Alt Legal Connect Session Summary: Be Fab with TTAB: Tips for Successfully Pursuing, Defending, and Settling TTAB Disputes
Alt Legal Team | September 14, 2021
On Tuesday, September 14, Jonathan Menkes, Partner, Knobbe Martens presented the session, “Be Fab with TTAB: Tips for Successfully Pursuing, Defending, and Settling TTAB Disputes.” Jonathan discussed when and why to pursue TTAB proceedings versus litigation in district court and how to secure successful settlements.
Presentation Materials: Click here.
View Recording (free): Click here.
Introduction
Jonathan began his presentation by describing the timeline for a TTAB filing. Note that you can’t extend the discovery conference deadline. Why? The TTAB likes to encourage settlement and wants parties to do this early in the process.
Advantages of TTAB Litigation
Next, Jonathan went on to describe the advantages of pursuing litigation before the TTAB versus the District Court. For those who don’t like going to court, TTAB is great because it’s exceedingly rare to have oral hearings; basically, everything is on paper. If your writing skills are better than oral advocacy, TTAB is the right place for you! Another positive aspect of TTAB litigation is that the schedule is fairly predictable and it is routinely extended. The court lays out all case deadlines and you can routinely extend them. One practice tip: file a 60-day extension rather than a 30-day extension. This is helpful when settlement and other issues draw the case out over time. The fewer motions you file before the TTAB, the better. Another great advantage of litigating before the TTAB is that the TBMP is a great, free resource that lays out most issues that come up in TTAB litigation. It contains lots of helpful cases and examples. Lastly, the TTAB judges are administrative law judges who deeply know and understand trademark law and you don’t have to explain basic or complicated concepts to them. Some District Court judges won’t know trademark law as well.
Disadvantages of TTAB Litigation
TTAB proceedings focus only on the “four corners” of the application and not realities of infringement in the marketplace. The District Court will look more broadly. Additionally, Jonathan pointed out that in a TTAB resolution, you won’t get use restrictions, injunctive relief, damages, or attorney fees as you would in District Court. Furthermore, you won’t get monetary sanctions unless you’ve got really egregious content, but certainly not the same as what you’d get in District Court
Advantages of District Court Litigation
Jonathan explained that the advantages of District Court litigation are basically the flipside of the TTAB. In a District Court proceeding, you will be going to court. Some attorneys like being in front of a judge and prefer oral argument to mostly written arguments. Additionally, you can obtain a more substantial monetary award in District Court including damages, injunctive relief, and attorney’s fees in exceptional cases.
Disadvantages of District Court Litigation
Jonathan noted that in District Court, the response deadlines are much shorter than what you’ll have before the TTAB. Another challenge is that in addition to having to follow the FRCP and Fed Rules of Evidence, you’ll also need to read up on the local rules. When proceeding before the TTAB, you only need to follow the rules outlined in the TBMP. Another potential disadvantage that Jonathan pointed out is that you may have judges in district court who are less knowledgeable about trademark law, whereas the administrative judges at the TTAB are extremely well-versed in trademark law.
Choosing the Right Forum
Jonathan outlined a number of points to consider when deciding whether to pursue an action before the TTAB or litigating before the District Court. It’s important to consider the type of relief your client is looking for – Do they want an injunction or a TRO? Or are they just trying to keep the register clear? If you need injunctive relief, the TTAB doesn’t grant this, so you’ll need to pursue action before the TTAB. Next, you’ll need to consider how quickly your client needs relief. An opposition before the TTAB can take a very long time (2-3 years) whereas an action before District Court can provide immediate relief. Also important is cost. TTAB proceedings can spiral out of control, but are generally less expensive than District Court proceedings. Lastly, business considerations may influence your decision. For example, if you need to prevent a competitor from using a mark on social media, you need to pursue an action before District Court.
Prelitigation Considerations
Next, Jonathan discussed the prelitigation considerations that both the opposer and applicant must consider. Both parties need to consider the size of the other party, whether they are dealing with a small company or a pro se party. Also, it is important to consider if the other party is foreign or domestic. Often, foreign parties will be more likely to enter into an agreement rather than fight the matter. Another point to consider is whether the business is quickly growing, geographically expanding, or developing new product lines. Additionally, Jonathan pointed out that you need to look at who is following you and the other party on social media as C&Ds are often posted on social media – you want to avoid bad press. Of course, funding is an important consideration – look into whether your client or the other party has a pending IPO. Lastly, consider the best and worst outcomes – determine the client’s objective and look at what the other party has done in the past, whether they’ve engaged in litigation or settled.
Note on grounds for opposition: After describing the grounds for an opposition, Jonathan cited a trend he is seeing – §2(d) likelihood of confusion claims along with §2(a) claims. Jonathan described §2(a) as the right of publicity in the TTAB context. Jonathan cautioned, don’t just throw in a §2(a) claim; make sure that you’re using this claim correctly.
Deciding Whether to Pursue Settlement
Jonathan began by saying that you should consider settlement at every stage of the proceeding. Think about whether settlement is in the best interest of the client. You’ll need to determine at each stage whether the client’s objectives have changed or if their finances or business circumstances have changed, for example, if the client is about to be sold/acquired. Lastly, it’s important to impress upon clients, particularly those who are risk-averse, that settlement provides certainty by wrapping up unresolved matters.
How to Settle
Jonathan suggested to first consider whether the parties have coexisted. Perhaps it is possible to identify distinctions in use and markets in which goods/services sold. Perhaps the addition of a house mark could satisfy the parties. Also, it’s important to look at whether there have been any instances of actual confusion. Jonathan also proposed a license back. Additionally, he suggested that a business discussion could be helpful – leave the attorneys out of it and allow the business leaders to talk among themselves to come to a resolution.
Other Settlement Considerations
Consider foreign filings. Jonathan noted that it’s important to remember that not all jurisdictions permit coexistence agreements (Japan is one of them), but perhaps it is possible to wrap up foreign filings using coexistence agreements. The TTAB is pretty liberal in granting extensions to wrap up those sorts of discussions. Consent agreements can help – sending a letter or filing an opposition can help you get that agreement – which can ultimately help you get that registration. Another way to wrap things up is the exchange of money – you might think about paying the other side a certain sum to wrap up the matter, or you could spend an unpredictable sum fighting the matter before the TTAB. Next, you should think about how the settlement may impact future enforcement – does it help or hurt your position? Lastly, Jonathan suggested that you consider whether there are business reasons not to have use restrictions. If it’s a large company with turnover, but the company is expected to follow use restrictions in perpetuity, this could be setting the client up for a potential breach in the future.
Resources:
- Shameless plug: You can docket TTAB and other disputes in Alt Legal, schedule some time with our team to learn more. www.altlegal.com/training
- For some additional info on consent agreements to overcome 2(d) refusals: https://blog.altlegal.com/alt-legal-ip-docketing-blog/how-to-use-a-trademark-consent-agreement-to-overcome-a-2d-refusal
- For more information about letters of protest, check out this article: https://blog.altlegal.com/alt-legal-ip-docketing-blog/filing-letters-of-protest