Guide to Changes in the Trademark Trial and Appeal Board Manual of Procedure (TBMP)

In May 2011, the Trademark Trial and Appeal Board (“TTAB”) released the long-awaited 3rd Edition of its Trademark Trial and Appeal Board Manual of Procedure (“TBMP”).[1] This guide summarizes and highlights the most significant changes included in the 3rd Edition of the TBMP, providing particular attention to new and significantly revised sections.

The TBMP was created to “serve as a comprehensive and ready resource for practitioners.”[2] Though the TBMP is neither a binding authority nor a substitute for controlling statutes, rules, or decisional law, it contains invaluable depth and details regarding the Board’s practice and procedure.

The 3rd Edition provides a well deserved update of the Manual. Following the release of the 1st Edition in 1995, the 2nd Edition of the TBMP was published on May 1, 2003 and revised once, in March of 2004. During the years between the 2nd and 3rd Editions, the TTAB issued more than 300 precedential decisions as well as a significant package of rules changes that took effect for proceedings commenced on or after November 1, 2007. The 3rd Edition incorporates amendments to the Trademark Rules of Practice, the Trademark Act, and the applicable Federal Rules as of November 15, 2010. Many of the most significant changes in the 3rd Edition relate to five topics:

• 2007 changes to the Trademark Rules of Practice;
• using ESSTA for electronic filing of TTAB documents;
• Accelerated Case Resolution (“ACR”) options;
• expanded precedents concerning Madrid Protocol applications; and
• expanded details regarding concurrent use proceedings.

At more than 1,300 pages, the 3rd Edition is the most comprehensive version of the TBMP to date.  Its creation was a massive undertaking lasting several years and requiring the efforts of many Administrative Trademark Judges and other staff members. The TTAB has indicated its intent to provide more frequent updates in the future. 

In this 24 page guide, we have summarized most of the additions and changes included in the 3rd Edition.  We have underlined or otherwise emphasized changes that we consider to be particularly significant or interesting. Sections that were unchanged in the 3rd Edition have been omitted from this guide. Though many of these changes may already be well-known to frequent TTAB practitioners, we expect that a quick review of this document will bring to light several previously unknown or long-overlooked changes, even among the most experienced TTAB veterans.