Discovery Conferences in TTAB Proceedings: A Missed Opportunity for Early Case Assessment and Settlement?

In Trademark Trial and Appeal Board (TTAB) proceedings, the discovery conference is a mandatory step that occurs early in the proceeding. Unfortunately, many participants, including trademark practitioners, view it as a mere procedural formality. They miss out on its strategic potential. This blog post explores how the discovery conference can be a valuable tool for early case assessment and potential settlement.

The Purpose and Potential of the Discovery Conference

The parties must discuss specific subjects during the discovery conference, as outlined in Trademark Rule 2.120(a)(2)(i) and Federal Rule of Civil Procedure 26(f). These mandatory topics include:

1.      The nature and basis of their claims and defenses

2.      The possibility of promptly settling or resolving the case

3.      Arrangements for disclosures

4.      Issues relating to preserving discoverable information

5.      Development of a proposed discovery plan

It is important to recognize the potential value of these topics. First, this discussion can reveal the strengths and weaknesses of each party’s case early on. It may highlight areas where one party’s evidence is particularly strong or where there might be gaps in the other party’s argument. This insight can be crucial for developing case strategy or recognizing when settlement might be advantageous.

Second, by explicitly discussing settlement possibilities, parties may identify areas of common ground that were not apparent before. Even if immediate settlement is not possible, this conversation can lay the groundwork for future negotiations.

Third, agreeing on these plans early can streamline the entire proceeding, saving time and resources for both parties. It can also prevent future disputes over the scope or timing of discovery.

However, the real power of the discovery conference lies in the opportunity to discuss additional topics beyond these required subjects. The TTAB explicitly encourages this, stating in TBMP § 401.01 that “the parties are free to discuss any additional topics that could promote settlement or efficient adjudication of the Board proceeding.”

Some valuable additional topics might include:

1.      Exploration of potential stipulations to narrow the issues in dispute

2.      Discussion of each party’s key objectives in the proceeding

3.      Identification of any third-party rights or interests that may impact the case

4.      Consideration of alternative dispute resolution methods, such as mediation

5.      Discussion of any pending trademark applications or registrations that might affect the dispute

6.      Exploration of potential coexistence agreements or other business solutions

This conference presents a unique chance for early case assessment and exploration of settlement possibilities. Unlike formal pleadings or written discovery, the conference allows for a more nuanced and interactive exchange of information. Parties can gain insights into their opponent’s position, identify key issues, and potentially find common ground for resolution.

For example, a frank discussion about the strength of each party’s evidence might reveal that one party’s position is not as strong as they initially believed, making them more open to settlement. Or, parties might discover that their dispute is narrower than they thought, allowing them to focus their efforts and resources more efficiently.

Moreover, this early interaction can set the tone for the entire proceeding. A cooperative and professional approach during the discovery conference can foster a more amicable relationship between the parties, potentially making future negotiations and the overall process smoother and more productive.

By fully leveraging the discovery conference, including both the required topics and additional relevant discussions, parties can gain a clearer picture of the road ahead and potentially find an early off-ramp to resolution, saving time, money, and resources in the process.

Strategies for Maximizing the Discovery Conference

To make the most of the discovery conference, consider the following strategies:

1.      Conduct thorough preparation and early case evaluation

2.      Set clear objectives for the conference

3.      Approach the conference with a settlement mindset

4.      Explore creative solutions and alternative dispute resolution options

By implementing these strategies, you can transform the discovery conference from a routine procedure into a powerful tool for case management and potential resolution. First, preparation is key to a successful discovery conference. This involves:

o    Comprehensive case review: Thoroughly analyze all pleadings, evidence, and relevant legal precedents.

o    Client consultation: Meet with your client to understand their goals, priorities, and potential settlement parameters. Among other things, discuss relevant documents and document management, as well as persons with relevant information.

o    Strengths and weaknesses assessment: Conduct an honest evaluation of your case’s strong points and vulnerabilities.

o    Opposition analysis: Research the opposing party and counsel, including their litigation history and typical strategies. You might reach different conclusions if you find that the opposing party has never been a party to a TTAB proceeding versus a party that regularly participates and settles early versus a party that regularly participates and takes all proceedings to a Board decision. You can discover a lot of information informally by using the Trademark Trial and Appeal Board Inquiry System, TTABVUE.

o    Preliminary discovery plan: Draft a proposed discovery plan that aligns with your case strategy.

Early case evaluation allows you to enter the conference with a clear understanding of your position, enabling more productive discussions and strategic decision-making.

Second, approach the conference with specific goals in mind:

o    Identify key issues: Aim to pinpoint the core disputed matters that will drive the case.

o    Information gathering: Set objectives for what you want to learn about the opposing party’s case.

o    Streamlining: Determine areas where you might be able to stipulate or narrow issues.

o    Discovery scope: Have a clear idea of what discovery you will need and be prepared to discuss limitations.

o    Settlement exploration: Decide how and to what extent you will explore settlement possibilities.

Having clear objectives helps guide the conversation and ensures you make the most of the limited time available.

Third, while not every case will settle early, approaching the conference with openness to settlement can be beneficial:

o    Assess settlement possibilities: Consider potential resolution scenarios before the conference.

o    Be prepared to discuss settlement: Have authority from your client to at least explore settlement options.

o    Listen actively: Pay attention to cues from the opposing party that might indicate willingness to settle.

o    Consider timing: Evaluate whether early settlement might be particularly advantageous in this case.

o    Prepare a settlement strategy: Have a plan for how you might broach the subject of settlement.

Even if immediate settlement is not possible, this mindset can lay groundwork for future negotiations.

Fourth, think beyond traditional litigation outcomes:

o    Brainstorm unconventional resolutions: Consider solutions that address both parties’ underlying interests.

o    Discuss ADR options: Be prepared to suggest mediation or other forms of alternative dispute resolution.

o    Phased resolution: Consider whether parts of the dispute could be resolved separately.

o    Business solutions: Explore potential business arrangements (like coexistence agreements) that could resolve the dispute.

o    Partial stipulations: Look for areas where parties can agree, even if full resolution is not possible.

Creative problem-solving can often lead to more satisfactory outcomes for all parties.

Fifth, foster a cooperative tone. While not explicitly listed in the original four points, setting a cooperative tone is crucial:

o    Professional courtesy: Maintain a respectful and professional demeanor throughout the conference.

o    Collaborative approach: Frame discussions in terms of mutual problem-solving rather than adversarial positioning.

o    Open communication: Encourage open dialogue and be willing to listen to the other party’s perspective.

o    Flexibility: Be open to adjusting your approach based on the flow of the conversation.

A cooperative tone can facilitate more productive discussions and set a positive precedent for future interactions.

After the conference, take these important steps:

o    Summarize key points: Document the main discussion points and any agreements reached.

o    Client reporting: Promptly inform your client about the conference outcomes and next steps.

o    Action items: Identify and follow up on any tasks or information exchanges agreed upon during the conference.

o    Strategy reassessment: Based on the conference outcomes, reassess and adjust your case strategy if necessary.

By implementing these strategies, you can transform the discovery conference from a routine procedure into a powerful tool for case management and potential resolution. This approach allows you to gain valuable insights, potentially narrow the scope of the dispute, explore settlement possibilities, and set a constructive tone for the entire TTAB proceeding. Ultimately, this can lead to more efficient case resolution, cost savings for your client, and potentially more satisfactory outcomes for all parties involved.

The Role of Board Participation

In TTAB proceedings, parties have the option to request the participation of a Board professional (e.g., an interlocutory attorney or Board judge) in their discovery conference. This unique feature can enhance the value and productivity of the conference in certain situations. Understanding when and how to leverage Board participation can be a key strategic decision in managing your case.

When to Consider Board Participation:

1.      Complex Procedural Issues: If your case involves intricate procedural matters or unusual scheduling needs, a Board professional can provide immediate, authoritative guidance.

2.      Contentious Relationships: When there is a history of difficult interactions between parties or counsel, a Board professional can serve as a neutral moderator, helping to keep discussions productive and on-track.

3.      Novel Legal Questions: In cases that raise unique or cutting-edge legal issues, Board input can be invaluable in shaping the approach to these questions.

4.      Settlement Facilitation: If you believe there is potential for settlement but anticipate challenges in those discussions, a Board professional can help facilitate the conversation.

5.      Inexperienced Counsel: When one or both parties are represented by counsel unfamiliar with TTAB procedures, Board participation can ensure that all parties understand the process and expectations.

6.      Non-responsive Counsel: When one side has not responded to emails and phone calls to conduct the discovery conference, the party who has attempted to schedule the conference can contact Board personnel. At that time, the Board will likely order the non-responsive party to respond/participate and/or enter default.

Advantages of Board Participation:

1.      Immediate Procedural Guidance: Board professionals can provide on-the-spot answers to procedural questions, potentially avoiding future disputes.

2.      Neutral Facilitation: Their presence can help maintain a professional and productive atmosphere, especially in contentious cases.

3.      Efficient Issue Resolution: Board professionals can help parties quickly identify and focus on key issues, potentially streamlining the proceeding.

4.      Settlement Encouragement: While not acting as mediators, Board professionals can highlight opportunities for settlement and explain how various TTAB procedures might impact the case.

5.      Clarification of Expectations: They can clearly communicate Board expectations regarding disclosures, discovery, and motion practice, helping parties avoid potential pitfalls.

How to Request Board Participation:

1.      Timing: The request should be made after the answer is filed but no later than ten days before the deadline for the discovery conference.

2.      Method: Submitting a request using ESTTA is preferred; however, parties are encouraged to follow up a few days later with a phone call to the Board attorney assigned to the case if they have not yet been contacted by a Board attorney.

3.      Justification: While not required, it can be helpful to briefly explain why you believe Board participation would be beneficial.

4.      Joint Requests: Consider discussing with opposing counsel whether they agree that Board participation would be helpful. A joint request may be viewed more favorably.

Preparing for a Conference with Board Participation:

1.      Be Thoroughly Prepared: Board professionals will expect counsel to be well-versed in the case details and TTAB procedures.

2.      Identify Key Issues: Be ready to succinctly present the core issues of your case.

3.      Prepare Questions: Have a list of any procedural questions or unique issues you would like to address.

4.      Be Open to Guidance: Be prepared to adjust your approach based on the Board professional’s input.

Potential Limitations:

While Board participation can be highly beneficial, it is important to understand its limitations:

1.      Not a Ruling: Any guidance provided is informal and does not constitute a formal ruling on any issue.

2.      Not Mediation: While Board professionals may encourage settlement discussions, they do not serve as mediators.

3.      Limited Duration: The Board professional’s participation is typically limited to the scheduled conference time.

Strategic Considerations:

1.      Balancing Openness and Strategy: While Board participation can encourage openness, be mindful of not revealing too much of your strategy.

2.      Setting Precedent: The tone and agreements made in a Board-participated conference may set expectations for future interactions.

3.      Preparation is Key: The benefits of Board participation are maximized when both parties come well-prepared.

Board participation in the discovery conference can be a powerful tool when used strategically. It can provide valuable guidance, facilitate productive discussions, and potentially set the stage for a more efficient and amicable proceeding. By understanding when and how to leverage this option, you can enhance your ability to navigate TTAB proceedings effectively and serve your client’s interests optimally.

Conclusion

The discovery conference in TTAB proceedings is far more than a procedural hurdle. It is a strategic opportunity for early case assessment, efficient case management, and potential settlement. By approaching the conference with preparation, creativity, and a willingness to explore resolution options, attorneys can provide significant value to their clients and potentially avoid costly, protracted litigation.

Do not let the discovery conference be a missed opportunity. Seize it as a chance to steer the case towards an efficient and favorable resolution. Your clients—and your practice—will benefit from this strategic approach to TTAB proceedings. If you would like to discuss a trademark dispute with an experienced trademark attorney, please schedule a consultation here.