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)?

A trademark opposition is a formal dispute filed against a trademark application at the USPTO. Former USPTO examiner Erik Pelton discusses important details about these disputes in this video and explains the value of experience counsel.

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

A trademark opposition is a formal dispute filed against a trademark application at the USPTO. Former USPTO examiner Erik Pelton discusses important details on these disputes in this video and explains the value of experience counsel.

For more about trademark oppositions and my services, visit my website.