Exchange of E-mails Between David Kera and Stephen Baird on Rules Package

From: David J. Kera
Sent: Wednesday, March 08, 2006 10:52 AM
To: 'Baird, Stephen'
Subject: RE: Proposed TTAB Rule Changes

Steve:

The TTAB was very secretive about its work in writing the Rules proposal. At the Trademark Public Advisory Committee meeting which I attended, I heard that Gerard Rogers suggested to David Sams about two years ago that the Board needed new rules and that Sams told Rogers to go ahead if he had the time. No none at the Board discussed the ongoing work in any public forum such as INTA or AIPLA and no one solicited ideas from the Bar.

 

The laundry list of initial disclosures was the idea of two members of TPAC, who were, I guess, ruminating about what they would like to receive as defendants' counsel without thinking about what they would have to give as plaintiffs' counsel.

 

When Rogers started to work on the Rules, ESTTA was not used  or at least not very much and the Board had to serve the defendants by mail. Now, of course, ESTTA serves the parties by email within a day. The proposal fails to account for the change in technology. Originally, the Board thought it would be saving time and the use of its own employees if plaintiffs had to serve defendants. That is no longer the case and would be a point to make in comments.

The counter argument is that comments should not be seen as criticizing the proposal wholesale and the service of process proposal is a small concession compared to the proposal for initial disclosures, which would really increase the cost and burden of instituting a case by a huge percentage.

 

I agree with you that the proposal is weighted against plaintiffs especially in view of the fact that a great majority of applications are based on an intent to use a mark or are Madrid Protocol cases, so that defendants have little if anything to disclose.

 

I think the Board is also seriously underestimating the burden the new rules would impose on the Board in the form of motions to compel, motions to strike, and motions for sanctions. There are probably other, unintended, consequences which no one has thought of yet. That is one of the prime reasons to allow more time to comment. I pointed out to Sams at the TPAC meeting that time is needed to reflect and ponder and to let ideas ferment. He agreed with my observation. It remains to be seen whether the comment period will be extended.

 

Please spread the word about the proposal and encourage people to comment.

 

Best regards, David

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From: Baird, Stephen [mailto:SBaird@winthrop.com]
Sent: Tuesday, March 07, 2006 10:20 PM
To: David J. Kera
Subject: Proposed TTAB Rule Changes

David, thanks for taking the time to put together a very thoughtful memo concerning the TTAB's proposed rule changes.

I agree with your comments.  I'm very concerned about these proposed changes.  I see very little good in them.

Do you have any idea on the reason for the proposed change to have an opposer or cancellation petitioner or concurrent use applicant serve the opening pleading on the applicant, respondent, and concurrent user?  My assumption was that this might be intended to get the proceeding going sooner.  If that is the justification, I don't buy it.  First, the Board is actually quite prompt anymore in issuing the scheduling orders.  And, the proceeding doesn't really get going any way until the Board issues its scheduling order even under the proposed new rules, so I don't get it. 

Under the new proposed rules, there are simply more deadlines created, and more work to be done, possibly unnecessary work.  These rule changes seem to weigh heavily against plaintiffs, in my opinion.

Thanks, Steve