy to support the exercise of jurisdiction).

7 See Lanham Act § 1(b); 15 U.S.C. § 1051(b).8 See Lanham Act § 44; 15 U.S.C. § 1126. 9 See Lanham Act § 66; 15 U.S.C. § 1141(f).

would harm the plaintiff.4 Such a complaint will be dismissed asimpermissibly requesting an advisory opinion.5 The fact that a partyhas applied to register—or has even registered—a trademark with theUnited States Patent and Trademark Office does not count as use suf-ficient to confer court jurisdiction.6 This fact pattern can arise withapplications published for opposition before use occurs, with regis-trations granted without any actual use of the registered mark, andwith applications or registrations where the parties’ usages do notoverlap geographically. A related fact pattern occurs when a federalcourt would not have jurisdiction over a particular defendant but theBoard would have such jurisdiction.

[a]—Intent-to-Use Trademark Applications

The first circumstance requiring the plaintiff to bring its case beforethe Board is when the defendant has filed a pending trademark appli-cation but has not yet used the mark. This happens when the defen-dant has filed an application based on one or more of the followingthree grounds for registration: (1) the defendant has a good faith intentto use its mark in commerce under Section 1(b) of the Lanham Act;7(2) the defendant has a good faith intent to use its mark in commerceand owns a trademark application or registration in its country of ori-gin under Section 44 of the Lanham Act;8 and (3) the defendant has agood faith intent to use its mark in commerce and has requested anextension of protection of its home country application or registrationunder Section 66 of the Lanham Act.9 By opposing the defendant’sintent-to-use trademark application, the plaintiff can eliminate the need


10 See Lanham Act § 44; 15 U.S.C. § 1126.11 See Lanham Act § 69; 15 U.S.C. § 1141(i). 12 Cf., Bassett v. Mashantucket Pequot Tribe, 204 F.3d 343, 357-358, 53

U.S.P.Q.2d (BNA) 1865, 1875 (2d Cir. 2000) (nothing on the face of the CopyrightAct subjects tribes to the jurisdiction of federal courts for civil suits, and congres-sional abrogation of tribal immunity cannot be implied; a tribe does not waive itsimmunity by engaging in off-reservation commercial activities).

to wait to sue until the defendant begins use, which in some casescould mean a head start on litigation of several years or more.

[b]—Registrations Based on Foreign Marks

The next circumstance requiring the plaintiff to bring its casebefore the Board is when the defendant has a trademark registrationbut has not used the mark. This happens when the defendant hasobtained a registration based on its country of origin registrationunder Section 44 of the Lanham Act10 or the defendant has obtainedan extension of protection of its home country registration under theMadrid Protocol, Section 69 of the Lanham Act.11 By petitioning tocancel the defendant’s trademark registration or extension of protec-tion, a plaintiff will not have to wait until a defendant begins use ofa mark in the United States to seek relief.

[c]—No Geographic Overlap in Marks’ Usage

The final circumstance requiring the plaintiff to bring its case beforethe Board is when there is no geographic overlap between the usage ofthe parties’ respective marks. While many trademark owners distributeproducts and services on a nationwide basis, not all do. For example,if a plaintiff has registered its mark for restaurant services but onlyoperates locations along the East Coast, it cannot prevent a Californiarestaurant from using the same name if that plaintiff has no imminentplans to expand to the West Coast. That same plaintiff, however, couldchallenge the defendant’s rights in an inter partes proceeding shouldthe defendant apply to register or have registered its mark.

[d]—Civil Courts Have No Jurisdiction over Defendant

By applying to register a trademark at the United States Patent andTrademark Office, an applicant has consented to jurisdiction by theBoard. Because of sovereign immunity principles, that same applicantmay not have waived a defense of sovereign immunity overan infringement case brought in federal district court.12 For parties


13 Compare Bell Helicopter Textron Inc. v. Islamic Republic of Iran, 764 F. Supp.122, 127, 99 U.S.P.Q.2d (BNA) 1057, 1060 (D.D.C. 2011) (where Iran adopted thetrade dress of the plaintiff, Iran was liable under the Lanham Act because Iran’sactivities were commercial within the meaning of the Foreign Sovereign ImmunityAct and thus exempt from immunity) with Bassett v. Mashantucket Pequot Tribe, 204F.3d 343, 357-358, 53 U.S.P.Q.2d (BNA) 1865, 1875 (2d Cir. 2000) (nothing on theface of the Copyright Act subjects tribes to the jurisdiction of federal courts for civilsuits, and congressional abrogation of tribal immunity cannot be implied; a tribe doesnot waive its immunity by engaging in off-reservation commercial activities).

14 See: 37 C.F.R. § 2.120(a)(2) (“The discovery period may be extended uponstipulation of the parties approved by the Board, or upon motion granted by theBoard, or by order of the Board.”); § 2.121(a) (“The deadlines for pretrial disclosuresand the testimony periods may be rescheduled by stipulation of the parties approvedby the Board, or upon motion granted by the Board, or by order of the Board.”);United States Patent and Trademark Office, Trademark Trial and Appeal Board Man-ual of Procedure, (“TBMP”) §§ 403.04, 501.02 (3d ed., 1st rev., 2012).

15 See TBMP, N. 14 supra, § 509.02.

“Ordinarily, a consented motion to extend or reopen will be granted by theBoard. . . . When the Board notes that a consented or stipulated motion to extend

contemplating challenging the trademark rights of Native Americantribes or other parties with sovereign immunity claims,13 the certain-ty of Board jurisdiction could well outweigh the possibility of need-ing to appear in tribal or similar court of limited jurisdiction, whichmay itself decline jurisdiction or may never have previously decideda trademark case.

[2]—Factors That Suggest an Inter Partes Proceeding

While these factors do not compel an inter partes proceeding, themore of them that are present, the more likely a litigant would preferan inter partes proceeding to a civil lawsuit.

[a]—Ability to Lengthen Schedule

In inter partes proceedings, the parties have wide latitude tolengthen the schedule of the proceeding, especially if they are work-ing toward a settlement. In an opposition, the opposer may obtainextensions of up to 150 days after the subject application is publishedfor opposition. While the Board will set the schedule for any of theinter partes proceedings shortly after the initial pleading is filed, theBoard will extend the discovery period or the testimony period by itsorder, upon a motion by one of the parties, or by stipulation of the par-ties approved by the Board.14 In practice, the interlocutory attorneygenerally approves stipulated extension requests and, indeed, may andoften does suspend proceedings if the parties have filed a series ofextension requests.15 In contrast, federal court judges and magistrates


time is based on the asserted existence of the parties’ settlement negotiations, theBoard may suspend proceedings, sua sponte, for any suitable period of time,including up to six months, to enable the parties to concentrate on settlement andto obviate the filing of numerous extension requests.”16 See Fed. R. Civ. P. 16(b)(4) (“A schedule may be modified only for good cause

and with the judge’s consent.”).17 See: 37 C.F.R. § 11.14(b); TBMP, N. 14 supra, § 114.01 (“because the gov-

erning practices and procedures in proceedings before the Board are quite technicaland highly specialized, it is strongly recommended that an attorney familiar withtrademark law represent a party”).

18 See United States v. Van Stelton, 988 F.2d 70, 70 (8th Cir. 1993). See also, TheFirst Amendment Foundation v. Village of Brookfield, 575 F. Supp. 1207 (N.D. Ill.1983).

19 See:Second Circuit: Eagle Association v. Bank of Montreal, 926 F.2d 1305, 1310 (2d

Cir. 1991) (holding that the district court’s prohibition against a layperson appearingon behalf of the partnership was proper).

Seventh Circuit: The First Amendment Foundation v. Village of Brookfield, 575F. Supp. 1207, 1207 (N.D. Ill. 1983) (“Corporations must be represented in court byattorneys admitted to practice, and may not appear through an officer or other layrepresentative. . . . The same rule applies to partnerships and other unincorporatedorganizations.”) (citation omitted).

Court of Customs and Patent Appeals: S. Stern & Co. v. United States, 331 F.2d310, 314 (Cust. & Pat. App. 1963), cert. denied 377 U.S. 909 (1964) (28 U.S.C.A.§ 1654 would not allow a lay partner of a partnership to represent the partnership ina judicial proceeding).

20 These requirements are reflected in the local court rules of the federal districtcourts. See, e.g.:

Georgia: LR, 83.1(B), N.D. Ga. (requiring nonresident attorney who is not anactive member of the state bar to apply for pro hac vice admission and designate alocal member of the bar as local counsel).

Minnesota: D. Minn. L.R. 83.5(d) (requiring nonresident attorneys to associatewith an active member of the court’s bar).

Oregon: D. Or. L.R. 83-3(a) (describing the requirements for attorneys seekingpro hac vice admission including association with an attorney admitted to the bar ofthe district court who has meaningful participation in the case’s preparation and trial).

are far more likely to insist that the initial schedule be followed orthat there be compelling reasons for any departures.16

[b]—Requirement of Counsel

The Board recommends, but does not require, a party appearingbefore it to be represented by counsel, even if that party is a corpora-tion or a partnership.17 In contrast, corporations cannot appear in fed-eral court without counsel.18 This rule likely applies to partnerships andother unincorporated associations as well.19 Moreover, if the parties arenot located in the same state, then a defendant in federal court litiga-tion could well have two sets of lawyers: its customary outside trade-mark counsel and local counsel.20 The Board has no local counsel


Rhode Island: D.R.I. L.R. Gen. 204 (describing the requirements for an attorneywho is not a member of the bar of the district court to be admitted pro hac viceincluding affiliation with local counsel).

Utah: D.U.Civ. R. 83-1.1(d) (requiring nonresident applicants of pro hac viceadmission to associate with an active local counsel).

21 37 C.F.R. §§ 11.1, 11.14(a). The Board also permits foreign attorneys to rep-resent clients of that same country before it, providing certain requirements are met,including that the foreign attorney is registered in good standing before the trademarkoffice of his or her home country and that the home country offers reciprocal privi-leges to United States attorneys. Id. § 11.14(c).

22 Compare:First Circuit: Coach, Inc. v. Gata Corp., 2011 WL 941575 at *3 (D.N.H. March

17, 2011) (ordering defendant to produce all documents within its custody and con-trol responsive to plaintiff’s production request).

Second Circuit: Momentum Luggage & Leisure Bags v. Jansport, Inc., 2001 WL91707 at *1, *2 (S.D.N.Y. Feb. 1, 2001) (precluding documentary evidence of plain-tiff after plaintiff failed to respond to a discovery order to produce all documentsresponsive to the defendant’s document requests).

Ninth Circuit: U.S. Philips Corp. v. KXD Technology, Inc., 2007 WL 4984153 at*3, *4 (C.D. Cal. July 27, 2007) (striking the defendants’ answers and enteringdefault against them because they failed to produce all of the discovery ordered tobe produced by the magistrate judge); M2 Software, Inc. v. M2 Communications,L.L.C., 217 F.R.D. 499, 501 (C.D. Cal. 2003) (ordering plaintiff to produce all doc-uments “without any redactions” to defendant’s discovery requests).

With:Weatherford/Lamb, Inc. v. C & J Energy Service, Inc., 96 U.S.P.Q.2d (BNA)

1834, 1834 n.3 (TTAB 2010) (granting petitioner’s request to produce only a repre-sentative sample of responsive documents); I.B.E. Inc. v. Balekjian, 2004 WL2825456 at *3 n.8 (TTAB Nov. 22, 2004) (noting that representative samples ofrequested documents are allowed if providing every requested document would causethe answering party an undue burden); Georgia-Pacific Corp. v. Great Plains Bag Co.,190 U.S.P.Q. (BNA) 193, 196 (TTAB 1976) (noting that if a large number of docu-ments exist in response to an interrogatory, then the party should identify only a rep-resentative sample that would serve as an answer to its interrogatory); The J.B.Williams Co. v. Pepsodent G.m.b.H., 188 U.S.P.Q. (BNA) 577, 580 (TTAB 1975)(stating that the party should try to identify some of the documents described by theinterrogatory but noting that if the task is “unduly burdensome and time-consuming”then the party should try to identify a representative sample of each category).

requirements. Any attorney in good standing of the highest court of anystate or territory of the United States may appear before the Board.21

[c]—Amount and Type of Evidence Needed

Inter partes proceedings typically involve less and fewer types ofevidence. Discovery in federal court trademark litigation usuallyinvolves the production of all relevant evidence, while discovery ininter partes proceedings often involves the production of a represen-tative sample of such evidence.22 Federal court trademark litigationmore often involves costly and time-consuming trademark surveys


23 See 37 C.F.R. § 2.129(a) (“If a party desires to have an oral argument at finalhearing, the party shall request such argument by a separate notice filed not later thanten days after the due date for the filing of the last reply brief in the proceeding.”).

24 See: 37 C.F.R. § 2.129(a); United States Patent and Trademark Office, Trade-mark Trial and Appeal Board Manual of Procedure, (“TBMP”) § 802.03 (3d ed., 1strev., 2012) (“Attendance at a scheduled oral hearing is voluntary, not mandatory. . . .If a party elects not attend a scheduled hearing, the party should [so] notify theBoard. . .”).

25 See: 37 C.F.R. § 2.127(a) (“An oral hearing will not be held on a motion excepton order by the Board.”); TBMP, N. 24 supra, § 502.03 (“[T]he Board rarely grantsa request for an oral hearing on a motion.”).

26 See: 37 C.F.R. § 2.120(i)(2) (granting the Board the authority to request a dis-closure, discovery or pretrial conference where issues too complex to be resolved bymotion or telephone conference; TBMP, N. 24 supra, § 502.06(b) (“Because the pre-trial conference necessarily involves expense for the parties, it is rarely used by theBoard.”).

27 See: Fed. R. Civ. P. 16(c)(3) (addressing counsel attendance at a pretrial con-ference); Fed. R. Civ. P. 43(a) (“At trial, the witnesses’ testimony must be taken inopen court unless a federal statute, the Federal Rules of Evidence, these rules, orother rules adopted by the Supreme Court provide otherwise.”).

and experts than do inter partes proceedings. Moreover, except forthe rare concurrent use proceeding, inter partes proceedings involveonly nationwide determination of registrability, so the parties do notneed to provide evidence to establish their respective territories ofuse, as would be the case in court litigation. Parties looking to limitthe volume and nature of their evidence may find a more receptiveaudience in the Board than a civil court.

[d]—Ability to Litigate Remotely

There is no time that the parties to a typical inter partes proceed-ing must appear in person before the Board. The only time that theparties are likely to appear before the Board is if one of them requestsan oral argument after the briefs on the merits are submitted.23 Eventhen, the other party may appear at an off-site videoconference centeror may choose not to appear at all after giving notice to the Board.24

Obtaining a hearing on a motion requires an order of the Board, andsuch orders are rarely granted.25 Likewise, while the Board has theauthority to require the parties to appear in person for a pre-trial con-ference in particularly complex cases, it rarely does.26 In contrast,court litigation typically involves in-person motion practice and eithera preliminary injunction hearing and/or a trial, often with live wit-nesses, before a fact finder.27 Court litigation can include a trial beforea jury, with the resulting additional steps of jury selection and possi-bly jury selection consultants, opening statements, the extra testimony


needed to educate a jury about the basics of trademark law as well asthe merits of the case, jury instructions, and closing arguments.28

[e]—Costs

Inter partes proceedings are typically less expensive than federalcourt litigation. If the parties can postpone the litigation schedule,they may be able to settle earlier with fewer expenses. If they do nothave to hire counsel, they can save attorney’s fees, although an interpartes proceeding where only one party is represented by counsel typ-ically has the effect of shifting attorney’s fees to the side representedby counsel. With less evidence to present and without live appearanceor a jury, costs are also saved. Finally, the expert nature of the deci-sion-maker and that fact that only the issue of the registration of oneor more trademarks is being decided further keeps costs down in rela-tion to court litigation, which may involve multiple issues includingmultiple non-trademark issues.

[f]—Keeping Register Clear

A trademark owner may be willing to tolerate a common law usagebut not a registered trademark. Even if the plaintiff has a nationalpresence, the essentially local nature of or different market niche fora defendant’s products or services may mean that there is little real-istic likelihood of confusion. Moreover, it can be much easier to con-vince a defendant to abandon its federal trademark application thanits mark. While both may require negotiating a settlement agreement,the only cost of abandoning the application is the time to completethe form (available online) and the associated attorney’s fees if theapplicant is represented by counsel. In contrast, there are numerouscosts associated with replacing a mark: the costs to clear a new mark;file a replacement application; redesign websites, advertising, andprinted business materials; replace products and product packaging;and, depending on the industry, change signage, delivery trucks, uni-forms, and billboards. Perhaps the mark is of marginal interest to theplaintiff, so the plaintiff is unwilling to invest much in enforcing itsrights in the mark. If, for whatever reason, a plaintiff will tolerate userather than registration, then an inter partes proceeding is the idealmeans to accomplish this goal.

28 See: Fed. R. Civ. P. 43 (allowing for the taking of testimony); Fed. R. Civ. P.45 (allowing parties to subpoena witnesses and documents); Fed. R. Civ. P. 47 (deter-mining how jurors are selected); Fed. R. Civ. P. 49 (discussing special verdict andgeneral verdict requirements); Fed. R. Civ. P. 51 (determining jury instructions).


29 Such coexistence may arise either because the plaintiff only challenges certainclasses or because the Board finds for defendant with respect to certain classes.

[g]—Willingness to Coexist

Similar to a willingness to tolerate use, if a plaintiff is willing totolerate some type of coexistence on the federal registration, then aBoard proceeding is a cost-effective means of obtaining a coexistencearrangement. There are several ways that a Board decision can func-tion as a coexistence order. Every Board decision granting a concur-rent use registration divides the parties’ rights to register their marksalong geographic lines. Every Board opposition or cancellation deci-sion that refuses registration in certain classes but not others dividesthe parties’ rights along product or service lines.29 Every Board par-tial opposition or cancellation decision that refuses registration of cer-tain goods or services within a class or imposes restrictions such ason the type, use, customers, or trade channels for the goods or ser-vices is an even more specific type of coexistence order.

Of course, the parties need not fully litigate a Board proceeding toachieve coexistence. Board proceedings may be resolved by the par-ties themselves to permit coexistence. For example, a settlementagreement may require the defendant to amend its application or reg-istration to limit the mark to certain goods or services (i.e., keepinggolf clubs but deleting tennis racquets), to certain customers (i.e.,specifying insurance companies as customers), or to certain tradechannels (i.e., wholesale sales). A settlement agreement could alsocall for the defendant to withdraw an application or registration of aword mark in block letters and to replace it with an application for ahighly stylized mark with an accompanying design.


1 See, e.g., Person’s Co., Ltd. v. Christman, 900 F.2d 1565, 1570-1571, 14U.S.P.Q.2d (BNA) 1477, 1481 (Fed. Cir. 1990) (“It is well settled that the TrademarkTrial and Appeal Board cannot adjudicate unfair competition issues in a cancellationor opposition proceeding. The Board’s function is to determine whether there is a rightto secure or to maintain a registration.”). See also: Carano v. Vina Concha Y ToroS.A., 67 U.S.P.Q.2d (BNA) 1149, 1151 (TTAB 2003) (“[T]he Board has no jurisdic-tion to determine copyright infringement.”); Enterprise Rent-A-Car Co v. AdvantageRent-A-Car Inc, 62 U.S.P.Q.2d (BNA) 1857, 1858 (TTAB 2002), aff’d 330 F.3d 1333(Fed. Cir.), cert. denied 540 U.S. 1089 (2003) (“[T]he Board has no jurisdiction todecide issues that arise under state dilution laws.”). See also, §1.05[2] supra.

§ 1.06 Considerations in When to Appear Before a Court Rather Than the Board

Choosing where to litigate a trademark dispute is a critical issuethat trademark owners and their counsel make in connection withenforcing and defending trademark rights. This section will assistpotential parties in understanding when they must go to a civil courtto resolve their dispute and when they may go to court to do so.When parties have options, this section will discuss factors that willhelp a party determine whether to start a civil lawsuit or an interpartes proceeding.

[1]—Factors That Compel a Civil Lawsuit

This section will discuss the three factors that compel a civil law-suit instead of an inter partes proceeding: the existence of non-trade-mark claims, the need for injunctive relief beyond the registration ofa mark, and the desire to obtain damages.

[a]—Non-Trademark Claims

While the sole focus of the Board on the registration of trademarkshas advantages, such focus also means that parties must go to civilcourt if their dispute involves more than the use and registration oftrademarks.1 For example, if a plaintiff wishes to challenge not only thebrand but also the drawings used on a competitor’s packaging, then itmust go to court to have its trademark and copyright claims heard. If aformer employee joins a competitor and brings with her not only theproposed brand name but also the ground-breaking technology neededto manufacture the product and the specifications on how to makeaccompanying product design, then a court would need to address herformer employer’s trademark, patent, and trade secrets claims. If acompany and its celebrity endorser disagree over whether the companyis permitted to register the celebrity’s name as its brand, then they must


2 See Lanham Act § 39(a); 15 U.S.C. § 1121 (“The district and territorial courtsof the United States shall have original jurisdiction . . . of all actions arising underthis chapter, without regard to the amount in controversy or to diversity or lack ofdiversity of the citizenship of the parties.”). See § 1.04 surpa for a discussion of thespecific Board proceedings.

3 See Lanham Act § 34(a); 15 U.S.C. § 1116(a).

“The several courts vested with jurisdiction of civil actions arising under thischapter shall have power to grant injunctions, according to the principles of equi-ty and upon such terms as the court may deem reasonable, to prevent the viola-tion of any right of the registrant of a mark registered in the Patent and Trade-mark Office or to prevent a violation under subsection (a), (c), or (d) of section1125 of this title.”

See also, Lanham Act § 43(c); 15 U.S.C. § 1125(c)(1).

“Injunctive relief. Subject to the principles of equity, the owner of a famousmark that is distinctive, inherently or through acquired distinctiveness, shall beentitled to an injunction against another person who, at any time after the owner’smark has become famous, commences use of a mark or trade name in commercethat is likely to cause dilution by blurring or dilution by tarnishment of the famousmark, regardless of the presence or absence of actual or likely confusion, of com-petition, or of actual economic injury.”4 See Lanham Act § 36; 15 U.S.C. § 1118.

go to civil court to resolve the resulting trademark, right of publicity,and breach of contract claims. While the list of potential additionalclaims is unlimited, the underlying principle is clear: the Board is notthe right forum for a party with a non-trademark claim.

[b]—Injunctive Relief—Other Than the Registration of aTrademark

Parties that seek injunctive relief except as relates to the registrationof a trademark must look beyond the Board. The reason is simple: theBoard lacks jurisdiction to grant such relief. Except for the aforemen-tioned specific Board proceedings, the Lanham Act gives federal dis-trict courts, not the Board, jurisdiction over claims arising under itsprovisions.2 Such jurisdiction includes the granting of injunctions inconnection with trademark infringement, false advertising, dilutionclaims, and cybersquatting of domain names.3 For example, if a bankwishes to stop its competitor from launching a media blitz to introducea competing service with an infringing name, it must go to court toseek a temporary restraining order or a preliminary injunction block-ing such usage. Likewise, if the competitor receives the bank’sdemand letter and wants to obtain a declaratory judgment that its markdoes not infringe, it must go to court for such relief. If a toy manu-facturer wants its competitor’s infringing product destroyed4 or wants


“In any action arising under this chapter, in which a violation of any right ofthe registrant of a mark registered in the Patent and Trademark Office, a violationunder section 1125(a) of this title, or a willful violation under section 1125(c) ofthis title, shall have been established, the court may order that all labels, signs,prints, packages, wrappers, receptacles, and advertisements in the possession ofthe defendant, bearing the registered mark or, in the case of a violation of section1125(a) of this title or a willful violation under section 1125(c) of this title, theword, term, name, symbol, device, combination thereof, designation, description,or representation that is the subject of the violation, or any reproduction, coun-terfeit, copy, or colorable imitation thereof, and all plates, molds, matrices, andother means of making the same, shall be delivered up and destroyed.”5 While a full discussion is beyond the scope of this treatise, there are specialized

procedures that owners of federally registered trademarks may use to keep infringinggoods from entering the United States in addition to obtaining such order from a fed-eral district or territorial court. The first is through recordal of the trademark regis-trations with United States Customs and subsequent United States Customs and Bor-der Patrol blockage of the entry of the infringing or counterfeiting goods into theUnited States. See: Lanham Act § 43(b); 15 U.S.C. § 1125 (“Any goods marked orlabeled in contravention of the provisions of this section shall not be imported intothe United States or admitted to entry at any customhouse of the United States”); 19U.S.C. § 1526(a) (“[I]t shall be unlawful to import into the United States any mer-chandise of foreign manufacture if such merchandise, or the label, sign, print, pack-age, wrapper, or receptacle, bears a trademark owned by a citizen of, or by a corpo-ration or association created or organized within, the United States, and registered inthe Patent and Trademark Office . . . and if a copy of the certificate of registrationof such trademark is filed with the Secretary of the Treasury”). The second is throughobtaining an exclusion order from the International Trade Commission under Section337 of the Tariff Act, 19 U.S.C. § 1337. See: Tariff Act § 337(a)(1)(C); 19 U.S.C. § 1337(a)(1)(C) (making unlawful the importation of articles into the United Statesthat “infringe a valid and enforceable United States trademark registered under the[Lanham Act]”); Tariff Act § 337(d); 19 U.S.C. § 1337(d) (granting the Internation-al Trade Commission the authority to issue orders that infringing articles “be exclud-ed from entry into the United States”).

corrective advertising to remedy its competitor’s false advertisingclaims, the manufacturer must obtain such relief from a court. If aluxury goods company wishes to have counterfeit goods seized froma flea market or prevented from entering the country, the Board can-not order such actions.5 Thus, a party seeking a court order govern-ing anything other than the registration of a mark must chose a forumother than the Board.

[c]—Monetary Relief

The final factor compelling a civil lawsuit rather than an interpartes proceeding is the desire for monetary relief. Except for theaforementioned specific Board proceedings, the Lanham Act givesfederal district courts, not the Board, jurisdiction over claims arising


6 See Lanham Act § 39(a); 15 U.S.C. § 1121 (“The district and territorial courtsof the United States shall have original jurisdiction . . . of all actions arising underthis chapter, without regard to the amount in controversy or to diversity or lack ofdiversity of the citizenship of the parties.”). See also, § 1.04 supra for a discussionof the specific Board proceedings.

7 See Lanham Act § 35(a); 15 U.S.C. § 1117(a).

“When a violation of any right of the registrant of a mark registered in thePatent and Trademark Office, a violation under section 1125(a) or (d) of this titleor a willful violation under section 1125(c) of this title, shall have been estab-lished in any civil action arising under this Act, the plaintiff shall be entitled, sub-ject to the provisions of sections 1111 and 1114 and subject to the principles ofequity, to recover (1) defendant’s profits, (2) any damages sustained by the plain-tiff, and (3) the costs of the action. . . . The court in exceptional cases may awardreasonable attorney fees to the prevailing party.” 8 See: Lanham Act § 35(a); 15 U.S.C. § 1117(a).

“In assessing damages the court may enter judgment, according to the cir-cumstances of the case, for any sum above the amount found as actual damages,not exceeding three times such amount. If the court shall find that the amount ofthe recovery based on profits is either inadequate or excessive the court may inits discretion enter judgment for such sum as the court shall find to be just,according to the circumstances of the case.”

Lanham Act § 35(b); 15 U.S.C. § 1117(b) (awarding treble profits and damagesplus attorney’s fees and prejudgment interest for certain violations involving coun-terfeit marks); Lanham Act § 35(c); 15 U.S.C. § 1117(c) (providing for statutorydamages of not less than $1,000 or more than $200,000 per counterfeit mark per typeof goods or services sold, offered for sale, or distributed, as the court considers justor not more than $2,000,000 per counterfeit mark if the use of the counterfeit markwas willful); Lanham Act § 35(d); 15 U.S.C. § 1117(d) (providing for statutory dam-ages of “not less than $1,000 and not more than $100,000 per domain name, as thecourt considers just” for cyber squatting violations under Section 43(d) of the Lan-ham Act and statutory damages of not more than $2,000,000 per counterfeit mark ifsuch violations are willful).

under its provisions.6 Such jurisdiction includes the ability to order anaward of defendant’s profits, plaintiff’s damages, costs, and attorney’sfees in exceptional cases.7 Under certain circumstances, a court maytreble the profits or damages award or grant prejudgment interest orstatutory damages.8 Thus, if an online retailer can quantify the damagessuffered from the launch of an infringing, rival site, or if a clothingmanufacturer wants to obtain statutory damages, prejudgment interestand attorney’s fees from a sophisticated counterfeiting operation, suchmonetary relief must come from a civil court and not from the Board.

[2]—Factors That Suggest a Civil Lawsuit

While these factors do not compel a civil lawsuit, the more of themthat are present, the more likely a litigant would prefer a civil lawsuitover an inter partes proceeding.


9 See Fed. R. Civ. P. 37(a)(5) (after the filing of a motion for an order compellingdisclosure or discovery, the court must give “an opportunity to be heard” to the party“whose conduct necessitated the motion”).

10 See, e.g.: Fed. R. Civ. P. 37(b) (providing for sanctions against a party that failsto comply with a court order such as holding a party in contempt); Fed. R. Civ. P.37(d) (allowing sanctions for orders listed in 37(b)(2)(A)(i)-(vi) as well as reasonableexpenses including attorney’s fees).

11 See, e.g., Washburn v. Morgado, 2005 WL 1030223 at *2 (N.D. Cal. May 3,2005) (upholding court’s decision to grant sanctions at the end of a status conferencehearing for defendants’ failure to comply with court’s standing orders).

12 See § 1.03[2]-[3] supra for a discussion of the Board’s inability to award suchrelief.

13 See Trademark Public Advisory Committee Fiscal Year 2011 Annual Report at19, http://www.uspto.gov/about/advisory/tpac/tpac_2011annualrpt.pdf (last visitedApril 7, 2012).

14 See, e.g.: Keymer v. Management Recruiters, International Inc., 169 F.3d 501,503, n.2 (8th Cir. 1999) (“when parallel litigation has been instituted in separatecourts,” priority is given to “the party who first establishes jurisdiction”); NorthwestAirlines, Inc. v. American Airlines, Inc., 989 F.2d 1002, 1005 (8th Cir. 1993) (the“prevailing standard is that in the absence of compelling circumstances, the first-filedrule should apply”).

[a]—Judicial Control

If a plaintiff believes that it may face a recalcitrant or otherwiseuncooperative defendant, there are advantages to civil litigation. First,if the defendant ignores a court order, it may well face an in-personhearing before the judge or magistrate to explain why the court’sorders have not been followed.9 Second, that judge or magistrate canaward costs and attorney’s fees or in extreme cases hold the defen-dant in civil contempt for failure to follow an order.10 Third, suchsanctions ruling can be made at the end of the hearing.11 None ofthese advantages applies to inter partes proceedings,12 where theaverage time for decisions on contested motions in fiscal year 2011is almost 9.6 weeks despite a fifteen percent decrease in the totalnumber of such motions.13

[b]—Ability to Select the Location of the Litigation

In federal court litigation, the plaintiff typically chooses the loca-tion for the litigation.14 This can be a significant benefit, particularlyif the plaintiff has a good reputation in the selected location, employsmany people there, or can point to lost sales or other damages it suf-fered there. This advantage will only apply to an inter partes pro-ceeding if the plaintiff is located in or near the District of Columbiaarea and the defendant is not. Moreover, because damages are not an


issue in Board proceedings, the benefit of being able to show localharm is not as great as in a court case.

[c]—Importance of Dispute/Costs

If the dispute is critical to the business of the plaintiff, then theplaintiff will be more likely to want the defendant to cease use of themark immediately and to want monetary and equitable relief based onthe infringement. In exchange, the plaintiff will be willing to spendmore money to obtain this result. Likewise, if the dispute is criticalto both parties, then the defendant may have a higher cost toleranceand may well have counterclaims to bring and demands for monetaryand equitable relief of its own. In such instances, the benefits of courtlitigation appear to outweigh its costs. If, however, the dispute is crit-ical to the business of the defendant but not the plaintiff, then theplaintiff should consider carefully whether starting an inter partesproceeding will cause the defendant to bring a federal court action fora declaratory judgment to resolve the matter.

[d]—Ability to Outspend Opponent

If one party cannot afford to litigate in court and the other partycan, then bringing a civil lawsuit can maximize its benefits whileminimizing its costs. By forcing an opponent to hire one or two setsof attorneys and to appear in person in a distant location to defenditself, a plaintiff may cause a defendant to default or to settle prior toformal service of a complaint where that defendant might otherwiseattempt to defend itself in an inter partes proceeding.


1 See United States Patent and Trademark Office, Trademark Manual of Examin-ing Procedure, (“TMEP”) § 1715 (8th ed. 2011).

2 See TMEP, N. 1 supra, § 1715.02(a). The most important component is the evi-dence submitted. If accepted, only the evidence will be forwarded to the examiningattorney. Id.

3 Id., § 1715.4 See id.5 See id., § 1715.04(b) (“A protestor . . . should generally receive the response

within 60 days of filing the letter.”).6 Id., § 1715.02(a).7 See United States Patent and Trademark Office, Trademark Manual of Examin-

ing Procedure, (“TMEP”) § 1715.02(b) (8th ed. 2011) (“The examining attorney is

§ 1.07 Considerations in When to File a Letter of Protest Rather Than Oppose

A letter of protest is an informal mechanism that a trademark ownermay use to prevent a competitor from registering its mark at the Unit-ed States Patent and Trademark Office (“USPTO”) or to impose somerequirement (such as a disclaimer or a change to a description ofgoods or services) on the resulting registration.1 With only a brief let-ter and attached evidence,2 a trademark owner may cause the substan-tive refusal of an application, such as on the basis of descriptiveness.If the letter of protest causes the USPTO to refuse registration of theapplication and the applicant either does not respond to the officeaction or does respond but cannot overcome the refusal, filing a letterof protest can accomplish the same result as a formal trademark oppo-sition before the Board at a fraction of the time and expense.

[1]—The Letter of Protest Process

The letter of protest process is straightforward and explained indetail in Section 1715 of the Trademark Manual of Examining Proce-dure (“TMEP”).3 The trademark owner sends a letter to the Office ofthe Deputy Commissioner for Trademark Examination Policy (“DeputyCommissioner”), accompanied by relevant evidence, explaining whyregistration should not occur or why a requirement is needed withrespect to the application.4 The Deputy Commissioner typically decidesa letter of protest within sixty days of its submission.5

If the letter of protest is filed before the relevant application is pub-lished for opposition, the Deputy Commissioner will grant the letter ofprotest if “the evidence is relevant and may support any reasonableground for refusal appropriate in ex parte examination.”6 If granted, therelevant evidence will be sent to the examining attorney, who will makean independent determination whether the evidence supports a refusal.7


required only to consider the evidence and make an independent determinationwhether to issue the requirement or refusal requested in the letter of protest.”).

8 See id., § 1715.03(a) (“[T]he letter of will be granted only where publication ofthe mark constituted clear error, because the evidence establishes a prima facie casefor refusal of registration.”).

9 See id., § 1715.03(d) (“If the USPTO grants a letter of protest filed after publi-cation, the examining attorney must issue the refusal or requirement, except in unusu-al circumstances.”). While the TMEP does not specify what the unusual circum-stances might be, the TMEP later refers to the examining attorney’s discovery ofadditional evidence as an unusual circumstance that would justify approval of theapplication after the grant of the letter of protest. See id.

10 Id., § 1715.01(a). For a discussion of priority under Section 44(d) of the Lan-ham Act, see id., §§ 1003.05, 1904.01(e).

11 See id., § 1715.06 (“If the Deputy Commissioner denies a letter of protest, theprotestor may pursue remedies otherwise available, such as an opposition proceed-ing, if the protestor complies with all relevant requirements and deadlines. Filing aletter of protest does not stay or extend the time for filing a notice of opposition.”).

If the letter of protest is filed within thirty days after the relevantapplication is published for opposition, the Deputy Commissionerwill only grant the letter of protest if it would be clear error not toconsider the evidence.8 If granted, the relevant evidence is sent to theexamining attorney and, except in unusual circumstances, he or shemust issue the refusal or the requirement.9

[2]—When to File a Letter of Protest

Although a letter of protest may be filed with respect to anyground on which the USPTO could refuse to register an application,the TMEP specifically mentions five such grounds: (1) descriptive-ness or genericness; (2) likelihood of confusion with one or moreprior United States trademark registrations or prior pending trademarkapplications; (3) the facts of the second ground plus there is pendinginfringement litigation between the trademark owner and the appli-cant concerning the applied-for mark; (4) the trademark owner’s reg-istered mark has been included within the description of goods andservices of the applied-for mark; and (5) likelihood of confusion witha subsequently filed application that qualifies for priority under Sec-tion 44(d) of the Lanham Act.10

If a trademark owner satisfies one of these grounds, that ownershould strongly consider filing a letter of protest as part of its trade-mark enforcement strategy. There are three factors that reinforce thisconclusion. First, the letter of protest is an additional remedy; a trade-mark owner may still oppose the application if its letter of protest isdenied and its notice of opposition is timely filed.11 Second, the deci-sion-makers for a letter of protest and an opposition are different, so


12 Indeed, the Board will not see the letter of protest because it does not becomepart of the official application file. See TMEP, N. 7 supra, §1715.04(a) (“letters ofprotest are not made an official part of the application record”).

13 See United States Patent and Trademark Office, Trademark Manual of Exam-ining Procedure, (“TMEP”) § 1715.01(a)(1) (8th ed. 2011) (“The evidence should beobjective, independent, and factual evidence that the examining attorney may use tosupport the suggested refusal. Personal opinions are subjective and may be self-serv-ing, and are not forwarded to the examining attorney.”).

14 See id., § 1715.04.15 See id., § 1715.01(b)(1) (“Earlier common-law use, state registrations, and

other claims based on evidence other than federal registrations and prior-pendingapplications for federal registration are not appropriate for presentation to examiningattorneys during ex parte examination.”).

the denial of a letter of protest will not taint the opposer in the eyesof the Board.12 Third, even if the letter of protest is denied or is grant-ed but not acted upon by the examining attorney, the evidence gath-ered will be needed in the trademark opposition.

[3]—When Not to File a Letter of Protest

The flip side of knowing when to file a letter of protest is know-ing when not to file a letter of protest. Broadly speaking, to succeedwith a letter of protest, a trademark owner must have credible third-party objective evidence to submit, not merely its own opinion orarguments.13 This evidence should be the same type that the examin-ing attorney would attach to a substantive refusal. For example, a suc-cessful letter of protest filed on grounds of descriptiveness shouldcontain third-party evidence of descriptiveness such as copies of dic-tionary definitions, scientific literature, trade journal articles, andcompetitor advertising, in each case showing descriptive use of theterm or terms that applicant seeks to register. If the only evidenceavailable is the trademark owner’s firm (but unsupportable) belief thatthe term ought to be descriptive, then that owner should expect its let-ter of protest to be denied.

In the case of a letter of protest based on likelihood of confusion,a trademark owner should submit evidence of its ownership of one ormore federal registrations or prior pending applications.14 Just as anexamining attorney will not refuse a trademark application based oncommon law trademark use or on ownership of foreign and UnitedStates state trademark registrations, corporate name registrations ordomain name registrations similarly the Deputy Commissioner willnot grant a letter of protest based on such evidence.15

If the basis for a letter of protest is a subjective dispute with anothertrademark owner, those arguments should be saved for an opposition.


16 See id., § 1715.01(b)(1)-(2).

Just as an examining attorney will not, during his or her examinationof an application, decide claims of fraud, disputes over ownership ofa mark, or challenges to the priority of a mark, the Deputy Commis-sioner will never grant a letter of protest based on such claims.16


1 See United States Patent and Trademark Office, Trademark Trial and AppealBoard Manual of Procedure, (“TBMP”) § 101.01 (3d ed., 1st rev., 2012) (“All pro-ceedings before the Trademark Trial and Appeal Board . . . are governed by the Lan-ham Trademark Act of 1946, as amended . . . 15 U.S.C. § 1051 et seq.”).

2 See: 37 C.F.R. §§ 2.2 et seq.; 37 C.F.R. §§ 7.1 et seq. For a more detailed dis-cussion of the Trademark Rules of Practice in inter partes proceedings, see Chapters2 through 4 infra.

3 See 37 C.F.R. §§ 3.1 et seq.4 See 37 C.F.R. §§ 6.1-6.4.5 TBMP, N. 1 supra, § 101.01.6 See: 37 C.F.R. § 2.116(a) (“Except as otherwise provided, and wherever applic-

able and appropriate, procedure and practice in inter partes proceedings shall be gov-erned by the Federal Rules of Civil Procedure.”); 37 C.F.R. § 2.120(a)(1) (“Wherev-er appropriate, the provisions of the Federal Rules of Civil Procedure relating todisclosure and discovery shall apply in opposition, cancellation, interference and con-current use registration proceedings except as otherwise provided in this section.”).

§ 1.08 What Governs Practice Before the Board

[1]—Lanham Act

The Lanham Act of 1946, as amended, governs all Board proceed-ings.1

[2]—Trademark Rules of Practice

The Trademark Rules of Practice, Parts 2 and 7 of Title 37 of theCode of Federal Regulations, implement the Lanham Act and furthergovern all Board proceedings.2 Part 3 of Title 37 of the Code of Fed-eral Regulations contains the rules related to trademark assignmentand recordal.3 Part 6 of Title 37 of the Code of Federal Regulationsdescribes the classification of goods and services under the LanhamAct.4 Part 10 of Title 37 of the Code of Federal Regulations containsthe Canons and Disciplinary Rules relating to representation of oth-ers, while Part 11 of Title 37 of the Code of Federal Regulationsincludes the rules governing disciplinary proceedings for practitionersbefore the Board. The rules governing procedure in inter partes pro-ceedings are adapted, in large part, from the Federal Rules of CivilProcedure, “with modifications due primarily to the administrativenature of Board proceedings.”5

[3]—Federal Rules of Civil Procedure and Federal Rules ofEvidence

Except where they conflict with the Trademark Rules, the FederalRules of Civil Procedure also govern inter partes proceedings beforethe Board.6 In addition to the Trademark Rules and the relevantFederal Rules of Civil Procedure, the other rules governing the


7 See 37 C.F.R. § 2.122(a) (“The rules of evidence for proceedings before theTrademark Trial and Appeal Board are the Federal Rules of Evidence, the relevantprovisions of the Federal Rules of Civil Procedure, the relevant provisions of Title28 of the United States Code, and the provisions of this Part of Title 37 of the Codeof Federal Regulations.”).

8 United States Patent and Trademark Office, Trademark Trial and Appeal BoardManual of Procedure, (“TBMP”) § 101.03 (3d ed., 1st rev., 2012). For a discussionof the impact of non-precedential Board decisions, see §§ 4.03[3], 9.06[5] infra.

9 See TBMP, N. 8 supra, “Introduction.”10 See id.11 See http://www.uspto.gov/trademarks/process/appeal/Preface_TBMP.jsp (last

viewed April 11, 2012).12 See United States Patent and Trademark Office, Trademark Trial and Appeal

Board Manual of Procedure, “Preface to the Second Edition” (2d ed. 2004). 13 See id. See United States Patent and Trademark Office, Trademark Trial and

Appeal Board Manual of Procedure, “Preface to the Third Edition” (3d ed. 2011).14 See United States Patent and Trademark Office, Trademark Trial and Appeal

Board Manual of Procedure, “Preface to Revision 1 of the Third Edition” (3d ed.,1st rev., 2012).

15 See id., “Introduction.”

admissibility of evidence are the Federal Rules of Evidence and therelevant provisions of Title 28 of the United States Code.7

[4]—Board and Federal Circuit Decisions

Precedential decisions of the Board, the Court of Appeals for theFederal Circuit and its predecessor the Court of Customs and PatentAppeals, the Director of the United States Patent and TrademarkOffice, and the Supreme Court are binding on the Board.8

[5]—Other Case Law

While not binding on Board decisions, the Board looks to trade-mark cases from the federal district and appellate courts for guidance,especially on issues where the Board has yet to rule.

[6]—Trademark Trial and Appeal Board Manual of Procedure(TBMP)

The Trademark Trial and Appeal Board Manual of Procedure(“TBMP”) is the United States Patent and Trademark Office’s manu-al for trademark practitioners litigating cases before the Board.9

While not binding on the Board, it describes current practice andprocedure, with citation to relevant sections of the Lanham Act, theCode of Federal Regulations, and case law.10 It is available bothonline11 and in print through private vendors. It was first published in1995.12 The Second Edition of the TBMP was published in 2003 andlast updated in 2004.13 The Third Edition was published in 2011, wasupdated in June 2012,14 and will be updated periodically.15


1 See http://ttabvue.uspto.gov/ttabvue/v (last visited April 7, 2012).2 See http://estta.uspto.gov/ (last visited April 7, 2012). For more information on

the electronic filing process, see Chapter 2 infra.3 See http://estta.uspto.gov/estta12-usermanual.pdf (last visited April 7, 2012).4 See http://www.uspto.gov/trademarks/process/appeal/index.jsp (last visited April

7, 2012). 5 See http://www.uspto.gov/trademarks/process/appeal/TTAB_New_Filings_an

d_Performance_Measures.jsp (last visited April 7, 2012).

§ 1.09 Other Resources in Board Practice

[1]—Board Electronic Records (TTABVUE)

TTABVUE is the electronic records inquiry and retrieval system ofthe Board.1 Using TTABVUE, it is possible to view a Board pro-ceeding file by entering the proceeding number, or to search for pro-ceedings by application number, registration number, mark, party, orcorrespondent. Both the docket sheet, which lists each entry in theproceeding, as well as the actual filings made by the parties and theBoard, may be viewed, printed, or downloaded. By accessing TTAB-VUE, a party can assess the litigation strategies and tendencies of itsopponent by viewing the history of and documents filed in prior interpartes proceedings.

[2]—Electronic Filing (ESTTA)

The Electronic System for Trademark Trials and Appeals, orESTTA, is the Board’s online filing system.2 The site also contains auser’s guide with step-by-step instructions on the filing process.3

[3]—Board Website

In addition to linking viewers to the Trademark Trial and AppealBoard Manual of Procedure, TTABVUE and ESTTA, the Board web-site contains standard documents and guidelines, charts of rulechanges, policies and procedures, hearing information, Board deci-sions, and links to other trademark-related sites.4 For parties seekinginformation on how long it takes the Board to take certain actions, thepage entitled “TTAB New Filings and Performance Measures” pro-vides this data and updates it on a quarterly basis.5

[4]—Trademark Manual of Examining Procedure (TMEP)

The Trademark Manual of Examining Procedure is the UnitedStates Patent and Trademark Office’s manual for trademark practi-tioners prosecuting applications before the Office. It describes the


6 See United States Patent and Trademark Office, Trademark Manual of Examin-ing Procedure, Foreword to the Eighth Edition (8th ed. 2011).

7 See http://tess2.uspto.gov/tmdb/tmep/ (last visited April 7, 2012).8 See http://tess2.uspto.gov/bin/gate.exe?f=tess&state=4007:5d8l0a.1.1 (last visit-

ed Oct. 20, 2012).9 See http://tsdr.uspto.gov/ (last visited April 9, 2012).10 See id.11 See http://thettablog.blogspot.com (last visited April 9, 2012).

United States Patent and Trademark Office’s practices and proceduresand outlines the procedures that Examining Attorneys are required orauthorized to follow in the examination of trademark applications.6 Itis available both online7 and in print through private vendors. Whilemany of its chapters will be of interest to an applicant in an ex parteappeal, Chapter 12, entitled “Substantive Examination of Applica-tions,” will be useful to all Board parties.

[5]—USPTO Online Trademark Search Tools

Using the United States Patent and Trademark Office website, aparty can find a wealth of information about a potential or actual oppo-nent. With the Trademark Electronic Search System (TESS), a partycan identify all active and inactive applications and registrations ownedby an opponent and can locate relevant third-party applications and reg-istrations.8 With Trademark Status and Document Retrieval (TSDR), aparty can both find updated status information about its opponent’s andthird parties’ trademark applications and registrations and access theprosecution files of those application and registrations.9 Once within anindividual TSDR record, a party can click on a button entitled “ViewProceeding” to determine if there are or have been any Board pro-ceedings involving the application or registration or click on a buttonentitled “View Assignment” to see if any assignment or related docu-ments have been recorded against the application or registration.10

[6]—Allen’s Trademark Digest

Allen’s Trademark Digest is a monthly print journal that analyzes,digests, and tracks published and unpublished decisions of the Boardand the Trademark Commissioner. It is particularly useful for index-ing decisions by topic, Trademark Rule, and Lanham Act section.

[7]—Blogs and Other Online Resources

While there are many trademark practitioners with blogs or whouse Twitter or other online communications mechanisms, one ofthe best-known and longest running of such sites is TTABlog.11 The


12 See http://ipmall.info/hosted_resources/ttab_decisions.asp (last visited April 9,2012).

University of New Hampshire School of Law, Franklin Pierce Centerfor Intellectual Property maintains a database of final Board decisionsfrom 1984 to 1996.12

introduction to the trademark trial and appeal...

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