Contacting Personnel of the Trademark Trial & Appeal Board (TBMP § 105)

If you regularly practice in state or federal courts—or if you have been a party to a lawsuit—you know that you are not allowed to call the judge or her staff to discuss your case. With few exceptions, nearly all communications (e.g., in person, phone calls, emails, etc.) between you and the court concerning your case must take place in the presence of your opposing counsel. Communications outside the presence of opposing counsel are deemed “ex parte” and they are rarely permitted.

If you are less familiar with proceedings at the USPTO’s Trademark Trial and Appeal Board (TTAB), you might not know how communications with the TTAB occur. Quoting 37 C.F.R. § 11.305, TBMP § 105 prohibits ex parte communications with the Board during the proceeding unless authorized to do so by law, rule or court order. Section 105 continues: “Parties or their attorneys or other authorized representatives may telephone the Board to inquire about the status of a case or to ask for procedural information, but not to discuss the merits of a case or any particular issue. . . . If an inquiry involves a particular case, the person making the inquiry should be prepared to give the number of the proceeding or application in question.”

Examples of Allowable Ex Parte Communications

Although ex parte communications are generally prohibited, there are exceptions. For example, a plaintiff can sometimes obtain injunctive relief, namely, a temporary restraining order, on an ex parte basis.

Impoundment may be ordered on an ex parte basis under Fed. R. Civ. P. (b) if the plaintiff makes a strong showing of the reasons why notice is likely to defeat effective relief. Such no-notice procedures are authorized in trademark infringement proceedings, see 15 U.S.C. §1116(d), and courts have illustrated the kinds of showings that support ex parte relief. See Vuitton v. White, 945 F.2d 569 (3d Cir. 1991); Matter of Vuitton et Fils S.A., 606 F.2d 1 (2d Cir. 1979). In applying the tests for no-notice relief, courts ask whether impoundment is necessary, or whether adequate protection can be had by a less intrusive form of no-notice relief shaped as a temporary restraining order.

The Defend Trade Secrets Act identifies two situations where ex parte temporary restraining orders are permitted. First, in extraordinary circumstances, a court may issue an order providing for the seizure of property necessary to prevent the propagation or dissemination of the trade secret that is the subject of the action.” Second, a party who claims to have an interest in the subject matter seized may make a motion, which may be heard ex parte, to encrypt any material seized or to be seized under the Act.

Conclusions

TTAB proceedings do not permit ex parte communications except in limited/narrow situations. Although ex parte communications are prohibited in state and federal court, there are exceptions.  

If you would like to discuss a trademark (or other IP) dispute with an experienced trademark attorney, schedule a consultation here.