Not all trademark disputes take place in court. In particular, disputes regarding whether a trademark can be registered or a registration should be canceled are typically heard by the Trademark Trial and Appeal Board (TTAB). Read on for an introduction to the TTAB and tips for streamlining TTAB cases using Alternative Case Resolution.
Introduction to the TTAB
The TTAB is a part of the United States Patent and Trademark Office (PTO) that handles disputes over trademark registrations. Unlike a court, the TTAB cannot grant injunctions or order money damages. The TTAB hears appeals from refusals to register marks, disputes in which a party tries to block a registration from issuing (Oppositions) or cancel an existing registration (Cancellations), and appeals from the new expungement and reexamination proceedings involving registrations.). The administrative judges who preside over the TTAB can decide whether an applicant or registrant has the right to register a trademark or to keep a registration that is being challenged.
The procedure is similar to that of a litigation: one party will file a document similar to a complaint, the other party will respond, there will be discovery, testimony, briefs, and ultimately the TTAB will make a decision. This procedure is typically less expensive and less time-consuming than pursuing a traditional federal lawsuit. Nevertheless, these cases can sometimes drag on for years and incur significant legal fees.
In an effort to help streamline TTAB cases, the TTAB offers Accelerated Case Review.
Accelerated Case Review
An Accelerated Case Review (ACR) significantly shortens the duration of a typical TTAB case. On average, it typically takes four years to bring a TTAB to trial, but ACR can cut that time in half. It can also save resources and be less expensive than a traditional TTAB trial.
The TTAB suggests four ACR Schedules lasting from 11 to 18 months. Alternatively, the parties can develop their own schedule. Shortening the time it takes to resolve a case and streamlining the procedure can result in significant savings (both monetary as well as in terms of time and other resources).
Before ACR can be implemented, a few conditions must be met. First, the parties must be willing to agree they will stipulate to the basic facts, limit discovery and cross-examination, and usually agree that the TTAB can resolve dispute questions of fact.
ACR is not appropriate in all cases. ACR is generally viable in cases where the parties can agree on the many key facts of the case, there isn't much discovery, there aren't many witnesses or an extensive record, and the parties are willing to allow the TTAB to decide factual issues in a summary judgment-like presentation. Some cases are too contentious or complex to proceed in this manner. Similarly, in some cases, a long schedule is necessary to delve deeply into the issues and develop the evidence.
Although the parties can choose ACR at any point during a case, the earlier the decision is made, the more valuable it will be in terms of saving time and money.
If you have questions about the TTAB or ACR, please contact us.