Pilot Project on Telephone Disposition
of Interlocutory Matters in Inter Partes Cases
Before the Trademark Trial and Appeal Board
The Trademark Trial and Appeal Board is inaugurating, with this
notice, a pilot project in which a group of three of its staff attorneys
will hear arguments on, and dispose of, pending interlocutory motions
and related matters by telephone. The pilot project will last six months
or until the Board has collected enough data to decide whether the
expanded use of the telephone is an effective means for managing TTAB
cases.
In 1997, the Patent and Trademark Office published a notice of proposed
rulemaking. Many of the proposed rules were intended to stem perceived
abuses of the existing rules, to promote more expeditious prosecution
and defense of cases, and to help reduce the Board's backlog of pending
motions and cases ready for final decision. The PTO solicited written
comments on the various proposals and held a public hearing to receive
oral comments. A number of responses from attorneys and professional
organizations suggested that the Board make increased use of the
telephone to both hear arguments on interlocutory matters and dispose of
pending motions.
Trademark Rule 2.120(i) already provides for telephone conferences on
motions, but that provision is part of the Board's rule on discovery
and, therefore, might be viewed as limiting telephone conferences to
matters related to discovery. This notice discusses broader use of
telephone conferences and standardizes practice.
Though there will be no strict limits on the types of matters which can
be handled through telephone conferences, participating Board attorneys
will retain discretion to decide whether any particular matter can be
heard or disposed of by telephone. A decision may even be made during a
telephone conference to adjourn the conference and require submission of
written briefs, if it appears during the conference that its
continuation is not practicable. On the other hand, a conference
arranged for consideration of a particular motion will not necessarily
be limited to that motion and may be expanded to consider collateral
matters which arise during the conference.
Patent and Trademark Rule 1.2 (37 CFR 1.2), which requires all
business with the PTO be transacted in writing, and Trademark Rule
2.119(b) (37 CFR 2.119(b)), which specifies the acceptable methods for
forwarding service copies of papers filed with the Board, are waived for
cases within the pilot project. Participating Board attorneys, however,
retain the option of requiring written submissions and service of copies
of written submissions, as necessary.
Participation in the pilot project is not elective for parties or their
attorneys. [In the remainder of this notice, any reference to the
"parties" to a Board case includes attorneys representing parties to a
Board case.] Any opposition or cancellation proceeding that is on the
docket of one of the participating Board attorneys will be included in
the project, whether the case is already in existence when the pilot
project begins or is instituted after the project begins. Participating
Board attorneys will be Linda McLeod, Gerard Rogers, and Jyll Smith.
To alert parties that a newly instituted case is covered by the project,
the Board will include an appropriate notice with the notice of
institution, i.e., the notice setting the defendant's time to file an
answer or other response to the plaintiff's complaint. The notice will
also include the name and telephone number of the Board attorney
responsible for the case. No special notice will be mailed to parties
for covered cases already in existence when the pilot project begins.
When, however, the Board must issue an order for any such case after the
commencement of the project, the order may include a reference to
commencement of the pilot project and how to obtain a copy of this
announcement.
When the Board consolidates pilot project and non-pilot project cases,
the consolidation order will inform the parties whether the consolidated
cases will be within the ambit of the project. Generally, if the parent
case, i.e., the first-filed of the consolidated cases, was already
within the pilot project, then the consolidated cases will all be within
the pilot project.
Included below are discussions of (1) illustrative, non-exclusive
examples of interlocutory matters which are or are not suitable for
telephone conferences; (2) how a telephone conference may be initiated
(e.g., by the Board attorney or by a party); and (3) the mechanics of
participation and issuance of rulings.
The Board's Chief Administrative Trademark Judge or Board attorneys
participating in the pilot project periodically will seek comments on
the merits of the project from bar groups or other organizations
representing the interests of parties in Board cases, from the Public
Advisory Committee for Trademark Affairs, and from parties in project
cases. Comments received during the pendency of the project may result
in interim changes to the provisions set forth below.
I. SUITABILITY OF VARIOUS INTERLOCUTORY
MATTERS FOR TELEPHONE CONFERENCING OR
TELEPHONE DISPOSITION
The Board will neither insist that certain types of motions always be
decided by telephone conference nor automatically preclude particular
matters from being considered by telephone; however, the Board will not
decide by telephone conference any motion which, if granted, would be
dispositive of the proceeding.
Many motions, whether in the pleading phase, discovery phase or trial
phase of a Board case, will be suitable for telephone conferencing.
Examples include:
. a dispute about whether a set of interrogatories is within
the Board's limit;
. most motions to extend or suspend;
. a motion to compel attendance of a witness at a discovery
deposition;
. a motion to quash a notice of deposition; and
. a motion to compel which focuses narrowly on a small
number of specific interrogatories or document requests.
In addition, parties might wish to consider requesting a conference, or
the Board may initiate a conference, for interlocutory matters which do
not involve motions but where the parties might benefit from a better
understanding of Board practice. For example:
. Parties sometimes wrongly assume that the party which serves discovery
first in a Board case is entitled to obtain responses first; these
disputes regarding a supposed "right of priority" to obtain dis-
covery would be particularly suited to resolution by telephone
conference.
. Where a significant number of specific discovery requests are in
dispute and the Board finds it impractical to decide a motion to
compel or a motion for protective order by telephone conference,
the parties still might find it helpful to participate in a conference
focusing more generally on the areas of permissible discovery.
. Misunderstandings as to Board practice sometimes threaten to derail a
discovery deposition. A telephone conference may be used to clarify
Board practice when problematic issues arise during the taking of a
discovery or testimony deposition and threaten its progress or
completion.
Although many types of motions will be suitable for resolution by
telephone conference, certain motions will not. A motion which is
potentially dispositive, i.e., a motion which, if granted, would dispose
of a Board proceeding, cannot be decided by a Board attorney. See 37 CFR
2.127(c). Consideration of such a motion by telephone conference would
require participation of a panel of three Board judges, which is not
contemplated by this pilot project. Accordingly, potentially dispositive
motions will not be considered in telephone conferences. Examples of
potentially dispositive motions which will not be considered include the
following:
. a motion for entry of default judgment
[however, a motion by a defendant to accept a late answer or to
reopen the time for answering would be suitable for a telephone
conference];
. a motion to dismiss under Federal Rule 12(b)(6);
. a motion for judgment on the pleadings under Federal Rule 12(c);
. a motion for summary judgment
[however, a motion to strike a motion for summary judgment as
untimely could be considered in a telephone conference]; and
. a motion for entry of judgment against a plaintiff for failure to
prosecute, under Trademark Rule 2.132.
Certain motions require review of large written records and, therefore,
are not suitable for resolution by telephone conference. For example:
. A motion to compel involving a significant number of disputed
discovery requests may require the Board attorney handling the case to
sift through discovery requests, responses, and the parties' arguments
on the sufficiency of the responses.
[However, a motion to compel always must include a showing that the
parties have made a good faith attempt to resolve their discovery
dispute prior to the filing of the motion, see 37 CFR 2.120(e), and
the Board may very well hold a telephone conference on this threshold
issue.]
II. INITIATION AND PARTICIPATION
Use of the telephone conference procedure is discretionary with the
Board. The Board may schedule a conference (1) following the Board's
granting of a party's request for a conference, or (2) following the
Board's approval of a stipulation of the parties to participate in a
conference, or (3) upon the Board's own initiative. Procedures for
framing the issues for the conference and convening the conference will
vary, depending on how the telephone conference is initiated and, if
initiated by a party for the purpose of deciding a motion, whether the
party is a movant or non-movant.
Contacting the Appropriate Board Attorney
If a party wishes to request a telephone conference, or if the parties
wish to stipulate to convening of a conference, the party or parties
must contact the appropriate Board attorney by telephone or fax. If a
request made by fax is not acknowledged by a Board attorney, the party
or parties will need to follow up with a telephone call to confirm
receipt of the fax. Initial contact will be limited to a simple
statement of the nature of the issues proposed to be decided by
telephone conference, with no discussion of the merits of any issues.
During initial telephone contact, the Board attorney will decide whether
any party must file a motion or brief to frame the issues for the
conference and will issue instructions for the filling and service of
copies of such motions or briefs. If all parties to a case make a joint
request, by telephone rather than fax, for a conference, they should not
expect to have the conference begin on initial contact.
Denial of a request for a telephone conference is without prejudice to
the merits of the motion or other matter sought to be heard by
telephone. If a request is denied, the Board attorney will provide
instructions to the party or parties regarding requirements for filing
of necessary motions or briefs.
Time for Requesting Conference
A party that intends to file a motion may request a telephone conference
before it files the motion. A party that has been served with a written
motion may request a telephone conference to dispose of the motion, but
that party must contact the Board attorney soon after it receives the
service copy of the motion. A party will not be able to request a
telephone conference at or near the end of its time for responding to a
motion, so as to avoid or delay responding to the motion.
A party that files and serves a written motion without first requesting
a telephone conference should have no need to later request a conference
on that motion, absent special circumstances. For example, if a party's
motion results in a cross-motion and the party that filed the initial
motion then wishes to request a telephone conference, it may do so.
Responsibility for Arranging Conference
When the Board grants a party's request for a telephone conference, the
party has the responsibility for scheduling it for a time agreeable to
all parties and the Board attorney. The party must arrange the
conference call.
When parties stipulate to a telephone conference, they should also
decide which of them will arrange the conference, if the stipulation is
approved.
Initiation by the Board
Upon review of a case file or a motion pending in a case file, the
reviewing Board attorney may determine that a telephone conference is
appropriate. In such a case, the Board attorney will contact the parties
to arrange an appropriate time for the conference. If the conference is
being arranged to decide a pending motion, and the non-moving party has
not yet filed a response, the Board will inform the non-moving party
that it should be prepared to make an oral response to the motion during
the telephone conference. Any other instructions regarding filing of
briefs or serving of copies will be provided. The Board will arrange any
conference call it initiates.
III. CONDUCT OF CONFERENCE AND
ISSUANCE OF RULINGS
Participation
When a written motion is filed and a telephone conference is scheduled,
either on request of the non-movant or on the Board's initiative, the
subject motion may be denied with prejudice if the party that filed the
motion fails to participate in the telephone conference.
When the Board grants a moving party's request for a telephone
conference on a motion, failure of the non-movant to participate may
result in the motion being treated as conceded. See 37 CFR 2.127(a).
The Board retains the discretion to reconsider the grant or denial of a
motion that results from a party's failure to participate.
Conduct of Conference
As a general rule, the telephone conference will be limited to the
issues defined by the Board prior to, or at the commencement of, the
conference. There may be instances in which the Board attorney
determines, during a telephone conference, that the motion or matter in
issue should be decided on a written record. In such cases, the Board
attorney may halt the telephone conference and direct the filing of a
motion, or response to a motion, or both.
Parties must conduct themselves with appropriate decorum. Interruptions
are to be avoided. The Board attorney conducting the conference
generally will signal that a party may make an argument or presentation
by inviting the party to do so or by inviting a response to an argument
or presentation made by another.
The Board will not record the contents of a telephone conference,
stenographically or by audio tape. Participating parties are not
permitted to record the contents of a telephone conference.
Issuance of Rulings
The Board attorney may make rulings at the conclusion of a telephone
conference or may take the parties' arguments under advisement. In every
instance, after the resolution of a motion or matter by telephone
conference, the Board attorney will issue a written order containing all
rulings. In most instances, the Board's written order will consist of
only a brief summary of the issues and the resulting decision;
generally, the order will not include a recitation of the parties'
arguments. The decision will be forwarded to the parties by fax or mail.
Neither the filing, under 37 CFR 2.127(b), of a request for
reconsideration or modification of a decision on a motion or matter
decided after a telephone conference, nor the filing, under 37 CFR
2.146(e)(2), of a petition to the Commissioner, will, in the usual case,
result in a stay of proceedings. Any discovery, trial dates or other
deadlines set by the Board will ordinarily remain as set,
notwithstanding the request for reconsideration or petition. The Board
may, however, reset dates, as appropriate, if a request for
reconsideration is granted or if a petition to the Commissioner is
granted.
July 20, 1998 BRUCE A. LEHMAN
Assistant Secretary of Commerce and
Commissioner of Patents and Trademarks