The following is an edited transcript of my video 25 TTAB Tips.
Cases before the trademark trial and appeal board can be very complicated. There’s a set of procedures, rules, and case law that governs cases at the Trademark Trial and Appeal Board or TTAB, and following are 25 key terms or concepts that anyone getting involved in a TTAB case ought to know.
- The FOIA Reading Room, where you can search past decisions, read summaries, filter, and research other cases.
- The TTABlog, containing thousands of cases summarized from over the years from the appeal board.
- The timing and length involved in a TTAB case. They’re generally slow and long. A dispute with multiple parties can take 2-4 years.
- A hearing is optional but can be requested with a fee, and you want to know about the rules and why / when to think about a hearing.
- TTAB filing fees – know how much they are, and for what things.
- Written briefs —how long a brief can be and what goes into it, both the substance and procedure.
- The TBMP, which is the main guide that covers all of the procedures and rules for the appeal board.
- What is an appeal and when does it arise?
- What is a request for reconsideration that might be filed contemporaneously?
- What is a remand to the examiner and when might that apply?
- What does it mean that the record is locked on appeal and you can’t add new evidence?
- When does it apply that the appeal could be suspended, pending the possible cancellation of a registration or pending some other event that might be eligible for suspension of the appeal In an inter party’s case?
- What is an opposition versus a cancellation and what are the meanings of those terms?
- What are extensions of time to oppose and what are the requirements for them and how long do they last?
- Who has the burden of proof and persuasion for various elements in the case?
- What are the pleading requirements?
- What are the standing requirements (entitlement to a statutory cause of action)?
- How is discovery conducted and what are the elements and timing?
- When might a deposition take place and what are the rules for noticing and conducting a deposition (discovery or testimony)?
- What types of motions are available in a TTAB inter parties case? That could be motion to compel, motion for summary judgment, motion for extension of time with consent. Without consent, there’s a myriad of motions that can be filed.
- What is the protective order? What does that govern, how does it work, what does it say, what are the requirements, how could it be amended in certain circumstances?
- What is testimony and how does that work?
- What forms or types of evidence are acceptable as testimony is important to know?
- How do declarations work? When can they be used? How can they be used and why are they an effective tool and what things might they not be able to effectively cover.
- What is ACR (accelerated case resolution)?
