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Friday Jan 05, 2018

Trademark Trial and Appeal Board Celebrates 60 Years

Guest blog by Chief Administrative Trademark Judge Gerard Rogers and Administrative Trademark Judge Susan Hightower

Employees of the Trademark Trial and Appeal Board (TTAB) like to say: “We have our trials, but our work is appealing.” So what does that mean, exactly? The Board’s 60th birthday in 2018 offers the perfect opportunity to take a closer look.

The TTAB is an administrative tribunal within the U.S. Patent and Trademark Office (USPTO) and seeks to spur job creation by the timely adjudication of trademark disputes. The Board’s trial proceedings are similar in many ways to a federal district court, except that we don’t hear testimony from live witnesses. Instead, our proceedings are conducted outside the Board and in writing; and we make decisions based on written administrative records, although parties can opt for an oral hearing in their cases, after the presentation of evidence is complete.

Today, most cases commenced at the TTAB – around 70% – are trial cases, but most cases decided on the merits – around 75% – are ex parte appeals by applicants whose applications to register trademarks have been refused by a Trademark Examining Attorney. The trial part of the Board’s work involves deciding trademark registration disputes between two or more parties, known as inter partes proceedings. Most of these inter partes proceedings before the TTAB are oppositions, where a plaintiff attempts to prevent registration of a pending trademark. Cancellations are cases in which the plaintiff is trying to cancel an existing registration. Approximately 50 paralegals, attorneys and administrative trademark judges work on these cases. Our decisions in both ex parte appeals and inter partes proceedings can be reviewed by either a U.S. district court or the U.S. Court of Appeals for the Federal Circuit.

Things were very different 60 years ago. When the Trademark Act (15 U.S.C. §§ 1051-1141) – also commonly known as the Lanham Act – was enacted in 1946, ex parte appeals were heard directly by the Commissioner of Patents, while inter partes cases were decided by an Examiner of Trademark Interferences, with the right to appeal to the Commissioner of Patents. (Both types of cases could be delegated to an Assistant Commissioner of Patents.) Due to the volume of these cases, in a 1955 article in the Journal of the Patent Society, Assistant Patent Commissioner Daphne Leeds, who was the first woman Assistant Commissioner and an active member of the American Bar Association committee that assisted in drafting the Trademark Act, suggested creating an administrative board to handle the workload.

Leeds’ idea came to fruition on August 8, 1958, when President Eisenhower signed an amendment to Trademark Act Section 17, 15 U.S.C. § 1067. The amendment created the Trademark Trial and Appeal Board “to determine and decide the respective rights of registration” and provided for the appointment of Board members to hear and issue, by a three-member panel, final decisions in inter partes cases and ex parte appeals. Four members were appointed, and the Board consisted of those original four members through 1974. The Board still decides the merits of its cases by panels of three judges, now called administrative trademark judges – ATJs for short – appointed by the Secretary of Commerce. Board paralegals and attorneys handle motions and “interlocutory” filings to keep cases moving through the appeal and trial processes, so that they are ready for submission “on brief” or after oral argument.

The Board’s leader was known as the “Chairman of the Board” until 1993 and today has the title “Chief Administrative Trademark Judge.” Past and present Chairmen of the Board/Chief Administrative Trademark Judges include Saul Lefkowitz (1975-81), Dan Skoler (1982-84), David Sams (1984-2009), and Gerard F. Rogers (Acting Chief Judge 2009-10; Chief Judge 2010-present). The first Deputy Chief Judge, Susan Richey (2014-2017), was appointed in 2014.

Throughout the years, the TTAB has presided over a variety of cases presenting issues of “first impression” or which garnered significant public attention. While most cases involve word marks or designs such as logos, the Board has also had to rule on the registrability of scent marks, sound marks, color marks and the shape or “configuration of” products or product packaging.

TTAB decisions rarely are discussed in cases reaching the U.S. Supreme Court, but in 2015, in the case of B&B Hardware, Inc. v. Hargis Industries, Inc., 135 S. Ct. 1293, that court held that Board decisions “can be weighty enough to ground issue preclusion” when the parties that were involved in a Board case later are involved in a case in a U.S. district court. In other words, the Board decision may, in appropriate circumstances, bind the district court and bar the parties from relitigating the issue in that subsequent court proceeding.

Most recently, the U.S. Supreme Court issued a ruling in Matal v. Tam, 137 S. Ct. 1744 (2017), in which musician Simon Shiao Tam applied to register the mark “The Slants” for his dance-rock band. Tam’s application was denied as disparaging to people of Asian descent under a provision of the Trademark Act that prohibits registration of any mark that “may disparage persons, institutions, beliefs, or national symbols,” a decision which the TTAB affirmed. The U.S. Court of Appeals for the Federal Circuit, in an en banc decision, vacated the TTAB’s decision on constitutional grounds and the case wound up before the Supreme Court. The Supreme Court ultimately agreed with Tam that the disparagement clause of the Trademark Act violated the Free Speech Clause of the First Amendment.

Twice within the last decade, the Board also decided challenges brought by Native Americans seeking to cancel as disparaging the “Redskins” trademark owned by the Washington Redskins professional football team. Though both decisions were appealed to district courts, neither reached the Supreme Court. The more recent of these two cases was rendered moot by the Supreme Court’s decision in Matal v. Tam.

Examples of some other recent high-profile cases include refusals to register marks for marijuana products (illegal under federal law); disputes over who owns registrations after musical groups break up; and attempts to register someone’s name as a trademark without their permission (“Obama Bahama Pajamas,” for one).

In the years to come, the Board will continue to hear and decide trials and appeals of cutting-edge trademark issues reflecting the rapid changes in U.S. commerce and society, and the products and services that we all use. We look forward to the challenge.

For more information, please visit the TTAB page of the USPTO website

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