The audio portion of the conference may be accessed via the telephone or by using your computer's speakers. Please refer to the instructions emailed to registrants for additional information. If you have any questions, please contact Customer Service at 1-800-926-7926 ext. 10. Presenting a live 90-minute webinar with interactive Q&A Trademark Opposition and Cancellation Proceedings at the TTAB Today’s faculty features: 12pm Eastern | 11am Central | 10am Mountain | 9am Pacific TUESDAY, DECEMBER 12, 2017 Stephen R. Baird, Shareholder, Winthrop & Weinstine, Minneapolis Jonathan Hudis, Partner, Quarles & Brady, Washington, D.C. Linda K. McLeod, Partner, Kelly IP, Washington, D.C.
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5
Linda McLeod
Effective Date: January 14, 2017
• Miscellaneous Changes to Trademark Trial and
Appeal Board Rules of Practice, 81 Fed. Reg.
69950 (Oct. 7, 2016) (codified 37 C.F.R. pt. 2).
– Effective to all newly filed and pending TTAB
cases as of January 14, 2017.
6
ESTTA Filing Required
• All submissions must be filed through ESTTA,
except in exceptional circumstances or
technical difficulties.
(§§ 2.101, 2.102, 2.106, 2.111, 2.114, 2.121,
2.123, 2.126, 2.190 and 2.191).
7
ESTTA Filing Required • EOT, NOO, Petition to Cancel, and Answers filed on paper
must be accompanied by petition to Director and fee,
including verified facts showing that extraordinary
circumstances or technical difficulties exist. (§§ 2.101(b)(2);
2.102(a)(1); 2.111(c)(2); 2.114(b)(1); 2.146; 81 Fed. Reg. at
69966)).
• Paper filings not accompanied by petition will not be
considered. (81 Fed. Reg. at 69966).
• All other filings on paper before TTAB must include specific
facts detailing inability to file by ESTTA, rather than mere
conclusory statements.
• Paper filings accepted unless TTAB indicates otherwise.
8
ESTTA Filing Required
• What constitutes exceptional circumstances or
technical difficulties?
– “technical problems at the filer’s location or with
the filer’s systems….”
– “impact of technical problems varies depending on
the specific facts….”
– “the assessment [of extraordinary circumstances]
would depend on the specific facts….”
– “address particular situations on a case-by-case
basis as they arise….” (81 Fed. Reg. at 69966-
67).
9
Paper Filing - Technical Problems
• ESTTA is unavailable (81 Fed. Reg. at 69966)
– USPTO will cross-check time and duration of any
asserted ESTTA outage to confirm unavailability
– Check USPTO System Status page/TTAB Outage
page
• Technical problems at ESTTA filer’s end
– Must describe problem in detail
– DFC Expo v. Coyle, 121 USPQ2d 1903 (TTAB
2017) (App. #87086860) (Unsuccessful paper filing).
10
DFC Expo v. Coyle, 121 USPQ2d 1903 (TTAB 2017)
• Potential Opposer - technical problems
• February 6, 2017, NOO Deadline
• February 6, 2017, Potential Opposer filed NOO in paper
with cover letter, but without Petition to Director or Fee
• February 9, 2017, NOO paper received by USPTO
• Untimely and improper paper NOO rejected by TTAB
11
Paper Filing – Extraordinary Circumstances
• Detailed facts and accompanying evidence
– Disasters
Fire
Hurricanes
Snowstorms
– Extended power outages
– Medical emergencies
– TTAB/Director cannot waive or suspend statutory
deadlines or requirements of Trademark Act
12
EOT & NOO Against 66(a) Applications
• EOT & NOO against 66(a) Madrid application
must be filed through ESTTA, with no
exceptions. (§ 2.101(b)(3); § 2.102(a)(1)).
– Hunt Control Systems Inc. v. Koninklijke Philips
Electronics N.V., 98 USPQ2d 1558 (TTAB
2011).
13
TTAB to Serve Complaint
• OPPOSITION served on attorney, domestic
representative, or applicant (if no attorney or
domestic representative). (§ 2.105(c)(1)-(3)).
– By email or correspondence address of record
• CANCELLATION served on the party shown by the
records of the Office to be the current owner of the
registration(s) sought to be cancelled or domestic
representative. (§ 2.113(c)(1)-(2)).
– By email or correspondence address of record
14
TTAB Institution Notice
• Web link or Web address to access the
electronic proceeding record, constitutes
service of complaint. (§§ 2.105(a); 2.113(a)).
• Undeliverable Notice = Notice in Official
Gazette. (§ 2.118).
15
Content and Amending NOO
• ESTTA requires opposer to select relevant grounds
for opposition. The required accompanying
statement (the complaint) supports and explains
the grounds for oppositions against applications
under Sections 1 and 44. (§ 2.104(a) and (c))
• NOO against Section 66(a) Madrid application is
limited to the goods, services, and grounds set forth
in the ESTTA cover sheet. (§ 2.107(a) and (b)).
16
Content and Amending NOO
• Opposition against Section1 and 44 applications
cannot be amended to add goods or services
opposed, or to add joint opposer after the close of
the time period for filing an opposition, including
any extension of time. (§ 2.107(a) and (b)).
– Motion to amend to add grounds can be filed under Fed. R. Civ. P. 15.
• Opposition against Section 66(a) application cannot
be amended to add grounds, goods or services, or to
add a joint opposer after filing. (§ 2.107(a) and (b)).
17
Content of Petition to Cancel
• Petition to cancel must… “indicate, to the best of
petitioner’s knowledge, the name and address, and
a current email address(es), of the current owner of
the registration.” (§ 2.112(a)).
• TTAB encourages plaintiffs to provide information
about any new owner of the registration, domestic
representatives, and current contact information for
attorneys, and any contact information for the
designated representative for registrations under
66(a) of the Act.
18
Pleaded Registration Issues
• Pleaded registration(s) received in evidence and made of record if NOO or petition to cancel accompanied by:
– Original or photocopy of registration prepared and issued by Office showing current status and title.
−Current copy of information from the electronic database records of the Office showing current status and title. (§ 2.122(d)(1)). −Photocopy of registration attached to complaint insufficient. See
Sterling Jewelers Inc. v. Romance & Co. (TTAB 2014)
−Entering registration numbers in ESTTA alone insufficient. See
devoid of “further factual enhancement” to support
claims.
• More than “[t]hreadbare recitals of the elements of a
cause of action, supported by mere conclusory
statements” to state a claim plausible on its face.
– Fed. R. Civ. P. 8(a)(2).
– Ashcroft v. Iqbal, 556 U.S. 662(2009); Bell Atl.
Corp. v. Twombly, 550 U.S. 544 (2007).
26
27
28
Any person who believes he is or will be damaged
by registration, i.e., one who has "real interest" in
the proceeding and a "reasonable" basis for his
belief of damage.
Ritchie v. Simpson, 50 USPQ2d 1023 (Fed. Cir. 1999)
Joseph Phelps Vineyards, LLC v. Fairmont
Holdings, LLC (Fed. Cir. 2017)
v
29
30
31
Couture v. Playdom, Inc., 778 F.3d 1379
“[I]n order for an applicant to meet the use requirement,
there must be an open and notorious public offering of the
services to those for whom the services are intended.”
“Without question, advertising or publicizing a service that
the applicant intends to perform in the future will not
support registration”; the advertising must instead “relate
to an existing service which has already been offered to
the public.”
“rendering services requires actual provision of services.”
– Playdom, 778 F.3d at 1381.
32
Christian Faith Fellowship v. Adidas AG, (Fed. Cir. 2016)
Appeal from TTAB order sustaining Adidas claim
that Church’s February 2005 sale of two hats to
one out-of-state party to be de minimis and not
sufficient to satisfy the "use in commerce"
standard under the Lanham Act.
33
Christian Faith Fellowship v. Adidas AG
• Federal Circuit reversed TTAB:
– "[T]he Church’s sale of two ‘ADD A ZERO’-
marked hats to an out-of-state resident is
regulable by Congress under the Commerce
Clause and, therefore, constitutes ‘use in
commerce’ under the Lanham Act."
– Transaction, taken in aggregate, would cause a
substantial effect on interstate commerce.
– There is no de minimis exception to the use in
commerce requirement.
34
• Applicant must have a bona fide intent to use
mark in commerce as of the filing date of
application under Section 1(b)
• What is a “bona fide intent”?
– Not merely to reserve a mark
– Objective evidence of bona fide/good faith intent
to use mark
– Evidence of on-going effort to make use of mark
in commerce
35
Lack of Bona Fide Intent
“…the absence of any documentary evidence on the part of an applicant regarding such intent is sufficient to prove that the applicant lacks a bona fide intention to use its mark in commerce”
-Commodore Elecs. v. CBM Kabushiki Kaisha (TTAB 1993)
36
Grounds – Lack of Bona Fide Intent
Heineken Asia Pacific Pte. Ltd. v. Claypool
• Lack of bona fide intent to use sustained on MSJ.
• What were Your Pleaded Grounds for Opposition/Cancellation?
• What were Your Pleaded Denials/Defenses/Counterclaims?
– Did Evidence Obtained During Discovery Suggest a New Ground/Defense?
– Do you need to Amend Your Pleadings?
– The Board will only consider claims that were pled or tried by implied consent. UVeritech, Inc. v. Amax Lighting, Inc., 115 U.S.P.Q.2d 1242 (T.T.A.B. 2015).
– Beth A. Chapman, Tips from the TTAB: Amending Pleadings: The Right Stuff, 81 Trademark Rep. 302 (1991).
WHAT TO DO BEFORE TRIAL
68
• Did the Board issue any Useful Discovery Orders during the Discovery Period?
• Do your Initial Disclosures need Amending? – Fed. R. Civ. P. 26(a)(1)(A)(i), (ii), 26(e). – Trademark Rules 2.120(a)(1), (a)(3).
• Do your Discovery Responses need Amending? – Fed. R. Civ. P. 26(e), 33, 34, 36. – Trademark Rules 2.120(d), (e), (i).
• Preclusion of Evidence due to Unfair Surprise. – Great Seats, Inc. v. Great Seats, Ltd., 100 U.S.P.Q.2d 1323 (T.T.A.B. 2011). – Spier Wines (PTY) Ltd. v. Shepher, 105 U.S.P.Q.2d 1239 (T.T.A.B. 2012).
USPQ2d 1239 (TTAB 2012).
WHAT TO DO BEFORE TRIAL
69
→ Instructive Note re Amending Notice of Opposition
• The Grounds for Opposition must be included in the ESTTA cover sheet and an accompanying statement supporting and explaining those grounds.
• The grounds, goods, and services in an opposition against an Application filed under Trademark Act Sections 1 or 44 are not limited to the ESTTA cover sheet—and can be later amended pursuant to Fed. R. Civ. P. 15.
• The grounds, goods, and services in an opposition against a Madrid (Trademark Act Section 66(a)) Application are limited to those set forth in the ESTTA cover sheet—and cannot be later amended.
– Trademark Rules 2.104(a), (c), 2.107(a), (b).
WHAT TO DO BEFORE TRIAL
70
• Stipulations – Many of the Board’s Technical Requirements can be By-Passed by the Parties’ Written Agreement, filed with and approved by the Board.
– Stipulation to Certain Facts. See Fiserv, Inc. v. Elec. Transaction Sys. Corp., 113 U.S.P.Q.2d 1913 (T.T.A.B. 2015).
– Stipulation to Manner of Introducing Evidence (Documents or Testimony). See N.Y. Yankees P'ship v. IET Prods. and Servs., Inc., 114 U.S.P.Q.2d 1497 (T.T.A.B. 2015).
– Stipulation to Admissibility of Certain Evidence. – Trademark Rules 2.120(k)(3)(ii), 2.121(a), (c), (d), 2.122(a), 2.123(b), (e).
• Stipulations should be Considered well before the Opening of Testimony.
– See Ballet Tech Found. Inc. v. Joyce Theater Found. Inc., 89 U.S.P.Q.2d 1262 (T.T.A.B. 2008), judgment vacated, 2013 WL 6199539 (T.T.A.B. 2013).
WHAT TO DO BEFORE TRIAL
71
• What is a “Notice of Reliance” ?
– Essentially, it is a transmittal cover sheet type pleading that serves to tell the Board and the adverse party that offering party intends to “rely” on certain self-authenticating types of documentary materials, where introduction by way of a deposition is unnecessary.
– The Notice must identify the relevance of the material offered, and associate it to one or more issues in the proceeding. Trademark Rule 2.122(g); Barclays Capital Inc. v. Tiger Lilly Ventures Ltd., 124 U.S.P.Q.2d 1160 (T.T.A.B. 2017).
– Life Zone Inc. v. Middleman Grp. Inc., 87 U.S.P.Q.2d 1953 (T.T.A.B. 2008) (listing limited categories of materials that may be submitted under Notice of Reliance).
• Examples: An Adverse Party's Interrogatory Answers, Admissions, Discovery
Deposition Transcripts and Exhibits, and Initial Disclosures. Trademark Rule 2.120(k).
• Examples: Status-and-title copy of party’s registration, official records and printed
publications. Trademark Rules 2.122(d), (e).
MAKING THE FRUITS OF DISCOVERY OF
RECORD
72
• Interrogatory Answers and Admissions – Notice of Reliance Evidence.
• Need Not (and Should Not) Use All Answers. • Can Include Documents Made Part of Answer(s). • See Boi Na Braza, LLC v. Terra Sul Corp., 110 U.S.P.Q.2d 1386 (T.T.A.B. 2014).
• Admissions and Partial Admissions Only. • Denials Inadmissible: Turdin v. Trilobite, Ltd., 109 U.S.P.Q.2d 1473 (T.T.A.B.
2014); Life Zone Inc. v. Middleman Grp. Inc., 87 U.S.P.Q.2d 1953 (T.T.A.B. 2008).
• Need Not (and Should Not) Use All Responses.
MAKING THE FRUITS OF DISCOVERY OF
RECORD
73
• Discovery Deposition Transcripts and Exhibits, and Disclosures of Adverse Party – Notice of Reliance Evidence.
– Trademark Rule 2.120(k).
– Discovery Deposition Transcripts and Exhibits.
• Portions of Transcript and Those Exhibits to be Relied Upon. • Need Not (and Should Not) Use Entire Transcript or All
Exhibits.
– Disclosures.
• Need Not (and Should Not) Use All Disclosed Information. • Does not include documents disclosed by adversary.
MAKING THE FRUITS OF DISCOVERY OF
RECORD
74
• Adverse Party Can Supplement When Fairness Requires.
– Trademark Rule 2.120(k)(4). – Explanation for Supplementation Required: Bayer Consumer Care
AG v. Belmora LLC, 110 U.S.P.Q.2d 1623 (T.T.A.B. 2014), rev'd on other grounds, 84 F. Supp. 3d 490 (E.D. Va. 2015), vacated, 819 F.3d 697 (4th Cir. 2016); Hiraga v. Arena, 90 U.S.P.Q.2d 1102 (T.T.A.B. 2009).
• Objections to Improper Introduction of Evidence are Waived if Not Timely Asserted.
– L’Oreal v. Marcon, 102 U.S.P.Q.2d 1434 (T.T.A.B. 2012). – Apollo Med. Extrusion Techn., Inc. v. Med. Extrusion Techn., Inc.,
123 U.S.P.Q.2d 1844 (T.T.A.B. 2017).
MAKING THE FRUITS OF DISCOVERY OF
RECORD
75
• Documents and Document Responses.
– Generally, documents produced by an adverse party through Initial Disclosures or through a Fed. R. Civ. P. 34 document request are not admissible through a Notice of Reliance. Trademark Rule 2.120(k)(3)(ii).
– Exception: Documents provided as part of an interrogatory answer. Trademark Rules 2.120(k)(3)(i), (k)(5).
– Exception: Documents that qualify as printed publications or official records. Trademark Rule 2.122(e).
– Exception: Documents that the adversary has admitted are authentic. Trademark Rule 2.120(k)(3)(i)(ii).
– Exception: Documents that have been marked and discussed during the adversary’s discovery deposition or on cross-examination during the adversary’s testimony deposition. Trademark Rule 2.120(k)(1).
– Exception: Formal responses stating that the documents called for do not exist. Calypso Tech. Inc. v. Calypso Capital Mgmt. LP, 100 U.S.P.Q.2d 1213 (T.T.A.B. 2011).
MAKING THE FRUITS OF DISCOVERY OF
RECORD
76
• The Party’s Registration.
– Attaching Status-and-Title Copy or TESS/TSDR and Assignment Records to Party’s Opening Pleading. Trademark Rule 2.122(d)(1).
– Submitting Status-and-Title Copy or TESS/TSDR and Assignment Records under Notice of Reliance. Trademark Rule 2.122(d)(2).
– Making Registration of Record during Party’s Testimony Deposition – with testimony as to ownership and active status. Trademark Rule 2.122(d)(2).
– Failure to properly make the plaintiff’s registration of record during the plaintiff’s testimony period can be fatal. See Sterling Jewelers Inc. v. Romance & Co., Inc., 110 U.S.P.Q.2d 1598 (T.T.A.B. 2014).
MAKING NON-DISCOVERY
MATERIALS OF RECORD
77
• Official Records.
– Trademark Rule 2.122(e). – “Official Records” mean the records of public offices or agencies, or
records kept in performance of the duty of a public officer. – See Conde Nast Publ'ns. Inc. v. Vogue Travel, Inc., 205 U.S.P.Q. 579
(T.T.A.B. 1979).
• Printed Publications.
– Trademark Rule 2.122(e). – “Printed Publications” must be available to the general public in libraries
or of general circulation among the public or the relevant segment of the public.
– See cases collected at TBMP § 704.08(a).
MAKING NON-DISCOVERY
MATERIALS OF RECORD
78
• Internet Evidence. – Must include:
• Date of access and printing. • Source of Document (URL).
– Trademark Rule 2.122(e)(2).
– Fujifilm SonoSite, Inc. v. Sonoscape Co., Ltd., 111 U.S.P.Q.2d 1234 (T.T.A.B. 2014); Safer, Inc. v. OMS Invs., Inc., 94 U.S.P.Q.2d 1031 (T.T.A.B. 2010).
– For further explanation, see TBMP § 704.08(b).
MAKING NON-DISCOVERY
MATERIALS OF RECORD
79
• Judicial Notice. – Fed. R. Evid. 201. – Fact must not be subject to reasonable dispute.
• The fact is generally known within the Board’s territorial jurisdiction; or • The fact is capable of accurate and ready determination by resort to sources whose
accuracy cannot be reasonably questioned.
– See TBMP §704.12(a) collecting cases regarding facts that were and were not subject to judicial notice.
• Testimony from Another Proceeding.
– Trademark Rule 2.122(f).
– “Testimony” means trial testimony or a discovery deposition that was used as trial testimony by parties’ agreement in another proceeding.
– Threshold.TV, Inc. v. Metronome Enters. Inc., 96 U.S.P.Q.2d 1031 (T.T.A.B. 2010).
MAKING NON-DISCOVERY
MATERIALS OF RECORD
80
• “Trial” testimony is taken by way of a deposition outside the Board’s presence.
– Objections to testimony and exhibits are “preserved” for later briefing, but not ruled upon until the Board decides the entire case.
• Advance preparation of testimony outlines and exhibits is crucial.
– See Trademark Rule 2.123(a) for methods by which Trial Testimony may be taken, which as of 2017 includes introduction by way of Declaration or Affidavit.
• The credibility of oral testimony should be supported by corroborating documents shown with particularity to the Board.
• Absent stipulation (approved by the Board) to the contrary, a party may only take its testimony depositions or submit its testimony declarations/affidavits during its testimony period(s).
• Give Reasonable Notice of Testimony Deposition by Deposition Notice.
– Trademark Rule 2.123(c). – Sunrider Corp. v. Raats, 83 U.S.P.Q.2d 1648 (T.T.A.B. 2007) (6 days reasonable). – Gaudreau v. American Promotional Events, Inc., 82 U.S.P.Q.2D 1692 (T.T.A.B. 2007) (2 days
unreasonable).
• Securing Unwilling Adverse Party’s or Non-Party’s Deposition.
– In the U.S. - by way of Subpoena. – Outside the U.S. – by Letters Rogatory or Hague Convention. – See discussion at TBMP § 703.01(f).
• Take Care on Formatting of Transcript and Exhibits. Trademark Rules 2.123(g)(oral testimony), 2.124(e)(depositions on written questions).
– Moreno v. Pro Boxing Supplies, Inc., 124 U.S.P.Q.2d 1028 (T.T.A.B. 2017)(dep on written ques.).
• Unlike a Discovery Deposition, the Entire Testimony Deposition Transcript and Exhibits must be filed with the Board. Trademark Rule 2.125(d).
THE TRIAL DEPOSITION
83
• In addition to a Testimony Deposition, trial testimony can be submitted via Declaration or Affidavit,
– subject to the adverse party's right to cross-examination – and the party proffering the Declaration or Affidavit or must
make the witness available, with the cross-examining party bearing the cost of the Court Reporter.
• Cross-examination deadlines:
• An adverse party has 20 days from service of the Declaration or Affidavit to elect cross-examination of an Declarant or Affiant.
• The oral cross-examination must be completed within 30 days of the Notice of Election.
– USPS v. Rpost Commc'n Ltd., 124 U.S.P.Q.2d 1045 (T.T.A.B. 2017)(deciding proper location for cross-examination).
• The Board may extend these periods, and may suspend or re-schedule the proceedings for the orderly taking of the oral cross-
examination.
THE TRIAL DECLARATION/AFFIDAVIT
84
• Expert Disclosures due 30 days prior to close of discovery.
– Fed. R. Civ. P. 26(a)(2); Trademark Rule 2.120(a)(2)(iii).
• After Notice to the Board that One Party or Both Parties Intend to Introduce Expert Testimony, the Board will Suspend the Remainder of the Proceeding and issue a Schedule for Expert Discovery.
– Trademark Rule 2.120(a)(2)(iii).
• Late Service or Supplementation of Expert Disclosures can Result in Expert’s Testimony being Stricken.
– Bayer Consumer Care AG v. Belmora LLC, 110 U.S.P.Q.2d 1623 (T.T.A.B. 2014), rev'd on other grounds, 84 F. Supp. 3d 490 (E.D. Va. 2015), vacated, 819 F.3d 697 (4th Cir. 2016).
– Gemological Inst. of Am., Inc. v. Gemology Headquarters Int'l, LLC, 111 U.S.P.Q.2d 1559 (T.T.A.B. 2014).
EXPERT WITNESSES
85
• Special Circumstances can Justify Substitution of One Expert for Another after the Disclosure Deadline.
‒ Entravision Commc'ns. Corp. v. Liberman Television LLC, 113 U.S.P.Q.2d 1526 (T.T.A.B. 2015).
• Re-Designating a Testifying Expert as a Non-Testifying Expert can Shield the Expert from being Deposed.
‒ Ate My Heart, Inc. v. GA GA Jeans Ltd., 111 U.S.P.Q.2d 1564 (T.T.A.B. 2014).
• Rebuttal Expert Evidence should be Confined to a Critique of and/or a Counter to the Adverse Party’s Expert Evidence.
– ProMark Brands Inc. v. GFA Brands, Inc., 114 U.S.P.Q.2d 1232 (T.T.A.B. 2015).
• Methodological Flaws Can Result in a Survey Expert's Testimony being Afforded Limited Probative Value.
– Frito-Lay North America, Inc. v. Princeton Vanguard, LLC, 124 U.S.P.Q.2d 1184 (T.T.A.B. 2017).
EXPERT WITNESSES
86
• Shortening or By-Passing the Board’s Procedures. See TBMP § 702.04.
• The Summary Judgment Method.
– The key stipulation required by the Board is that the parties agree the Board may decide issues of fact on the record before it. See, e.g., Trademark Rule 2.127(e)(2).
• Mix-and-Match Stipulations ...
– … to Certain Facts. Trademark Rule 2.123(b).
– … to Manner of Introducing Evidence. Trademark Rule 2.122(a).
– … to Admissibility of Certain Evidence Trademark Rule 2.123(k)(3)(ii).
• Examples.
– Chanel, Inc. v. Makarczyk, 110 U.S.P.Q.2d 2013 (T.T.A.B. 2014). – Conolty v. Conolty O'Connor NYC LLC, 111 U.S.P.Q.2d 1302 (T.T.A.B. 2014).