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What to expect at a TTAB hearing

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

 

 

What is a trademark opposition at the TTAB (video)

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.

 

4imprint

 

Trademark Trial and Appeal Board docket calendar calculator

The docket of a TTAB Opposition or Cancellation is complicated. There are many dates and deadlines involved, and they are connected to each other. Some are listed in the institution order, but several key days are not.

*Disclaimer: This is a guideline only. As of November 2018. Calculate and check all docket dates on your own, and compare with TTAB’s initial docketing order, and the current rules, for any particular proceeding(s). Also note that counter-claims will add certain deadlines and periods not in this list.

TTAB Docket Event Days from Beginning Date of TTAB Filing Days from Previous TTAB Docket Event
Opposition / Cancellation Filed 0
Answer Due 40 40
Deadline to Request Board Participation in Discovery Conference 60 20
Discovery Conference Deadline 70 10
Discovery Opens 70
Deadline to File A Motion for Sanctions Re: Discovery Conference 99 29
Initial Disclosures Due 100 1
Deadline to Serve Discovery – 31 days prior to close of Discovery period 219 119
Expert Disclosures Due 220 1
Discovery Closes 250 30
Rebuttal Expert Disclosures Due 250
Deadline to File Motion to Compel Expert Disclosures 250
Plaintiff’s Pre-Trial Disclosures Due 295 45
Deadline For filing MSJ or Motion to Compel Discovery 309 14
Plaintiff’s Testimony Period Opens 310 1
Plaintiff’s Testimony Period Closes 340 30
Defendant’s Pre-Trial Disclosures Due 355 15
Defendant’s Testimony Opens 370 15
Defendant’s Testimony Closes 400 30
Plaintiff’s Rebuttal Disclosures Due 415 15
Plaintiff’s Rebuttal Period Opens 430 15
Plaintiff’s Rebuttal Period Closes 445 15
Plaintiff’s Trial Brief Due 505 60
Defendant’s Trial Brief Due 535 30
Plaintiff’s Rebuttal Trial Brief Due 550 15
Deadline to Request Oral Hearing 560 10

A very useful tool for calculated what date these deadlines fall on is timeanddate.com.

The docket calculator is just one of the many items (more than 100 samples docs) from Trademark Trial and Appeal Board (TTAB) Proceedings, including pleadings, motions, briefs, discovery, resolutions, and much more, included in my TTAB WorkbookClick here to purchase workbook ($597).

In addition, the 2.5 hours TTABulous course features Erik Pelton sharing experience from nearly 20 years and dozens of TTAB cases. Click here for more information and a syllabusClick here to purchase replay ($497).

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What is a Trademark Opposition (podcast)

In this podcast, attorney Erik M Pelton discusses the Trademark Opposition process at the USPTO’s Trademark Trial and Appeal Board.

Listen to this podcast and discover what it is and how you should you handle it.

Play: What is a trademark opposition?

For more of the Tricks of the Trade(mark) podcast, click here.

Pelton_iTunesTricks_1

New TTAB Workbook now available

I have recently published a workbook featuring more than 100 sample documents from Trademark Trial and Appeal Board (TTAB) Proceedings, including pleadings, motions, briefs, discovery, resolutions, and much more. I am not aware of any other resource like it. These template are a useful resource for any practitioner, especially if handling one of your your first TTAB cases.

Pelton_TTAB_Cover (1).jpg

TTABulous webinar replay now available

Trademark oppositions and cancellations are quite different from applications and office actions, even if they share much of the same body of law. The procedures, deadlines, dockets, rules, and writing styles are all different. If the very thought of a Notice of Opposition or Petition for Cancellation makes you nervous, this is the class for you. Whether you have never handled a TTAB case, or have handled a few but would like to learn the process in more depth, this course will deliver including, templates for pleadings, motions, and discovery.

The 2.5 hours TTABulous course features Erik Pelton sharing experience from nearly 20 years and dozens of TTAB cases.

  • Click here for more information and a syllabus.
  • Click here to purchase replay ($497)
  • Click here to purchase workbook ($597) – This unique TTAB workbook features more than 150 templates and samples covering pleadings, motions, discovery, testimony, case resolution, and much more. (You can use image of the workbook cover please – attached)

TTABulous2

Testimonials for Erik and Sonia’s courses:

  • The course was great and came at the right time for me as I am adding more and more trademark work to my core patent practice. The material answered directly some simple practical questions I had – e.g., how to retrieve only registered live marks in a search and downloading multiple records for evidence – and also provided valuable depth to legal arguments for traversing refusals. Kudos to Sonia and Erik! ” — BETSY DOWD
  • I just wanted to reach out and say thanks. I purchased your Office Action Boot Camp. You and Erik absolutely crushed it. The info was so helpful and actionable.”  — JOEY VITALE
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