TTABulator

TTAB hearings can be important tools in a trademark dispute or appeal at the USPTO. I’ve watched dozens of hearings, and participated in many myself. Here are some key tips:

1. Know the rules of the Trademark Trial and Appeal Board (TTAB): the rules for evidence, for the case, and for the hearing. They’re very similar to the Federal Rules of Civil Procedure, but they have their own nuances and it’s important to know what those are.
2. Know the evidence of record in the case. Generally, I always prepare for the hearing by making a binder full of all the evidence in the case. At the hearing, I have the entire binder organized and tabbed with me so that if I need to refer to specific evidence in the record, I can show the judges that the evidence is tangibly in the record. Saying there’s evidence about a particular fact is one thing, knowing there’s evidence is better, but knowing there’s evidence and pointing directly to the page number of that evidence is far and away the best and most convincing.
3. Stand. With so many things on zoom or video, people have a tendency to sit at their desk. I strongly recommend investing in a standing desk. Standing has much better energy, better eye level and focus for the camera, and makes your performance while thinking on your feet that much better. When people are sitting, they tend to slouch, look down at their materials, and have lower energy. Standing up is a simple but key tip.
4. When to request a hearing: Request a hearing when you have something important to say about evidence that’s hard to explain in the brief, about the story of the party and the history of the case, about a new law issue that’s never been examined or decided before. When you have something to say, it’s worth doing a hearing and can only strengthen your advocacy for the client before the TTAB.

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.

1. The FOIA Reading Room, where you can search past decisions, read summaries, filter, and research other cases.
2. The TTABlog, containing thousands of cases summarized from over the years from the appeal board.
3. 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.
4. 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.
5. TTAB filing fees – know how much they are, and for what things.
6. Written briefs —how long a brief can be and what goes into it, both the substance and procedure.
7. The TBMP, which is the main guide that covers all of the procedures and rules for the appeal board.
8. What is an appeal and when does it arise?
9. What is a request for reconsideration that might be filed contemporaneously?
10. What is a remand to the examiner and when might that apply?
11. What does it mean that the record is locked on appeal and you can’t add new evidence?
12. 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?
13. What is an opposition versus a cancellation and what are the meanings of those terms?
14. What are extensions of time to oppose and what are the requirements for them and how long do they last?
15. Who has the burden of proof and persuasion for various elements in the case?
16. What are the pleading requirements?
17. What are the standing requirements (entitlement to a statutory cause of action)?
18. How is discovery conducted and what are the elements and timing?
19. When might a deposition take place and what are the rules for noticing and conducting a deposition (discovery or testimony)?
20. 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.
21. 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?
22. What is testimony and how does that work?
23. What forms or types of evidence are acceptable as testimony is important to know?
24. 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.
25. What is ACR (accelerated case resolution)?