Mastering TTAB Stipulations

If you practice before the Trademark Trial and Appeal Board (TTAB), understanding how to effectively use stipulations can streamline proceedings and save your clients time and money. Although Section 501 of the Trademark Board Manual of Procedure (TBMP) provides guidance on stipulations, Section 501 is limited. The following blog post expands on best practices and pitfalls arising from stipulations.

What Are TTAB Stipulations?

At their core, stipulations are agreements between parties about various aspects of TTAB proceedings. While some stipulations require Board approval, others can be handled informally between counsel. Understanding this distinction is important.

Stipulations Requiring Board Filing

Certain stipulations must be filed with and approved by the Board. These include:

1. Timeline Modifications:

- Extensions of time to file an answer

- Changes to discovery period length (e.g., the parties agree to extend the discovery period by three months)

- Rescheduling of pretrial disclosures

- Adjustments to trial dates

2. Procedural Changes:

- Alterations to disclosure obligations

- Waivers of required initial disclosures

- Modifications to testimony formats

- Agreements to proceed under Accelerated Case Resolution (ACR)

3. Evidentiary Agreements:

- Stipulations about document authenticity

- Agreements about the form of testimony

- Stipulations to specific facts

Remember that any stipulation requiring Board action or consideration must be filed. When in doubt, filing is the safer course.

Stipulations That Do Not Require Filing

Not every agreement needs Board approval. Common examples include:

- Extensions for discovery responses (e.g., the requesting party agrees to the responding party’s request for an extra two weeks to respond to a set of interrogatories)

- Arrangements for document production

- Agreements about service timing

- Informal scheduling accommodations between counsel

Be aware that it is often advisable to reduce these "informal" stipulations to writing. A simple email confirmation can prevent misunderstandings and preserve professional relationships.

Practical Tips for Effective Stipulations

1. Think Comprehensively

When modifying one deadline, consider the domino effect. For example, when extending answer deadlines, remember to adjust:

- Discovery conference timing

- Disclosure deadlines

- Discovery period dates

- Trial schedule

2. Form Matters

When drafting stipulations, particularly for timeline changes, specificity is crucial. The Board requires:

- Clear statement of all new deadlines

- Signatures from all parties (or their attorneys)

- Express agreement from all parties to the new dates if your agreed-upon schedule doesn't fit ESTTA's calculator

- Proper ESTTA filing for Board-approved stipulations

3. Use ESTTA Effectively

The ESTTA system includes a helpful calculator for generating proper schedules. However, if your agreed-upon schedule doesn't fit ESTTA's calculator, use the "general filings" option and attach your detailed schedule with an express statement of all parties' agreement.

Strategic Considerations

Stipulations are not just procedural tools. They are opportunities for strategic advantage and professional courtesy. Consider:

1. Relationship Building

- Reasonable accommodation of opposing counsel's scheduling needs can facilitate cooperation on substantive issues

- Professional courtesy often leads to reciprocity

2. Cost Savings

- Well-crafted stipulations can reduce motion practice

- Agreed-upon modifications to discovery or testimony procedures can significantly reduce client costs

3. Efficiency Gains

- ACR stipulations can dramatically shorten proceedings

- Evidence stipulations can streamline trial preparation

Common Pitfalls in TTAB Stipulations: What Can Go Wrong and How to Avoid It

Timeline and Scheduling Errors

The Domino Effect Problem. Practitioners often only stipulate to the immediate deadline change without accounting for downstream dates. Here is an example: Stipulating to extend discovery but forgetting that expert disclosure deadlines must be scheduled 30 days before discovery closes. To solve/prevent this problem, use a comprehensive timeline checklist when discussing drafting scheduling stipulations.

Missing Related Deadlines. Practitioners sometimes forget pretrial disclosure deadlines when adjusting testimony periods or overlook the requirement to reschedule discovery conferences when extending answer deadlines. You can prevent this problem by referencing 37 C.F.R. § 2.121(d) and using ESTTA's built-in calculator.

Documentation and Authentication Issues

Informal Agreement Risks. Problems sometimes arise from relying on hallway conversations or phone calls without written confirmation. Similarly, vague email exchanges that do not specify exact dates or terms can create problems. To minimize or eliminate these risks, follow up verbal agreements with clear, written confirmation listing specific dates and terms.

Authentication Stipulation Problems. Several problems can arise with authentication stipulations. For example, failing to file stipulations regarding document authentication with the Board and waiting until trial to discover disagreements about document authenticity can create problems. Consider filing all evidentiary stipulations promptly and ensure they are properly approved by the Board.

Procedural Filing Mistakes

Practitioners often encounter filing method errors when submitting stipulations to the TTAB. A common mistake is using the "consent motions" option in ESTTA when the agreed schedule doesn't align with the standard calculator. Some attorneys also forget to include an express statement confirming all parties' agreement to the new dates. To avoid these issues, practitioners should use the "general filings" option when needed and explicitly state all parties' agreement. Incomplete stipulations present another challenge, whether through missing signatures, unspecified time zones for deadlines, or failure to address all modified terms. Using a comprehensive stipulation checklist before filing can prevent these oversights.

Communication breakdowns frequently complicate stipulation practice. Attorneys sometimes make dangerous assumptions, such as expecting opposing counsel to agree to standard extensions or taking informal agreements for granted without written confirmation. The solution is to obtain explicit agreement on all terms before drafting any stipulation. Unclear terms also create problems, particularly when attorneys use ambiguous language. Using clear, specific language and defining potentially ambiguous terms helps avoid these issues.

Strategic oversights can significantly impact case outcomes. Over-stipulating occurs when attorneys agree to extensions that compromise their client's strategic position or stipulate to facts without fully considering their impact. Conversely, under-utilizing stipulations means missing opportunities to streamline proceedings through ACR or failing to explore evidence stipulations that could reduce costs. The key is to regularly assess opportunities for beneficial stipulations while carefully evaluating their strategic impact.

Authorization issues round out the major stipulation pitfalls. Client communication problems arise when attorneys fail to obtain client approval for substantive stipulations or don't adequately explain the impact of timeline changes. Questions about authority can also create complications, particularly regarding opposing counsel's client authorization or unclear chains of authority in multi-party proceedings. Implementing a client communication protocol and explicitly confirming authority before finalizing stipulations helps prevent these issues.

Best Practices to Avoid These Pitfalls:

1.      Create a Comprehensive Checklist

• Include all potentially affected deadlines

• List required approvals and filings

• Note strategic considerations

2.      Document Everything

• Follow up all verbal agreements in writing

• Maintain clear email trails

• Keep clients informed of all stipulations

3.      Use Available Tools

• Leverage ESTTA's calculator when possible

• Reference TBMP Section 501 requirements

• Maintain updated calendar systems

4.      Implement Quality Control

• Have another attorney review important stipulations

• Double-check all dates and deadlines

• Verify all required signatures and approvals

By being aware of these common pitfalls and implementing proper safeguards, practitioners can effectively use stipulations while avoiding potentially costly mistakes.

Final Thoughts

Mastering TTAB stipulations requires attention to detail and strategic thinking. While Section 501 provides the framework, successful practitioners understand that effective use of stipulations combines technical compliance with practical judgment. Whether managing complex schedule changes or streamlining evidence presentation, well-crafted stipulations can be a powerful tool in your TTAB practice. If you would like to discuss a Trademark Trial & Appeal Board (TTAB) Proceeding or other trademark issue with an experienced trademark attorney, please schedule a consultation here.