Oblon, Spivak Files Supplemental Comments regarding Expert Witnesses

Download ttabrulessuppcomments_406.pdf

April 20, 2006
Via E-Mail

The Honorable Jon Dudas
Undersecretary 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

The Honorable 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 Changes
to Trademark Trial and Appeal Board Rules”
71 Federal Register 2498 (January 17, 2006)                        

Dear Undersecretary Dudas and Judge Rogers:

    This is further to our submission dated March 20, 2006.

     We appreciate the USPTO's willingness to extend the time for submitting comments in response to the proposed TTAB Rules changes.  This has enabled us to review many of the submissions made by other firms, which raised additional issues not covered in our prior submission.  Rather than repeat many of the comments, we simply wish to note that the proposed rules clearly raise many issues that will more likely than not create more, not fewer, problems and greater, not lower, costs for the parties.

      Although many of the submissions concentrated on the general disclosure requirements, problems are also anticipated with respect to the proposed Expert Disclosure  requirements.  In particular, the proposed rules require docketing of dates that were not previously required and do not provide sufficient time for the parties to conduct discovery and determine if an expert is appropriate.  Because of the expense of retaining experts, the issues present in the great majority of TTAB proceedings, and a high rate of settlements preceding trial, experts are generally not engaged for Board proceedings.  However, by requiring the parties to identify experts no later than 90 days prior to the close of discovery, parties will have to engage experts and proceed with such disclosures in cases where settlements are not reached in advance of 90 days before the close of discovery but when it would still be uncertain whether expert testimony (e.g., on surveys, brand name recognition, or the meaning of an esoteric term) would be necessary.  Although proposed Trademark Rule 2.120(a)(2) permits expert disclosure at a later date if the expert is retained after the disclosure deadline, this will likely result in more disputes and motion practice.

      We also note that the proposed Rule does not distinguish between experts who are consulted but who are not expected to testify and experts who are expected to testify. Ordinarily, the identity of an expert who is consulted but is not expected to be called as a witness is not disclosed. This should be clarified if the requirement for disclosure of an expert is retained in the Rule.

      However, this could also be a source of motion practice if, for example, a consulting expert becomes a potential witness because of something done or said by the adverse party after the 90-day deadline prior to the close of discovery. If the parties jockey for position by trying to make the adverse party disclose an expert before deciding whether or not to engage an expert, the Board will necessarily become involved if motions are filed to preclude or admit the testimony or proposed testimony of an expert witness. There is much less likelihood of jockeying for position if expert disclosure is deferred until a date much closer to the end of discovery, or if the Board would do what many courts do, which is to set a date for disclosure of expert testimony by the party with the burden of proof and a later date for disclosure of expert testimony by the party in the position of defendant on the issue.

      The present practice of using interrogatories and requests for production of documents to learn about possible expert testimony by the adverse party works well without  imposing any premature deadline.  It is much more flexible than the proposed deadline.

      Based on the above as well as our previous submission, we request that the USPTO investigate and consider the numerous issues raised and conduct a public hearing  before proceeding with the proposed amendments to the TTAB Rules.

                Respectfully submitted,

                OBLON, SPIVAK, McCLELLAND,
                    MAIER & NEUSTADT, P.C.

Jeffrey H. Kaufman                    David J. Kera

Brian D. Anderson                    Roberta S. Bren

Jonathan Hudis                    Kathleen Cooney-Porter

Jordan S. Weinstein                    Brian B. Darville

Carol L.B. Matthews                    Colette Durst-Barkey

Christopher I. Donahue                Kyoko Imai

Letter to TTAB from Jack Clifford of Merchant & Gould

Download jack_clifford_ttab_letter.pdf

Merchant & Gould Firm Files Comments with PTO Opposing New Rules

Download merchant_gould_firm_comments_.pdf

Deadline to Comment on Proposed TTAB Rules

To Trademark Owners and Practitioners:

We contacted the TTAB on March 14 to inquire whether the Board has decided to extend the deadline for submission of comments and to hold a public hearing.  We were told that the Board has not yet decided whether to extend the deadline or hold a public hearing.

Accordingly, anyone interested in commenting on the January 17, 2006 Rules package should assume that the March 20, 2006 deadline is the final deadline for submission of comments, and forward their written comments to:  AB56Comments@uspto.gov , as this may be the only opportunity to inform the Board of your views.

At a minimum, we encourage trademark practitioners to submit a comment urging the TTAB to extend the time period and hold a public hearing so that the impact of the new Rules can be fully considered before they are implemented.

Jeffrey H. Kaufman

for the Trademark Practice Group

Oblon, Spivak

Former TTAB Judge Beth Chapman Provides Discussion Points for Proposed Rules

Discussion Points for TTAB Proposed Rules

Prepared by Beth A. Chapman

Of Counsel, Oblon, Spivak

March, 2006

• The stated purposes of the proposed changes to the rules are to increase efficiency, enhance earlier settlement and increase procedural fairness.  Will these purposes be met?

• In preparing these rules, did the TTAB take into account the significant increasing number of pro se parties, including pro se foreign individuals and representatives who do not speak English?  Will the rule changes lead to less efficiency while the TTAB helps guide the pro se parties through the system?   Will parties represented by counsel be prejudiced as a result of pro se parties’ lack of understanding or lack of compliance with the rules?

• Will the Board be willing to sanction pro se parties by ruling in favor of the adverse parties if the pro se parties do not comply with the rules, or will it become a group effort at educating pro se parties at the expense of those represented by counsel?

• If these rules are adopted, should Patent and Trademark Office Rule 10.14(e) be amended to require business entities to be represented by counsel?

• With a high percentage of the TTAB oppositions and cancellations being settled prior to final hearing, will the proposed rules encourage more or less settlements? 

• Will the proposed rules lead to significant increases in the costs of Board proceedings, particularly at the initial stages?  As a result of possible increased costs, will Board proceedings still be an alternative dispute resolution tool?  Will more plaintiffs proceed directly to federal court?   

• What good is a standard protective order against non-lawyers, individuals outside of the U.S., and competitors who are not represented by counsel?  What recourse will parties have after confidential information is improperly disclosed?

• What will be the impact of the wording in Rule 2.120(a) “and further explained in documents posted on the Web site of the Office”.  Will the PTO in the future simply post new procedures/practices to the PTO website without giving notice in the Federal Register and Official Gazette?

• Under Rules 2.120(a) and (e), if expert witness disclosure is to be required, should there be a distinction between testifying expert witness(es) and consulting, non-testifying expert witness(es); and should the rules allow disclosure of testifying expert witness(es) after the close of discovery?

• Under Rule 2.120(d), will 25 interrogatories be sufficient, or should the rules leave the number of interrogatories at 75?

• Under Rule 2.120(g), should the filing of a motion for sanctions result in automatic suspension of all times.

• Under Rule 2.121(e), should the requirement for “general” information regarding witnesses be clarified?

• Under Rule 2.122(d)(1), should it provide for receiving a pleaded registration into evidence by filing a copy thereof from the PTO’s TARR database?

Merchant & Gould Webinar on Proposed TTAB Changes

Commentary on Proposed Rules

Former Judge David Kera of Oblon, Spivak, has prepared the following commentary on the proposed Rules Package.Download kerattab_rules_rev3306.pdf

Proposed TTAB Rules of January 17, 2006

Download ttabrules.pdf