Choose Your Battles

23-05-2018

Choose Your Battles

BCFC / iStockphoto.com

As the workload of the U.S. Trademark Trial and Appeal Board grows, Gerard Rogers, Chief Administrative Trademark Judge, explains the challenges and his priorities to Ed Conlon.

“The most successful parties choose their battles wisely,” says The Honorable Gerard Rogers, Chief Administrative Trademark Judge at the Trademark Trial and Appeal Board (TTAB), a body within the United States Patent and Trademark Office (USPTO). Having served in various roles on the TTAB for more than 25 years, Judge Rogers is particularly well placed to track the developments and challenges facing it.

The TTAB handles ex parte appeals from parties whose trademark applications have been denied by the USPTO, and adversarial opposition and cancellation proceedings. In both areas, parties have been known to push their luck.

“Trials are sometimes pursued because the parties have issues outside the TTAB that they’re grappling with and, it appears to us, they think it will give them another leverage point to deal with their differences.”

Judge Rogers says he has seen cases where parties have not properly followed the TTAB’s Manual of Procedure, which provides nonbinding guidelines on handling cases at the TTAB. The Manual contains an abundance of information on all the statutory, regulatory, and decisional authority that is relevant to the TTAB.

“Don’t increase your costs and file a lot of irrelevant evidence that would have a bearing in a district court but which is not relevant to our analysis.”

“There have been appeals and trial cases that have been lost but could have been won, due to a failure to follow the rules,” says Judge Rogers. “Many practitioners fail to follow the guidance on what evidence can be probative.”

Judge Rogers adds that it “never hurts” to remind stakeholders to be cognizant of the rules that the TTAB is required to apply—as well as the issues it must ignore—by the precedents of the U.S. Court of Appeals for the Federal Circuit. Among other issues, the TTAB often cannot take into account particulars relating to use of a trademark in the marketplace, even though U.S. district courts routinely do.

“We have to ignore that information, yet people bring it to us all the time,” Judge Rogers says.

Of the cases brought to the TTAB, just 30 percent are ex parte appeals, with trial proceedings making up the majority. Despite this balance, appeals account for 75 percent of cases ultimately decided on the merits, so what might explain the large swing?

Judge Rogers says that petitions for cancellation and opposition are similar to court disputes in that a settlement is available and, if that option is used, “fewer trial cases require disposition on the merits as the parties have worked it out.” In a small percentage of cases, a party might “misbehave” and be sanctioned, which could also lead to the case being terminated, says Judge Rogers.

The other major explanation for the statistics is that cancellations and oppositions can be much more expensive than appeals from examiner refusals, so a lot of cases are never pursued beyond the initial stages, says Judge Rogers. Adversarial proceedings, which can involve plenty of back and forth between the parties, including on discovery and motion practice, naturally require more input from attorneys and therefore are more costly.

With ex parte appeals, in contrast, “when the attorney files the notice of appeal there is not much else to do other than file the briefs,” says Judge Rogers. The TTAB will then hear the arguments, often in written rather than oral form, “so there’s not much added expense to have an attorney pursue an appeal.”

More Appeals

Judge Rogers notes that trademark application filings with the USPTO have risen year-on-year for eight years, so “this means more appeals and oppositions and the need to increase the staff to handle that work.” This will be one of his major challenges in the coming years.

Judge Rogers recalls that in previous years some commentators raised concerns about the Board’s slow pace in issuing decisions. While he admits that at some points those concerns were legitimate, he is adamant that these criticisms no longer apply.

One of the ways the TTAB seeks to reduce delays is through its Accelerated Case Resolution (ACR) procedure, which is available to parties in opposition and cancellation proceedings. Under the ACR, the TTAB seeks to expedite proceedings by, among other things, actively encouraging parties to consider placing limits on discovery and testimony, and adopting more efficient alternatives to the taking of discovery and the introduction of evidence at trial.

Judge Rogers and the TTAB have also introduced other working practices to boost speed. With pending contested motions, for example, he says that, while attorneys have individual responsibility for cases on their dockets, the TTAB’s managing attorney will reassign cases with pending motions on a monthly basis in order to ensure that the oldest motions are handled each month.

The ACR and general efficiencies have helped the Board mostly to meet or exceed its performance targets, says Judge Rogers, despite a large variation in the complexity of cases, which affects how long they might take to resolve. TTAB judges aim to issue decisions on the merits in trial cases within 10 to 12 weeks of the case being ready to decide, says Judge Rogers (ready for decision means after all briefing is done and the case is submitted by a Board paralegal to the Chief Judge for assignment, or after oral argument, if one is requested). 

“We have repeatedly beaten this goal,” he adds.

Judge Rogers says that the TTAB has realized annual reductions in overall average pendency (from commencement to completion) of ex parte appeals for the last five years in a row, with that pendency measure falling in trial cases for five of the past six years.

“Judge Rogers explains that stakeholders have long expressed a preference for the TTAB to remain “a more relaxed alternative to litigation in federal district courts,” where extensions and suspensions to accommodate settlement talks are routinely approved.

Out of the Limelight

In a wider context, while the TTAB has largely stayed out of the U.S. IP spotlight in recent times, at least one high-profile case has caused a stir. That was B&B Hardware, Inc. v. Hargis Industries, Inc., which was decided by the United States Supreme Court in 2015. The Court said that TTAB rulings should have preclusive effect in subsequent district court litigation between the same parties that litigated an earlier case before the TTAB, as long as the “ordinary elements” of issue preclusion have been met and the issues are materially the same.

Despite the case receiving much attention in IP circles, Judge Rogers says its impact on the TTAB has been “almost none.” However, he does note that it was a very positive ruling for trademark owners as it “reaffirmed the value of owning U.S. trademark registrations and the robust nature of TTAB proceedings.”

He notes that many TTAB cases are settled and that even when they are not, parties are unlikely to pursue further litigation in court. Even if they take that step, he adds, the issues that the TTAB and district courts adjudicate are often different (e.g., the subsequent district court case very likely would consider additional issues relating to use in the marketplace).

“There was a lot of talk that, because of the possibility of issue preclusion, parties should take more discovery and introduce more evidence at the TTAB.

“But I say: issue preclusion is unlikely to arise in all but the rarest of cases, so you should not change your approach at the TTAB. Don’t introduce more discovery than usual, and don’t increase your costs and file a lot of irrelevant evidence that would have a bearing in a district court but which is not relevant to our analysis.” he concludes.

TTAB parties would do well to heed Judge Rogers’ advice; choose your battles wisely.

A Typical Day at the TTAB

When asked about his daily responsibilities, Judge Rogers, who has been in his current position since November 2010, says there is a “real variety and things can come up on any given day.” His time includes meeting with the approximately 70 members of the TTAB staff, which includes judges, attorneys, and paralegals.

Judge Rogers reviews cases and the issues they present before assigning them to judges for disposition. A weekly summary of TTAB decisions distributed widely within the TTAB and other USPTO business units.

The TTAB hands down between 35 and 50 precedential decisions every year and that the judges are continually monitoring whether any given ruling should carry the weight of precedence.

Judge Rogers and his TTAB staff also work with other USPTO units, and he stresses the importance of working in harmony.

“We work closely with the Solicitor’s Office; they will be in the position of defending various Board decisions before the Federal Circuit, so we want to put them in the best position possible,” he says. The attorneys from the Solicitor’s Office, Judge Rogers explains, can relay to the TTAB the questions that tend to be asked by Federal Circuit judges during those appeals.

While working as the TTAB’s most senior judge may be his primary role, Judge Rogers says his responsibilities extend to managing and motivating his staff. The TTAB’s staff are its biggest strength, says the judge.

“I find the time to remind our employees of what great work they do,” he says.

With a busy schedule Judge Rogers has found a simple way to manage the long hours and stress—his bicycle.

“For many years I have ridden ten miles each way to the office and back; it provides a buffer between work and home life.”

INTA, INTA 2018, trademark, Trademark Trial and Appeal Board, TTAB, Gerard Rogers, USPTO

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