The United States Patent and Trademark Office (USPTO), Trademark Trial and Appeal Board (TTAB) has begun a pilot program for holding Final Pretrial Conferences in certain inter partes (trial) cases to better manage and streamline opposition and cancellation proceedings that proceed to trial. The goal of the pilot is to save time and resources of parties and the TTAB, and to foster the effective and efficient presentation of evidence.
Background
The TTAB considered ways to better manage inter partes (trial) cases that could generate large, unfocused or unwieldy records. As part of its efforts, the TTAB studied the Final Pretrial Conference process used in federal district court practice.
Many district courts hold an early Initial Pretrial Conference (IPC) under Fed. R. Civ. P. 16. Prior to the IPC, the parties meet and discuss the issues covered by Fed. R. Civ. P. 26(f). The parties’ meeting(s) produce a Fed. R. Civ. P. 26(f) report, which the judge turns into an Initial Pretrial Conference Order (possibly modifying what the parties submitted) after the Fed. R. Civ. P. 16 conference. The IPC Order governs discovery, motion practice procedures and a possible trial date. The TTAB’s abbreviated version of this practice includes its Institution Notice and Trial Order, and the mandatory settlement and discovery planning conference (“discovery conference”) of the parties under Trademark Rule 2.120(a), 37 C.F.R. § 2.120(a).
At the end of discovery, most federal district courts conduct a Final Pretrial Conference (FPC). Prior to the FPC, the parties meet and discuss the issues covered by Fed. R. Civ. P. 26(a)(3), namely (i) the names and contact information for witnesses, with a specification of those witnesses expected to testify and those that may, if a need arises; (ii) witnesses whose testimony will be presented by deposition, and transcripts of pertinent parts; and (iii) identification of each document or exhibit, including summaries of other evidence, and separately identifying items the party expects to offer and those it may offer, if a need arises. The parties’ meeting(s) produce a proposed joint Final Pretrial Conference Order, which the judge turns into a Final Pretrial Conference Order (FPC Order) (possibly modifying what the parties’ submitted) after the FPC. The FPC Order sets the trial date and governs many trial procedures. Presently, the TTAB has no equivalent to this practice, even though it has the authority to order the parties to attend a pretrial conference. Trademark Rule 2.120(j)(2), 37 C.F.R. § 2.120(j)(2). See also Gen. Mills Inc. v. Fage Dairy Processing Indus. SA, 100 USPQ2d 1584, 1592 n.5 (TTAB 2011) (the Board may exercise its authority to order a pretrial conference in person at the Board’s offices in Alexandria, VA), judgment set aside on other grounds, 110 USPQ2d 1679 (TTAB 2014) (non-precedential); Blackhorse v. Pro-Football Inc., 98 USPQ2d 1633, 1634 (TTAB 2011) (Board exercised its authority to require parties to attend a pretrial conference at the Board’s offices in Alexandria, VA); Trademark Trial and Appeal Board Manual of Procedure (TBMP) § 502.06(b) (2022).
To allow it to streamline and better manage cases and trials, the TTAB has begun a final pretrial conference pilot project for cases identified as likely to generate unnecessarily large or disorganized and unwieldy records, or which the TTAB otherwise determines, based on the circumstances of individual cases, to be appropriate for inclusion in the pilot program. The pilot was designed by TTAB Administrative Trademark Judges (ATJs) and Interlocutory Attorneys (IAs) to facilitate the effective and efficient conduct of trials, which should benefit both the parties and the TTAB.
For this pilot program to work effectively, prior to the FPC each party involved in a case included in the program will provide each other party more pre-trial information than is presently required by TTAB pretrial disclosure requirements. For example, parties will provide lists of Notice of Reliance evidence and lists of all testimony/exhibits planned for trial use, which are not otherwise required. The parties also will be required to state all their objections to expected evidence of adverse parties, with limited exceptions. The TTAB, in directing the parties to prepare for the FPC also will emphasize the parties’ consideration and adoption of stipulations regarding evidence to be introduced and considered, as well as stipulations of fact.
How the Pilot Works
The pilot is not intended for every inter partes case that goes to trial. Many TTAB cases result in the creation of small or modest records and others involve agreements of the parties to utilize Accelerated Case Resolution (ACR) procedures regarding how trial will be conducted. In the pilot, the TTAB intends to focus on cases likely to create large, unfocused or unwieldy records. Initial attention will be on cases in which (A) there are a large number of claims/defenses that may be unwarranted or unlikely to be pursued successfully at trial; (B) the parties or counsel are unfamiliar with TTAB practice and could benefit from assistance to help them focus their claims, defenses, or factual and legal issues, or to understand the rules; or (C) early proceedings have been overly contentious, or have generated too many contested motions.
It is the TTAB’s intent, on a case-by-case basis, to help the parties focus their claims/defenses/objections; and winnow down the breadth of trial through stipulations and agreed-upon facts, to the extent reasonably possible.
Parties whose cases have been selected for inclusion in the pilot will be notified of the selection by an order issued by a TTAB Interlocutory Attorney (IA). The TTAB will issue the order after the close of discovery but before trial, will require the parties to discuss and agree on possible dates for an orientation conference with the Board, and will set a deadline for filing a response providing such dates to the Board. The TTAB will schedule and conduct the orientation conference, which will include the IA and an Administrative Trademark Judge (ATJ). The conference will cover how the parties should collaborate on the drafting of their proposed Final Pretrial Conference (FPC) order, file it and prepare for the FPC.
The TTAB will schedule the FPC after the Board has reviewed the proposed FPC order. At the FPC, which will include the IA and ATJ, the Board will outline necessary edits or amendments for the FPC order. When the FPC order has been finalized, the Board will approve it and issue the order as the governing document for trial.
Prior to the FPC, the parties must exchange lists and copies of anticipated trial exhibits, including those they plan to introduce through testimony or by Notice of Reliance. The parties then will jointly prepare and submit a proposed FPC Order using the TTAB’s proposed template. For cases in the pilot, separate pretrial disclosures under Fed. R. Civ. P. 26(a)(3) and Trademark Rule 2.121(a), 37 C.F.R. § 2.121(a), are eliminated.
The draft FPC Order will be used to streamline the case for trial. The draft order must include a trial plan and pretrial disclosures of all evidence to be introduced – including anticipated witnesses and planned exhibits. The draft order must also include any proposed amendments to claims and defenses and any objections to evidence (particularly for documentary evidence). Parties are encouraged to focus evidentiary objections on those that are likely to prevail and likely to affect the outcome of the case. Parties are strongly discouraged from asserting a litany of evidentiary objections (appropriate stipulations should obviate many such objections). A TTAB Administrative Trademark Judge (ATJ) and an Interlocutory Attorney (IA) will oversee the FPC. The ATJ participating in the FPC will decide whether to rule on objections before trial or defer them for later consideration.
The conference will be scheduled by the TTAB and held sometime after the close of discovery but before the usual deadline for the Plaintiff’s Pretrial Disclosures. During the conference, the ATJ and IA will review with the parties their proposed FPC Order. Once final, the FPC Order will limit what the parties may pursue at trial.
The TTAB will endeavor to issue an FPC Order governing trial soon after the FPC has concluded. The ATJ presiding over the FPC will not be one of the ATJs deciding the case.
Timing and Duration
The pilot has been implemented after consultation with stakeholders and subsequent adjustment of procedures. The TTAB will experiment and may further adjust its procedures over time. The TTAB will continue with the pilot until sufficient data has been gathered regarding the utility of the process and any needed changes to its procedures.
Final Pretrial Conference Order (Template)
Request for Input
A proposed template for the Final Pretrial Conference Order is posted at www.uspto.gov/trademarks/ttab under Practice and procedure/final rules and pilots. Stakeholders may provide feedback on the contours of the pilot and the FPC Order template, via TTABFeedback@uspto.gov.