3 Things to Know About Authority to Use in TTAB Proceedings (TBMP § 101)
As a brand owner you might find yourself in the midst of a trademark dispute, such as an opposition proceeding. Perhaps you filed a trademark application for HOUSTON ASTRO ZIPPERS used to identify baseball caps adorned with zippers and another, much larger brand owner opposes your application. Imagine that! As a party to a TTAB proceeding, you should know the rules, statutes, and cases that you can rely on to form your strategy and advance your case.
Trademark disputes at the TTAB are dictated largely by paper submissions: pleadings, motions, stipulations, written evidence, etc. When briefing motions to the Board, parties cite legal authority. Section 101 of the Trademark Trial and Appeal Board Manual of Procedure (TBMP) discusses authority as it is used in TTAB proceedings.
Understanding Section 101 of the TBMP
Section 101.01 of the TBMP provides, in relevant part, that all proceedings before the Trademark Trial and Appeal Board (“Board”) are governed by the Lanham Trademark Act (i.e., the “Trademark Act”), 15 U.S.C. § 1051 et seq., and the rules of practice in trademark cases (commonly known as the Trademark Rules of Practice), which may be found in Parts 2 and 7 of Title 37 of the Code of Federal Regulations (“C.F.R.”). The USPTO rules are adapted, in large part, from the Federal Rules of Civil Procedure.
In addition to the relevant federal rules, Section 101 addresses decisional law, director’s orders and notices, and the TBMP.
Section 101.03 Decisional Law
Section 101.03 discusses decisional law. In particular, the Board relies on its prior precedent and the precedent of the Court of Appeals for the Federal Circuit. Prior decisions of the TTAB that state “Citable as Precedent,” “Precedent of the Board,” “Precedent of the TTAB,” or “for publication in full” are citable as precedent. Non-precedential decisions may be cited but the TTAB discourages their use.
The TTAB requests citations to the United States Patent Quarterly (USPQ), if available.
Section 101.04 Director’s Orders and Notices
From time to time, the Director or someone acting under the Director’s authority publishes an order or notice concerning USPTO policy, practice, procedure, etc. Parties may cite to such orders or notices to the extent they help and apply. Interestingly, Section 101.04 does not provide any footnotes/annotations (unlike the other sub-sections of Section 101). Here is a link to recent postings, along with a corresponding screenshot:
Personally, I have not had a need to rely on this category of authority. However, the most recent posting concerns changes to implement provisions of the trademark modernization act. Ex parte expungement and reexamination proceedings for cancellation of registration were established in the Trademark Modernization Act of 2020. This posting by Andrew Hirshfeld Commissioner for Patents, Performing the Functions and Duties of the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office was helpful when learning about these proceedings.
Section 101.05 Trademark Trial and Appeal Board Manual of Procedure
This blog series focuses on the TBMP, and the TBMP is the subject of Section 101.05. It states that the TBMP (i.e., Manual) “is a compilation of statutory, regulatory, and decisional authority relevant to Board practice and procedure. It is written as a guide for the Board, practitioners and parties before the Board. In addition to compiling applicable authority, the TBMP includes many practical suggestions on practice before the Board. Nonetheless, the TBMP ‘does not modify, amend, or serve as a substitute for any statutes, rules or decisional law and is not binding upon the [TTAB].’” The TBMP is revised annually and members of the public are invited to offer improvements/revisions:
· Via letter:
ATTN: TBMP Editor
U.S. Patent and Trademark Office
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
· Via email:
Conclusion:
Let’s return to the hypothetical involving your opposed application for HOUSTON ASTRO ZIPPERS. During the proceeding, you might choose to retain and designate an expert witness. As a result, the opposing party might retain an expert to rebut your expert’s report. In doing so, the rebuttal expert might perform a survey of his/her own.
If the rebuttal expert performs a survey, you might ask your expert to critique the survey performed by the rebuttal expert. You would serve the critique and style it as a sur-rebuttal expert report, which may be allowed with leave of the Board. Let’s assume that the other side wants to rebut your expert’s sur-rebuttal expert report and serves you with a sur-sur-rebuttal expert report. After carefully reviewing the other side’s sur-sur-rebuttal expert report, you decide that you do not like the report and that you do not want the Board to rely on it. Procedurally, you would likely move to strike that report. You might ask yourself what authority supports your position. Hopefully, you would recall reading about the TTAB’s precedential decision Monster Energy Company v. Coulter Ventures, LLC, 2023 USPQ2d 916 (TTAB 2023), wherein the TTAB held that “sur-sur-rebuttal expert reports will not be permitted under any circumstances.”
Click here to learn more about the Board’s Monster Energy Company decision or here to learn about Section 102 of the TBMP: Nature of Board Proceedings.
