trademark trial and appeal board manual of procedure (tbmp)

1305 Pages·2011·7.05 MB·English

TRADEMARK TRIAL
AND
APPEAL BOARD
MANUAL OF
PROCEDURE
(TBMP)
Third Edition
May 2011
United States Patent and Trademark Office
United States Patent and Trademark Office
PREFACE TO THE THIRD EDITION
The second edition of the Trademark Manual of Board Procedure (“TBMP”) last
was revised in 2004. Since then, practice before the Trademark Trial and Appeal
Board (“Board”) has significantly changed. This third edition of the TBMP
incorporates these many and varied changes in a revised format.
Perhaps the most significant practice development captured in this third edition of
the manual is the Board’s adoption of a modified disclosure and conferencing
regime for inter partes proceedings commenced on or after November 1, 2007. In
an effort to align Board practice more closely with the federal court practice
familiar to many who litigate before the Board, all parties to opposition, cancellation
and concurrent use proceedings are now obliged to conduct a discovery conference
to discuss settlement, narrowing of claims and defenses, and plans for disclosure
and discovery. In addition, parties must now make initial, expert testimony, and
pretrial disclosures. Revisions reflecting the adoption of the Board’s disclosure and
conferencing regime are found throughout this edition, and discussed extensively in
Chapters 400 and 700.
Next, this edition of the TBMP highlights the Board’s emphasis on Accelerated Case
Resolution (“ACR”), an alternative method of dispute resolution designed to
provide parties with a more efficient and less costly method of obtaining a decision
on the merits, thus holding the potential for savings in party resources. A detailed
discussion of ACR and ACR-type trial efficiencies can be found in Chapters 500 and
700. Where relevant, ACR is also mentioned in other chapters or sections of the
TBMP.
Lastly, this updated edition of the TBMP reflects the shift in Board practice from
paper to electronic filing and record keeping, and the predominant use of the
Board’s electronic filing system (“ESTTA”) and electronic case file system
(“TTABVUE”) by practitioners, both of which are accessible at the Board’s web
page. Chapter 100 now includes a detailed explanation of ESTTA, and tips for
practitioners regarding the use of ESTTA are found throughout the manual.
These are only a few of the developments in Board practice reflected in this latest
edition. In addition to many others, practitioners will also find more detailed
explanations regarding Madrid Protocol applications in Chapters 200 and 600 as
well as concurrent use proceedings (Chapter 1100) and ex parte proceedings
(Chapter 1200).
This third edition incorporates all statutory changes, as well as changes to the
Trademark Rules of Practice and Federal Rules where applicable as of November
15, 2010. Updated Board and Federal Circuit case citations have been added as
well, to reflect the burgeoning list of precedential orders and decisions issued by the
Board since 2006, which now includes close to 300 entries.
In terms of formatting, this edition of the TBMP eliminates the use of footnotes,
opting instead for notes at the end of each section or subsection to facilitate ready
reference to the associated text. All cross references to the TBMP are now included
in the text. For practical ease, the updated version also eliminates the use of
“supra” to refer to a previously cited case or authority. All citations to older
“TIPS” articles published in the Trademark Reporter have been removed.
Practitioners interested in references to these articles may view the second edition of
the TBMP, which remains available at the Board home page of the USPTO web site.
In keeping with the Board’s commitment to innovations in electronic government,
this edition is available online at the Board home page of the USPTO web site in a
searchable format. This edition of the TBMP will facilitate searching of its contents
by readers and more frequent and easier updating of the manual by the Board.
Given the Board’s continuing commitment to issue a significant number of
precedential orders and decisions, and the evolving nature of Board practice, the
Board intends to update the TBMP on a frequent basis.
The many Board judges and attorneys who contributed to the thorough updating of
the TBMP are deserving of thanks from the Office and user groups who will benefit
from this resource. In particular, thanks are extended to Administrative
Trademark Judge Carlisle Walters, who developed an initial framework for the
revision project, and most of all to Administrative Trademark Judge Angela Lykos,
who has labored tirelessly for many months to supervise the work of the
participating judges and attorneys. All users of the manual will be well-served by
the attention to detail exercised by Judge Lykos.
Gerard Rogers
Chief Administrative Trademark Judge
Trademark Trial and Appeal Board
INTRODUCTION
The purpose of this manual is to provide practitioners with basic information
generally useful for litigating cases before the Trademark Trial and Appeal Board.
The manual does not modify, amend, or serve as a substitute for any existing
statutes, rules, or decisional law and is not binding upon the Board, its reviewing
tribunals, the Director, or the USPTO. Cf., In re Wine Society of America Inc., 12
USPQ2d 1139 (TTAB 1989). Rather, the manual describes current practice and
procedure under the applicable authority and incorporates amendments to the
Trademark Rules of Practice, Trademark Act and Federal Rules, where applicable,
as of November 15, 2010. The guidelines set forth in the manual do not have the
force and effect of law. They have been developed as a matter of internal office
management and are not intended to create any right or benefit, substantive or
procedural, enforceable by any party against the office.
The manual is devoted primarily to opposition and cancellation proceedings, the
two most common types of inter partes proceedings before the Board. Nonetheless,
the manual includes a chapter of general information useful for all proceedings and
chapters on interference proceedings, concurrent use proceedings, and ex parte
appeals to the Board.
The manual will be updated periodically.
The Board welcomes suggestions for improving the content of the manual.
Suggestions and comments should be addressed as follows:
[email protected], or
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
ATTENTION: TBMP editor
The title of the manual is abbreviated as "TBMP". A citation to a section of the
manual may be written as "TBMP § _____" (e.g. "TBMP § 110.01," "TBMP
§ 113.06," etc.).
CHAPTER 100
GENERAL INFORMATION

101 APPLICABLE AUTHORITY
101.01 STATUTE AND RULES OF PRACTICE
101.02 FEDERAL RULES
101.03 DECISIONAL LAW
101.04 DIRECTOR’S ORDERS AND NOTICES
101.05 TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE
102 NATURE OF BOARD PROCEEDINGS
102.01 JURISDICTION OF BOARD
102.02 TYPES OF BOARD PROCEEDINGS
102.03 GENERAL DESCRIPTION OF BOARD PROCEEDINGS
103 LOCATION AND ADDRESS OF BOARD
104 BUSINESS TO BE CONDUCTED IN WRITING
105 CONTACT WITH BOARD PERSONNEL
106 IDENTIFICATION, SIGNATURE, AND FORM OF SUBMISSIONS
106.01 IDENTIFICATION OF SUBMISSIONS
106.02 SIGNATURE OF SUBMISSIONS
106.03 FORM OF SUBMISSIONS
107 HOW AND WHERE TO FILE PAPERS AND FEES
108 FILING RECEIPTS
109 FILING DATE
110 CERTIFICATE OF MAILING PROCEDURE AND ELECTRONIC FILING USING
ESTTA
110.01 CERTIFICATE OF MAILING – IN GENERAL
110.02 REQUIREMENTS FOR CERTIFICATE
110.03 SUGGESTED FORMAT
110.04 LOCATION OF CERTIFICATE
110.05 LOSS OF CERTIFICATE OF MAILING
110.06 NO RECEIPT OF CORRESPONDENCE BEARING CERTIFICATE
110.07 EXCLUDED FILINGS
110.08 A CERTIFICATE OF MAILING OR TRANSMISSION IS NOT ...
110.09 ELECTRONIC FILING USING ESTTA
110.09(a) Plan Ahead
110.09(b) ESTTA is Mandatory for Some Filings
110.09(c) Attachments to ESTTA Filings
110.09(c)(1) In General
110.09(c)(2) Form of ESTTA Attachments
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110.09(c)(3) Size Limitations
110.09(d) Service of ESTTA Filings
110.09(e) Questions About ESTTA Filing
111 “EXPRESS MAIL” PROCEDURE
111.01 IN GENERAL
111.02 REQUIREMENTS FOR “EXPRESS MAIL”
111.03 QUESTIONABLE DATE OF MAILING

112 TIMES FOR TAKING ACTION

113 SERVICE OF PAPERS

113.01 REQUIREMENT FOR SERVICE OF PAPERS
113.02 REQUIREMENT FOR PROOF OF SERVICE
113.03 ELEMENTS OF CERTIFICATE OF SERVICE
113.04 MANNER OF SERVICE
113.05 ADDITIONAL TIME FOR TAKING ACTION AFTER SERVICE BY MAIL
113.06 A CERTIFICATE OF SERVICE IS NOT ...
114 REPRESENTATION OF A PARTY
114.01 PARTY MAY REPRESENT ITSELF
114.02 SELECTION OF ATTORNEY
114.03 REPRESENTATION BY ATTORNEY
114.04 REPRESENTATION BY NON-LAWYER (I.E., “OTHER AUTHORIZED
REPRESENTATIVE”)
114.05 REPRESENTATION BY FOREIGN ATTORNEY OR AGENT
114.06 INDIVIDUAL NOT ENTITLED TO REPRESENT OTHERS
114.07 DESIGNATION OF DOMESTIC REPRESENTATIVE
114.08 ADVERSE PARTIES REPRESENTED BY SAME PRACTITIONER
115 CONDUCT OF PRACTITIONER
115.01 APPLICABLE RULES
115.02 DISCIPLINARY PROCEEDINGS
115.03 PETITIONS TO DISQUALIFY
116 TERMINATION OF REPRESENTATION
116.01 REVOCATION OF AUTHORITY
116.02 WITHDRAWAL AS REPRESENTATIVE--IN GENERAL
116.03 WHEN WITHDRAWAL IS MANDATORY
116.04 WHEN WITHDRAWAL IS PERMISSIVE
116.05 REQUEST TO WITHDRAW
117 CORRESPONDENCE - WITH WHOM HELD
117.01 IN GENERAL
117.02 WHEN THERE IS MORE THAN ONE ATTORNEY OR OTHER AUTHORIZED
REPRESENTATIVE
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117.03 CONTINUATION OF CORRESPONDENCE WITH REPRESENTATIVE IN
APPLICATION OR REGISTRATION WHEN INTER PARTES PROCEEDING
COMMENCES
117.04 CONTINUATION OF CORRESPONDENCE WITH REPRESENTATIVE OF
POTENTIAL OPPOSER AFTER OPPOSITION IS FILED
117.05 CORRESPONDENCE AFTER REVOCATION OR WITHDRAWAL
117.06 CORRESPONDENCE WITH FOREIGN PARTY
117.07 CHANGE OF ADDRESS
117.08 INDIVIDUAL NOT ENTITLED TO REPRESENT OTHERS
118 PAYMENT OF FEES
118.01 LISTS OF FEES AND CHARGES
118.02 FEES PAYABLE IN ADVANCE
118.03 METHOD OF PAYMENT--IN GENERAL
118.04 METHOD OF PAYMENT--DEPOSIT ACCOUNTS
119 PAPERS AND FEES GENERALLY NOT RETURNABLE
119.01 FEE REFUNDS--GENERAL RULE
119.02 PAPERS AND FEES--EX PARTE CASES
119.03 PAPERS AND FEES--INTER PARTES CASES
120 ACCESS TO FILES
120.01 NON-CONFIDENTIAL FILES
120.02 CONFIDENTIAL MATERIALS
120.03 FILES OF TERMINATED PROCEEDINGS
121 COPYING OF FILES
122 CERTIFICATION
122.01 COURT REQUIREMENTS
122.02 CERTIFIED COPIES
123 STATUS INFORMATION FOR APPLICATIONS, REGISTRATIONS AND BOARD
PROCEEDINGS
124 ACTION BY ASSIGNEE

CHAPTER 200
EXTENSIONS OF TIME TO OPPOSE

201 IN GENERAL
202 TIME FOR FILING REQUEST
202.01 IN GENERAL
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202.02 DATE OF PUBLICATION OF MARK
202.03 PREMATURE REQUEST
202.04 LATE REQUEST
203 FORM OF REQUEST
203.01 GENERAL CONSIDERATIONS
203.01(a) Paper Or Electronic Filings
203.01(b) Note On Electronic Filing With ESTTA
203.02 IDENTIFYING INFORMATION
203.02(a) In General
203.02(b) Requirement For Identification Of Potential Opposer
203.03 SIGNATURE
203.04 SERVICE
203.05 DUPLICATE REQUESTS
204 FEE
205 MARK ON SUPPLEMENTAL REGISTER NOT SUBJECT TO OPPOSITION
206 WHO MAY FILE AN EXTENSION OF TIME TO OPPOSE
206.01 GENERAL RULE
206.02 REQUEST FOR FURTHER EXTENSION FILED BY PRIVY
206.03 MISIDENTIFICATION OF POTENTIAL OPPOSER
207 REQUIREMENTS FOR SHOWING OF CAUSE; EXTRAORDINARY
CIRCUMSTANCES
207.01 IN GENERAL
207.02 EXTENSIONS UP TO 120 DAYS FROM THE DATE OF PUBLICATION
207.03 EXTENSIONS BEYOND 120 DAYS FROM THE DATE OF PUBLICATION
208 ESSENTIAL ELEMENT OMITTED
209 ACTION BY BOARD ON REQUEST
209.01 SUSPENSION POLICY
209.02 DETERMINATION OF EXTENSION EXPIRATION DATE
210 OBJECTIONS TO REQUEST
211 RELIEF FROM ACTION OF BOARD
211.01 REQUEST FOR RECONSIDERATION
211.02 RELIEF AFTER INSTITUTION OF OPPOSITION
211.03 PETITION TO THE DIRECTOR
212 AMENDMENT OF APPLICATION DURING OR AFTER EXTENSION
212.01 JURISDICTION TO CONSIDER AMENDMENT
212.02 CONDITIONS FOR APPROVAL OF POST-PUBLICATION AMENDMENT
212.03 FORM OF AMENDMENT
212.04 ACTION BY BOARD -- UPON RECEIPT OF AMENDMENT
212.05 ACTION BY BOARD -- DURING CONSIDERATION OF AMENDMENT BY
TMEO
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212.06 ACTION BY BOARD -- AFTER CONSIDERATION OF AMENDMENT BY
TMEO
212.07 AMENDMENT DURING OPPOSITION
213 EFFECT OF RESTORATION OF JURISDICTION
214 EFFECT OF REPUBLICATION
215 EFFECT OF LETTER OF PROTEST
216 INADVERTENTLY ISSUED REGISTRATION
217 RELINQUISHMENT OF EXTENSION
218 ABANDONMENT OF APPLICATION
219 AMENDMENT TO ALLEGE USE; STATEMENT OF USE
220 INADVERTENT ISSUANCE OF A NOTICE OF ALLOWANCE

CHAPTER 300
PLEADINGS

301 TYPES OF BOARD PROCEEDINGS
301.01 IN GENERAL
301.02 MARK ON SUPPLEMENTAL REGISTER NOT SUBJECT TO
OPPOSITION
301.03 MARK FILED UNDER THE MADRID PROTOCOL IS SUBJECT
TO OPPOSITION
302 COMMENCEMENT OF PROCEEDING
303 WHO MAY OPPOSE OR PETITION TO CANCEL
303.01 IN GENERAL
303.02 MEANING OF THE TERM “PERSON”
303.03 MEANING OF THE TERM “DAMAGE”
303.04 FEDERAL TRADE COMMISSION
303.05 OPPOSITION FILED DURING EXTENSION OF TIME TO
OPPOSE
303.05(a) General Rule
303.05(b) Opposition Filed by Privy
303.05(c) Misidentification of Opposer
303.05(d) Misidentification of Applicant or Respondent
303.06 JOINT OPPOSERS OR PETITIONERS
304 PROCEEDING AGAINST MULTIPLE CLASS APPLICATION OR
REGISTRATION
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305 CONSOLIDATED AND COMBINED COMPLAINTS
305.01 CONSOLIDATED COMPLAINT
305.02 COMBINED COMPLAINT
306 TIME FOR FILING OPPOSITION
306.01 IN GENERAL
306.02 DATE OF PUBLICATION OF MARK
306.03 PREMATURE OPPOSITION
306.04 LATE OPPOSITION
307 TIME FOR FILING PETITION TO CANCEL
307.01 PETITION THAT MAY BE FILED AT ANY TIME AFTER
REGISTRATION
307.02 PETITION THAT MUST BE FILED WITHIN FIVE YEARS
FROM THE DATE OF REGISTRATION
307.02(a) In General
307.02(b) Trademark Act § 14, 15 U.S.C. § 1064, Limitation is
Independent of Trademark Act § 15, 15 U.S.C. § 1065, Affidavit
307.02(c) Factors Affecting the Five-Year Period
307.02(c)(1) Reliance on Registration by Plaintiff
307.02(c)(2) Amendment of Registration
307.03 PREMATURE PETITION TO CANCEL
307.04 LATE PETITION TO CANCEL
308 FILING FEES
308.01 FEE FOR FILING OPPOSITION
308.01(a) In General
308.01(b) Insufficient Fee
308.02 FEE FOR FILING PETITION TO CANCEL
308.02(a) In General
308.02(b) Insufficient Fee
308.02(c) Petition Filed by Federal Trade Commission
308.02(d) Fee for Counterclaim
308.03 FEES FOR JOINT OPPOSERS OR PETITIONERS
308.04 FEES FOR PROCEEDING AGAINST MULTIPLE CLASS
APPLICATION OR REGISTRATION
308.05 FEES FOR CONSOLIDATED AND COMBINED COMPLAINTS
309 FORM AND CONTENT OF OPPOSITIONS AND PETITIONS TO
CANCEL
309.01 IN GENERAL
309.02 FORM OF COMPLAINT
309.02(a) Format for Complaint
309.02(b) Signature of Complaint
309.02(c) Service of Complaint
309.02(c)(1) Service of Opposition on Applicant
309.02(c)(2) Service of Petition on Respondent
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