TTABulator

I have received multiple requests and inquires related to the materials I have shared about TTAB hearing and what to expect at them and how to prepare. My firm and I have argued dozens of cases before the Trademark Trial and Appeal Board. Here are some details about the mechanics, strategies, and tips surrounding oral hearings in Trademark Trial and Appeal Board (TTAB) cases of both ex parte appeals and inter partes proceedings.

Mechanics of a TTAB Hearing

• Ex Parte Appeal (appeal of a Final Office Action refusal to the TTAB):
  • Timing: An applicant must request a hearing within 10 days after Applicant’s time to file a Reply Brief. 37 C.F.R. § 2.142(e)(1); TBMP § 1216.
    • Board will contact parties about choosing a date; usually takes 2-3 months to schedule.
  • Costs:
    • There are no USPTO filing fees associated with a hearing.
    • Costs to consider – time for preparation, travel, etc.
  • Hearing details:
    • Generally, in an ex parte hearing, an applicant receives 20 minutes for his/her argument and the Trademark Examiner receives 10 minutes. 37 C.F.R. § 2.142(e)(3); TBMP § 1216.
    • Before a panel of three judges.
    • Applicant, Examiner Attorney and/or judges may appear on video.
    • Generally held at USPTO headquarters in Alexandria, Virginia; but may be scheduled during conferences or special events off site.
  • Strategies: Pros and Cons
    • Strong vs weak arguments
    • Complex cases
    • Delaying a decision
  • Evidentiary record: cannot introduce new evidence or new arguments at hearing.

• Inter Partes Proceeding (Opposition or Cancellation)
  • Timing: Either party may request a hearing within 10 days after the final reply brief is due. 37 C.F.R. § 2.126(a); 37 C.F.R. § 2.129(a); TBMP § 802.02.
    • Board will contact parties about choosing a date; usually takes 2-3 months to schedule.
  • Costs:
    • There are no USPTO filing fees associated with a hearing.
    • Costs to consider – time for preparation, travel, etc.
  • Hearing details:
    • Generally, each party is allowed 30 minutes for its oral argument. The plaintiff may reserve part of its 30 minutes for rebuttal. 37 C.F.R. § 2.129(a); TBMP § 802.05.
    • No additional time for oral argument is allotted for counterclaims or consolidated proceedings. Accordingly, if there is a counterclaim, the defendant, as the plaintiff in the counterclaim, may also reserve part of its 30 minutes for rebuttal on the counterclaim. TBMP § 802.05.
    • Before a panel of three judges.
    • Parties and/or judges may appear on video.
    • If one party elects not to appear, hearing will proceed anyways.
    • Board does not like to change hearing dates once set, must show good cause. 37 C.F.R. § 2.129(b); TBMP § 802.03.

Practical Tips

• What is the order of the argument?
  • The applicant will give his/her argument, followed by an argument from the Trademark Examiner and then the applicant has a rebuttal (must be reserved in advance).
  • In an inter partes hearing, both the plaintiff and the defendant receive 30 minutes for their argument. TBMP § 802.05.
• What should you bring to the hearing?
  • Notepad, pens, Hearing Binder, ID.
  • Visual displays can be a powerful tool (when appropriate).
    • Anything displayed must be in the record.
    • Generally, it is a courtesy to advise the other side that you are intending to use one.
  • How should you prepare for the hearing?
    • Outline all of your argument (especially helpful if you freeze during one of the questions; it helps remind you what issues you need to cover).
    • Practice with your associate/partner about what you will say to the court.
    • Prepare a list of questions contrary to your argument that the judges may ask you.
    • Prepare a list of responses to those questions.
    • Research each of the judges to find out more about their backgrounds and past decisions.
    • Know the record in detail (and have a copy for presentation).
  • How should you structure your argument?
    • Always include an introduction and conclusion.
    • In the introduction, use a roadmap to lay out your 2-3 main points.
      • A judge may ask you right after the roadmap to go directly to a specific point (i.e. point number 2), so it’s a good way to keep yourself organized in responding to questions.
    • Recognize that the TTAB is bound especially by precedent form the Court of Appeals for the Federal Circuit (CAFC).
    • Research all the main cases cited by the other side in their Brief.
  • What hearing details should you be aware of?
    • How much time you have for your argument.
    • How much time opposing counsel has for the argument.
    • Whether you can reserve time for rebuttal if you are the plaintiff.
      • If you are the plaintiff, make sure you reserve time for rebuttal in your opening sentence to the court.
    • How to use your time do when opposing counsel is speaking?
      • Look for answers to questions you left unanswered with the judges or that you could not find in the record.
      • Take notes about the other side’s argument and find ways to undermine their argument when it is your turn to speak if ou get a rebuttal
    • What is the scope of rebuttal?
      • During the rebuttal, the applicant is permitted to take testimony and offer documents, but such evidence must be narrowly focused on issues that were raised by the examining attorney in his/her oral argument. TBMP § 703.01(m).
    • View a live hearing in advance if it is your first time, so be more familiar with the setting and process.
    • Day of hearing:
      • Arrive early.
      • Have a brief outline, but be prepared for many questions.
      • Have entire record accessible and handy.
      • Everyone in the courtroom is to rise when Judges enter and leave.
      • Expect that there maybe others present to view the argument, as they are open to the public.

Gauging the Judges

• How should you address the court?
  • “Your Honor.” “May it please the Court.”
  • Do not interrupt the judge or opposing counsel.
  • Watch your gestures and body language, especially when addressing the court and hearing the opposing party’s argument.  Specifically, do not show signs that you do not agree with the opposing party because the judges take notice.
  • Be engaged and respectful.
• Gaining and keeping the attention of the court during the oral argument
  • Keep eye contact with the judges and gauge their impressions, thoughts, and gestures during your argument.
  • When answering questions, be short and to the point.
  • Listen carefully to the questions asked by the court. Do not avoid or delay in answering a judge’s question.  When answering the questions, provide a clear and direct response, if you do not provide one, they will keep reminding you that you failed to answer their question.
  • When appropriate, use colorful analogies and hypotheticals to support your arguments.
• How do you peak a judge’s interest in a topic?
  • Research past decisions by each judge, so you can anticipate what facts and laws interest them the most about your case.
  • Cite to specific places in the record when possible.
  • Cite to specific precedent when possible.
• How do you approach a difficult question?
  • Take a second to pause and gather your thoughts.
  • Formulate your response in your head.
  • Attempt to steer the answer to part of your prepared outline/argument.
  • Know relevant case law that supports and hurts your arguments. Be prepared to argue why a related precedential case should or should not apply to the instant case.
• Prepare for handling a situation where the judges are aggressively attacking an argument.
  • Know when to back off a topic/point without conceding that you are wrong.
  • Know when to admit that you are wrong about a particular issue.
  • Recognize that sometimes even when attacking they may be seeking to frame the issues to support your overall claims.
• What can you gauge from a judge’s question?
  • The topic of most interest to a judge.
  • Not all questions are hostile. Sometimes a judge asks a question with the intent to persuade a colleague and/or in an effort to assist counsel to strengthen a position.
• What is a common question asked by the judges?
  • Judges like to ask hypotheticals, such as “what would it mean if I found in your favor” or “explain what cases/marks will be governed by the new rule.”
• Cite to and explain the record where needed.
  • Generally, the judges will have read the briefs but will not have read the record and will therefore have questions about what is in the record and what is not.
  • Be exact when you are stating dates, times, and places.
  • Mastering the record establishes credibility with the panel and allows you to emphasize the best parts of the record in response to the Board’s questions.

General Hearing Etiquette

• Turn your mobile phone on silent when entering the courtroom.
• Dress appropriately.
• Appear confident. Body language and facial expression are an important part of the entire presentation.
• Do not use first names when addressing anyone in the courtroom.
• It is okay to admit that you do not know an answer. You should admit that you do not know something, rather than make up an answer for the sake of answering a question.
• If you do not understand the question, ask for clarification.
• Do not talk about the case, the judges, opposing counsel, etc. in the bathroom, elevator, or any common areas of the courthouse. People can and will often times overhear you.

outside of a January, 2019 TTAB hearing