From: Jane Wald [janeswald@---.com]
Sent: Monday, March 20, 2006 4:57
PM
To: AB56Comments
Cc: Rogers, Gerard
Subject: Comments on Proposed Rules: "Miscellaneous Changes to Trademark Trial and Appeal Board Rules" 71 Federal Register 2498 (January 17, 2006)
The Honorable
John Dudas
Under Secretary of Commerce for Intellectual
Property
and Director of the United States Patent and Trademark
Office
Box Comments
P.O.Box 1450
Alexandria, VA
22313-1450
Attn: Hon. Gerard F. Rogers
Administrative
Trademark Judge
Trademark Trial and Appeal Board
P.O. Box
1451
Alexandria, VA 22313-1451
Re: Comments on Proposed Rules: "Miscellaneous Ch ages to Trademark Trial and Appeal Board Rules" 71 Federal Register 2498 (January 17, 2006)
Dear Under Secretary Dudas:
Thank you for the opportunity to offer comments regarding the U.S. Patent and Trademark Office ("PTO") proposed rules directed to changes to the practice before the Trademark Trial and Appeal Board ("the Board") published at 71 Fed. Reg. 10, p. 2498 (January 17, 2006).
I am a partner with a Southern California law firm. I write this on my own behalf to express my personal views as a lawyer who has practiced before the Board for nearly 30 years.
There has been recent, and fervent, dialogue in the trademark legal community with respect to these rules changes. It is clear from emailed and other communications within this community that a considerable number of practitioners, including in-house counsel, were not aware until recently of the overwhelming changes these rules would present. For this reason, I believe it would be advisable to hold the public comment period open for another 30 days to permit further dialogue.
At a minimum, with proposed changes this significant, I believe that a public hearing is vitally important to protect the public, including applicants and registrants of United States trademarks.
The rules changes proposed by the PTO are dramatic. If implemented, they will impose onerous burdens upon the parties -- in some cases, burdens more onerous than those found in the Federal Rules of Civil Procedure -- but without the benefit to the parties of the right to seek injunction or monetary relief available to parties litigating in the Federal courts.
Board practice has been a viable and, on balance, much less costly alternative to Federal court litigation. Indeed, filing an opposition often leads to an opportunity for a very prompt settlement of registration and use issues. The present rules and timing of Board practice permit the parties to resolve the vast majority of cases long before trial, and often before discovery, by "trading" use restrictions for registration benefits, to name just one frequent settlement approach.
By making Board practice look and feel and cost more like Federal court litigation, the new rules may increasingly drive those with resources to commence their actions in Federal court as trademark litigations, where the facts permit. On the other hand, those who need to oppose ITU's, where the facts may not be ripe for a trademark infringement lawsuit, may find themselves having to disclose a mountain of information -- much of it sensitive -- to a small entity that, itself needs to provide very little, and may not even retain counsel.
The idea that the substantial early disclosures proposed, with aspects that exceed those found in the Federal Rules of Civil Procedure, will facilitate settlement is counter-intuitive. If the party has had to "front-load" its executive time and legal fees, the drive to go forward with the case to benefit from these expended resources will be stronger.
As a practitioner who has encountered pro se small-business adversaries in Board proceedings, I am also concerned that represented parties, including my clients, will suffer for following the complicated new rules, while non-represented parties will not follow them because they don't understand them (and may also suffer as a result). Will counsel be expending client resources in repeatedly moving for relief from pro se misunderstanding of these complex rules? Will this truly lead to the goal of Board efficiency? With respect to the proposed Protective Order changes, where substantial sensitive material must now be disclosed early on, how can a pro se entity truly understand the obligations without the buffer of counsel? Business entities should be represented by counsel before the Board.
I have read the comments of Oblon, Spivak, McClelland, Maier & Neustadt submitted March 20, 2006, and the comments of the American Intellectual Property Law Association of March 16, 2006. I agree with and adopt those comments (and insofar as there is any small differing view as between them, each is preferable by far to the present proposed rules).
Sincerely,
Jane Shay
Wald
2307 Sunset Plaza Drive
Los Angeles, CA 90069
(310)
277-1010
janeswald@---.com
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