Trademark Judges: TTAB Rules Urge E-Filing; Board Will Guard Against ‘Obese Records'

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By Tamlin H. Bason

Practitioners should familiarize themselves with new electronic filing guidelines found in the Trademark Trial and Appeal Board's latest Manual of Procedure or else they will risk delaying their cases, two administrative trademark judges who sit on the TTAB told lawyers Oct. 20 at the American Intellectual Property Law Association'ss annual meeting in Washington, D.C.

Administrative Trademark Judge Angela Lykos said that while the Electronic System for Trademark Trials and Appeals (ESTTA) is suggested for all filings, in some instances electronic filing is actually mandatory. Chapter 100 of the new Manual, released in May, requires ESTTA filings both for extensions of time to oppose Madrid Protocol applications, and for notices of opposition against Madrid Protocol applications.

Lykos also strongly encouraged parties to use ESTTA when filing deposition transcripts and exhibits, motions to suspend for settlement, requests for board participation in discovery conferences, and all confidential submissions. Furthermore, she said that there is no need to file duplicate hard copies of the documents that have been sent through ESTTA.

“We are still seeing parties file duplicates, and all it does is delay the entire process,” Lykos said.

Administrative Trademark Judge Karen Kuhlke said that the delay comes from the fact that the board has to look over the entire docket to make sure that the mailed copy is merely a duplicate of the e-filing. “There is no need to put something in the mail—it complicates the prosecution history,” Kuhlke said.

Although ESTTA is designed to make it easier for practitioners, that does not mean that parties can wait until the last minute to file, Lykos said. She said that no extensions will be given to parties that have trouble with the ESTTA system. She noted the board's dismissal of an opposition in Vibe Records Inc. v. Vibe Media Group LLC, 88 USPQ2d 1280 (T.T.A.B. 2008), after the opposer was unable to complete its ESTTA filing on time.

Crackdown on ‘Obese Records.'

Both Lykos and Kuhlke said that there was a growing problem with parties submitting reams of irrelevant information. Because the board members alone sort through the record—they do not have law clerks—this only delays a proceeding, Kuhlke said.

Kuhlke said that it is possible for a party to make a much stronger case by providing “contextual information” regarding use of a mark, rather than merely providing boxes upon boxes of documentation of questionable relevance. “It is not quantity but quality,” Kulhke said. She added that “representative examples tend to make a more probative case.”

Lykos said that if the board suspects that a case will result in an “obese record,” which is generally apparent from how contentious the initial filings are, then the board will schedule a conference with all the parties. She said that this usually helps get the parties focused on the relevant issues that are being litigated.

Other Changes to TBMP

Lykos and Kuhlke detailed other changes to the manual, including amendments to the discovery rules, pleadings, and pretrial disclosures. Some of the notable changes are detailed below.

  • Extensions of time to oppose: Under chapter 200, a party can receive up to three extensions of time to oppose a registration. The first two extensions, which can total up to 120 days, will be granted for “good cause.” But in regards to the final extension—of up to 60 days—Kulhke said that “unless somebody drops dead, you aren't getting it.”
  • Adoption of federal pleadings standard: Chapter 300 of the manual officially adopts the Ashcroft v. Iqbal, 129 S. Ct. 1937 (2009), and Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007), pleadings standard. Kuhlke said that the change is merely a formality and that such a pleadings standard was already required in all board proceedings. But Lykos said that the new standard will directly impact abandonment claims, the pleadings of which were previously subject to statutory guidelines.
  • Discovery conference mandatory:

Chapter 400 contains numerous changes to discovery, but some notable amendments are that parties are not able to waive the requirement of having a pretrial discovery conference. Both parties also are required to submit initial disclosures; however, such disclosures should not be filed with the board.

The TBMP is available only in electronic format as no hard copies have been printed.

The TBMP is available to download at