Fordham 2014: TTAB session

Smart contributor

The IPKat, who -- despite his most strenuous efforts -- could not be in more than three places at the same time -- is hugely grateful to Gordon Humphreys (Office for Harmonisation in the Internal Market Mediator and Board of Appeal member, right) for donning cat-mask and whiskers at last week's Fordham IP Conference [for details of which see today's earlier post here] and producing the following report for us on a session which might otherwise have gone unnoticed by many of the ~~aliens~~ non-USians present. Writes Gordon:

On Friday 16 April at the Fordham IP Conference a large slice of the morning session on trade marks was given over to the work of the United States Trademark Trial and Appeal Board (TTAB).

Chief Judge Gerard F. Rogers set the scene with a presentation on how the TTAB had tried to combat increases in the opposition workload in 2010 that had led to backlogs in 2012 and 2013. Having explained that these problems had been caused by a combination of increases in trade mark examinations, the discovery process and delays caused by extensions and suspensions of proceedings, the TTAB had taken the initiative in making opposition proceedings more proactive. For example, phone conferences are now extensively used to resolve discovery, a standard protective order has been created, the online Electronic System for Trademark Trials and Appeals (ESTTA) system is used to access electronic files and email service is now permitted. In addition, the notice of reliance has been adapted to allow for internet evidence and the TTAB issues 40-50 precedents every year that are widely circulated among staff. Another interesting development was that the TTAB has been busy updating its manual of procedure, which is now done annually and leaves sections available for comment. Annual round tables with stakeholders on performance measures and accelerated case resolution (conducting deposition proceedings in writing rather than orally) are also some of the other 'added value' measures that the TTAB has brought to opposition proceedings.

Smart Balance
The next part of the session consisted of a live TTAB opposition hearing held at Fordham Law School's moot court room. Judges Rogers, Masiello and Ritchie sat in the hearing. In this live opposition the mark 'Smart Balance', used for 'butter substitutes' and for which extension to frozen food was sought, was contested by the owners of the mark 'Smart Ones' for 'frozen food entrées'. Unsurprisingly, much of the argument centred on whether 'Smart' had been shown by survey evidence to be unimportant in trade mark terms through common use. The TTAB judges also heard arguments on the various connotations of the composite words both individually and as a whole.

Smart Ones (that's smart
phones" without the "ph" ...
Concepts familiar to European practitioners of 'dominance', needing to look at the whole and not 'slice and dice', the level of sophistication of consumers in terms of purchasing decision and the closeness of the goods in the grocery store were also examined. What stood out was the apparent importance of survey evidence of brand loyalty, percentage-rated likelihood of consumers based on expert evidence, evidence of coexistence on the market and testimonies as well as sales and advertising expenditure and internet evidence. Issues of coaching of survey subjects, errors and admissibility of evidence were also discussed.

Smart witness
There then followed a TTAB judges' panel at which Jeffrey A. Handelman of Brinks, Gilson & Lione of Chicago asked the TTAB judges for practical tips for practitioners. Some ideas that were put forward were to use the brief as a road map for the TTAB, make sure that facts that need to be proved are proved and amend the pleadings as appropriate. The TTAB also cautioned about placing too much emphasis on real world use of goods and services (except where fame or third party use is involved). Finally, it was pointed out that oral argument should be designed to enable the TTAB to 'get a handle' on highly technical goods or services and that depositions should make sure that witnesses answer in complete sentences and that compound questions should be avoided.

TTAB? No, TABBY
The final part of the morning's session was a comparison between TTAB and OHIM opposition practice. Gordon Humphreys gave a short account of how OHIM's Boards of Appeal follow their written procedure, involving the deliberation and drafting process, emphasizing that the linguistic challenges posed by the EU: 28 have to be factored in, when for example one of the marks is meaningful in a particular language. Robert L. Raskopf of Quinn Emanuel Urquhart & Sullivan, New York, saw the European system as a rather alien world where much would be lost through the inability to seek discovery or cross-examine witnesses. Prof. Dr. Peter Ruess of International School of Management, Frankfurt and Arnold Ruess, Düsseldorf, [this is actually just one person, explains Merpel, and he's called Peter -- but he's very clever and does seem to have two brains] tried to reconcile the two systems by pointing out that they both offer relative advantages and inconveniences, particularly that in much of Continental Europe it is relatively inexpensive to litigate with the result that even some quite small towns in Germany have a multitude of judges and cases. He also pointed out that most German judges would not be impressed by evidence of actual confusion of members of the relevant public [Is that because they require better evidence than evidence of actual confusion, which would be impossible to supply, Merpel muses, or because they still believe that confusion is a state of law and not a state of fact? ]. Prof. Marshall Leaffer of Maurer School of Law, Indiana University also spoke about his experience of the US system, pointing out that its cost and complexity - particularly in discovery - perhaps meant that there could be something to be learnt from simpler, more inexpensive ways of doing things. Prof. Jeremy Sheff of St. John's University School of Law, New York was also interested in drawing drawing on strengths from the two systems.