1 00:00:06,186 --> 00:00:06,524 2 00:00:06,524 --> 00:00:14,560 >> HOPE SHIMABUKU: Now, I have the opportunity to transition us to the TTAB section of the program. 3 00:00:14,560 --> 00:00:21,680 And the first speaker will the honorable Mark Thurmon. Judge Thurmon serves as Deputy Chief 4 00:00:21,680 --> 00:00:26,960 Judge as an administrative trademark judge at the Trademark Trial and Appeal Board at the USPTO. 5 00:00:27,680 --> 00:00:33,520 Judge Thurmon has served on board panels for appeals and trials. He assists the Chief Judge in 6 00:00:33,520 --> 00:00:40,880 the administration of all board operations. Prior to joining the Board in 2019, Judge Thurmon was a 7 00:00:40,880 --> 00:00:49,600 law professor at the University of Florida for 15 years. Judge Thurmon worked with private practice 8 00:00:49,600 --> 00:00:52,480 intellectual property law firms for 20 years. 9 00:00:53,120 --> 00:01:01,280 Prior to law school, he served with distinction on the USS Narwhal, a fast tack nuclear submarine. 10 00:01:01,280 --> 00:01:07,120 Judge Thurmon earned his law degree from Duke University and his BS in electrical engineering 11 00:01:07,120 --> 00:01:14,560 from LSU. Judge Thurmon is going to provide an overview of the Trademark Trial and Appeal Board. 12 00:01:14,560 --> 00:01:28,160 >> MARK THURMON: I'm thrilled to provide you an introduction to the Trademark Trial and Appeal 13 00:01:28,160 --> 00:01:37,120 Board or the TTAB as Hope properly pronounced our title. Our sister board is frequently known as 14 00:01:37,120 --> 00:01:46,480 PTAB. We like to pronounce each of the letters. I'm going to be the first of a number of folks 15 00:01:46,480 --> 00:01:55,680 you'll see over the next few hours. We have eight of our judges beyond me who are going to be doing 16 00:01:55,680 --> 00:02:01,360 parts of the presentation here today. I think that may very well be a record for us. Let's go ahead 17 00:02:01,360 --> 00:02:06,160 and get this started. We'll go to the next slide and quickly talk about who we are. 18 00:02:06,800 --> 00:02:13,960 So we have three primary groups of individuals who do work on our cases. We have our administrative 19 00:02:13,960 --> 00:02:20,720 judges, 24 of them now. That does not include the Chief Judge and me. If you include us, that's 26. 20 00:02:21,680 --> 00:02:30,960 There are 19 interlocutory attorneys now and 10 paralegals. I'll talk about what each of these do. 21 00:02:30,960 --> 00:02:38,240 The others are management administration and support and generally doing things necessary to 22 00:02:38,240 --> 00:02:43,760 make sure that our three groups of professionals can get our cases through the system and get our 23 00:02:43,760 --> 00:02:44,560 decisions out. 24 00:02:45,520 --> 00:02:54,240 Next slide. What kind of cases do we decide? The Board is an administrative tribunal. That means 25 00:02:54,240 --> 00:02:57,760 we're an administrative court, so to speak. We  26 00:02:57,760 --> 00:03:00,080 were created under the  Lanham Act. We actually were 27 00:03:00,080 --> 00:03:11,040 not created in 1946, though. The board was created by an amendment in 1958. So we are a mere 63 years 28 00:03:11,040 --> 00:03:14,560 old, not quite the full 75 years that the Lanham Act is. 29 00:03:15,520 --> 00:03:23,040 We resolve issues related to the registration of trademarks. That's it. We do not resolve trademark 30 00:03:23,040 --> 00:03:28,800 infringement. We don't resolve unfair competition claims. We don't decide copyright infringement and 31 00:03:28,800 --> 00:03:33,520 we never, ever decide patent issues, not at all. 32 00:03:34,480 --> 00:03:42,080 Next slide. Let's look more closely at the groups of professionals I mentioned earlier. Our judges 33 00:03:42,080 --> 00:03:47,280 decide our cases. They preside at oral hearings as well. You'll see one of these hearings. You'll see 34 00:03:47,280 --> 00:03:54,880 a live hearing coming up a little later in the program today. We handle appeals and trial cases 35 00:03:54,880 --> 00:03:56,640 as well. I'll talk more about those later. 36 00:03:57,200 --> 00:04:05,200 The main thing I want to tell you about our judges is these folks really know what they're doing. Our 37 00:04:05,200 --> 00:04:12,800 average judge at the board has about 25 to 30 years or more experience in trademark law. They 38 00:04:12,800 --> 00:04:18,560 sit in panels of three to decide your cases. If you think about that, when we convene a panel of 39 00:04:18,560 --> 00:04:26,880 judges to decide our cases, you have 75 to 90 years of combined trademark experience going into 40 00:04:26,880 --> 00:04:31,280 that decision. So this is a really expert tribunal. 41 00:04:32,320 --> 00:04:40,640 They also work with interlocutory attorneys which is on the next slide. Interlocutory attorneys are 42 00:04:40,640 --> 00:04:46,800 our case managers. They handle the pretrial stages of our trial cases. They don't work on appeals, 43 00:04:47,440 --> 00:04:54,000 only on the trial cases. They serve a role similar to what the federal magistrates do in the federal 44 00:04:54,000 --> 00:05:00,800 litigation system. They're the primary case managers. And they resolve contested motions. On 45 00:05:00,800 --> 00:05:05,800 dispositive motions just like a federal magistrate judge that has to send them up to the federal 46 00:05:05,800 --> 00:05:15,600 district judge, they work with our panel of three judges who ultimately sign off on dispositive 47 00:05:15,600 --> 00:05:22,720 motion decisions. On the nondispositive motions they resolve them entirely on their own. They 48 00:05:22,720 --> 00:05:29,040 conduct conferences to try to resolve discovery disputes. They have conferences on any kind of 49 00:05:29,040 --> 00:05:30,160 contested motion. 50 00:05:30,160 --> 00:05:38,800 Their general role is to manager our cases as they're going through the system. Next slide. The 51 00:05:38,800 --> 00:05:48,400 paralegals handle the cases on the front end. They will touch every single case that comes into the 52 00:05:48,400 --> 00:05:56,000 board. They work on all trial cases, appeal cases. In trial cases they will draft and issue orders on 53 00:05:56,000 --> 00:06:03,360 uncontested motions. If they've agreed to an extension of time, the paralegal can handle those 54 00:06:05,600 --> 00:06:12,320 issues. They draft orders in appeal cases. For example, if the applicant and the examining 55 00:06:12,320 --> 00:06:18,480 attorney want the case to go back to examination, they can issue a remand order. They deal with 56 00:06:18,480 --> 00:06:20,320 extensions of time to oppose. 57 00:06:21,360 --> 00:06:30,960 Next slide. This slide is a bit of a digression. This is not really something about just the board. 58 00:06:30,960 --> 00:06:36,640 But I do want to mention to you the very important rule adopted about two years ago, the US counsel 59 00:06:36,640 --> 00:06:44,240 rule, which states that all foreign parties it's defined there from the quote from the rule must be 60 00:06:44,240 --> 00:06:54,080 represented by an attorney in trademark matters. That includes proceeding as the TTAB. A precedent 61 00:06:54,080 --> 00:06:59,600 we issued last year to ensure that it does apply to board proceedings. 62 00:07:00,160 --> 00:07:07,200 Next slide. What kind of proceedings are we talking about? Well, we handle appeals. We'll talk 63 00:07:07,200 --> 00:07:12,960 a little more about each of these. But appeals are from the process that Jason was telling you about. 64 00:07:12,960 --> 00:07:17,120 If you're not satisfied with the outcome of that, you can appeal to the board. 65 00:07:18,000 --> 00:07:25,840 We also handle had a group of trial cases we call them. These are adversarial cases, those are 66 00:07:25,840 --> 00:07:33,360 oppositions which happens during the application process. Cancelation is a proceeding to challenge 67 00:07:34,080 --> 00:07:40,080 an issued registration. And then concurrent use proceedings allow for the possibility of a 68 00:07:40,080 --> 00:07:42,800 geographically restricted registration. 69 00:07:43,680 --> 00:07:47,760 These are important, the concurrent use. But we don't get many of them. We probably have less than 70 00:07:47,760 --> 00:07:49,520 ten of those per year. 71 00:07:50,720 --> 00:07:58,880 Next slide. So let's focus now on some of the types of cases that we handle. I'm going to go 72 00:07:58,880 --> 00:08:05,200 through a few examples of some of these cases which may be more interesting. First of all, our 73 00:08:05,200 --> 00:08:10,960 appeals, as we said, these are from examination. It has to come from a final office action. So you 74 00:08:10,960 --> 00:08:18,480 get two chances in examination to resolve your issues. If you can't and you want another shot at 75 00:08:18,480 --> 00:08:19,840 it, you can appeal to the Board. 76 00:08:20,560 --> 00:08:28,320 Next slide. You can request an oral hearing as part of the appeal. That's not particularly 77 00:08:28,320 --> 00:08:35,600 common. Only about 10% of our appeal cases request hearings. There is now a fee. It's substantial. 78 00:08:35,600 --> 00:08:42,480 There's a $500 fee now to request an oral hearing that went into effect in early January of this 79 00:08:42,480 --> 00:08:42,720 year. 80 00:08:45,840 --> 00:08:51,440 Hearings are handled by a panel of three judges. You will see one of those in action a little bit 81 00:08:51,440 --> 00:08:51,760 later. 82 00:08:53,040 --> 00:08:58,640 The applicant presents its arguments. It has 20 minutes to do so. The examining attorney will then 83 00:08:58,640 --> 00:09:03,360 present arguments on behalf of the Office. That's basically it for the hearing. 84 00:09:03,360 --> 00:09:10,320 Now one important part any party can participate in our hearings remotely, the same way I'm 85 00:09:10,320 --> 00:09:19,200 participating this morning. I'm coming you from sunny Denver, Colorado. I'm in the Rocky Mountain 86 00:09:19,200 --> 00:09:26,080 regional office. I recently relocated here. Just to show you the geographical presentation 87 00:09:27,120 --> 00:09:35,360 today. We've come from Alexandria, Virginia, from Texas, and from Denver, Colorado. So we've been 88 00:09:35,360 --> 00:09:40,560 doing these kinds of things for a long time. When we moved into the pandemic conditions, our 89 00:09:40,560 --> 00:09:46,400 hearings are entirely done virtually now. We used the hybrid model before. And we'll move back to 90 00:09:46,400 --> 00:09:53,840 that after the current conditions have fully lifted. So there will always be the opportunity 91 00:09:53,840 --> 00:10:00,080 for any party to participate from anywhere that they have an appropriate connection for one of our 92 00:10:00,080 --> 00:10:04,160 hearings. Next slide. 93 00:10:04,160 --> 00:10:10,640 So now I'm going to go through a few examples. A few actual cases we've decided. The next few are 94 00:10:10,640 --> 00:10:26,720 going to all be appeals. The first one was the application to register the mark Obama Pajama. The 95 00:10:26,720 --> 00:10:34,960 application had been refused under Section 1052c. It says you cannot register a mark that identifies 96 00:10:34,960 --> 00:10:41,280 a particular living individual unless you have that person's written content. The applicant here 97 00:10:41,280 --> 00:10:46,720 did not have the written consent of Barack Obama, so the application was refused. 98 00:10:50,960 --> 00:10:57,280 The next case we'll talk about is the nearly descriptive basis. As Jason was explaining to you 99 00:10:57,280 --> 00:11:05,520 earlier, a term that is merely descriptive is not a trademark. You cannot register it. In this case 100 00:11:06,400 --> 00:11:12,240 an ice cream company attempted to register the name scoop for ice cream. The Board said no, 101 00:11:13,280 --> 00:11:19,760 because that just describes a portion of ice cream, a scoop of ice cream. The image you show on 102 00:11:19,760 --> 00:11:27,520 the slide here shows the way the applicant was using the mark. So the cartoon mascot figure, I 103 00:11:27,520 --> 00:11:32,080 guess, there, it's not really legible here because it's too small. 104 00:11:32,080 --> 00:11:39,076 But if you look below the bow tie on the white uniform shirt that's where the scoop was being 105 00:11:39,076 --> 00:11:45,760 used. Scoop was being used as the name of their mascot. That's the way they were using the mark. 106 00:11:47,200 --> 00:11:52,320 That does not have anything to do with the decision here. Rather, the decision here was based 107 00:11:52,320 --> 00:11:58,480 on the meaning of the word scoop. The Board says, yes, that describes a portion of ice cream and 108 00:11:58,480 --> 00:11:59,520 cannot be registered. 109 00:12:00,240 --> 00:12:09,360 Next slide. You cannot register generic terms as Jason explained earlier. In this case an applicant 110 00:12:09,360 --> 00:12:20,160 attempted to register the words allergy care for the services of medical are treatment of 111 00:12:20,160 --> 00:12:27,600 allergies. The Board says allergy care is generic for the medical treatment of allergies. You can't 112 00:12:27,600 --> 00:12:34,000 register the words. The applicant was able to disclaim those words this is a little complicated 113 00:12:34,000 --> 00:12:41,200 for the boot level presentation, but in essence they were able to get it on the supplemental 114 00:12:41,200 --> 00:12:50,160 register, a holding place for terms and things capable of becoming marks but are not at the time. 115 00:12:50,160 --> 00:12:52,480 So that was the outcome of this case. 116 00:12:52,480 --> 00:13:00,800 Next slide. You also cannot register something that is functional. Now functional has to do with 117 00:13:00,800 --> 00:13:08,880 the usefulness or at least in this context with the utility of something. So these are trade cases 118 00:13:08,880 --> 00:13:14,640 where someone is trying to register the appearance of some product. In this case it was a circular 119 00:13:14,640 --> 00:13:21,760 saw blade. If you look closely at the design there, you notice there are cuts in the blade that 120 00:13:24,400 --> 00:13:28,720 go toward the middle of the blade. And then there's a round section at the end of those. The 121 00:13:28,720 --> 00:13:34,000 evidence indicated that those performed an important role in the performance of the blade. We 122 00:13:34,000 --> 00:13:40,560 found that the design was basically dictated by the function, the purpose of the product. It was 123 00:13:40,560 --> 00:13:44,320 functional. And therefore the application was refused. 124 00:13:45,600 --> 00:13:53,520 Next slide. The failure to function basis for refusals has been getting a lot of attention 125 00:13:53,520 --> 00:13:57,360 lately, at least for the  last few years. This is just  126 00:13:57,360 --> 00:14:00,320 one example of a number of different applications 127 00:14:00,320 --> 00:14:01,840 that have been refused on this basis. 128 00:14:02,560 --> 00:14:10,320 In this case, the party tried to register dot cam which is many of new generic top level domain 129 00:14:10,320 --> 00:14:16,880 which have been approved for use on the Internet. This was meant for camera or photography related 130 00:14:17,680 --> 00:14:24,560 uses. The Board held this does not function as a trademark, because the intended use of it would be 131 00:14:24,560 --> 00:14:31,760 with other parties' names including probably some brands together with dot cam. You might see things 132 00:14:31,760 --> 00:14:39,280 like Nikon dot cam or Kodak dot cam and things like that. It's not going to function as one 133 00:14:39,280 --> 00:14:44,960 source. So this was also refused. 134 00:14:46,000 --> 00:14:53,520 Next slide. Let's turn now to our trial cases. I'll give you a quick overview of those. We'll 135 00:14:53,520 --> 00:14:59,040 start out by going through the stages of our trial cases. You'll see here we also refer to these as 136 00:14:59,040 --> 00:15:16,240 inter partes, adversarial. You have a pleading stage where you make the claim. Discovery where 137 00:15:16,240 --> 00:15:24,560 you're doing investigation and getting the materials you need in order to bring to trial. The 138 00:15:24,560 --> 00:15:31,280 trial is where you present that record. This is really where our process gets different. 139 00:15:32,640 --> 00:15:39,840 We do not conduct live trials at the board. They're done at paper and electronic submissions. 140 00:15:42,240 --> 00:15:48,240 There are a lot of detailed rules for how you have to participate in that process. If you are not 141 00:15:48,240 --> 00:15:54,560 familiar with Board proceedings, then you need to be very, very careful at the trial stage. You need 142 00:15:54,560 --> 00:15:59,120 to be careful at every stage of our proceedings, but particularly at trial. If you make a mistake 143 00:15:59,120 --> 00:16:00,960 there, you may not be able to undo it. 144 00:16:02,480 --> 00:16:08,720 After the trial stage, you move to briefing and oral hearing. The record is complete at the end of 145 00:16:08,720 --> 00:16:14,080 the trial. You cannot submit your evidence with your briefs. You can't present new evidence at an 146 00:16:14,080 --> 00:16:16,960 oral hearing either. It all has to be complete. 147 00:16:18,560 --> 00:16:22,880 If you're not satisfied with the outcome from the Board, what can you do? You can ask us to 148 00:16:22,880 --> 00:16:25,840 reconsider or you can appeal. Next slide. 149 00:16:28,480 --> 00:16:33,840 Oral hearings are held in our trial cases as well. It's a larger percentage, about a quarter of our 150 00:16:33,840 --> 00:16:41,280 trial cases have oral hearings. The fee I mentioned before applies to it. The parties get 151 00:16:41,280 --> 00:16:47,120 longer. Each side will get 30 minutes to present their arguments. 152 00:16:47,840 --> 00:16:58,320 Arguments only. They can't submit new evidence or new testimony during the oral hearing. Final 153 00:16:58,320 --> 00:17:06,160 decision. Yes we decide the cases. We have certain words we use for these. It's based on the nature 154 00:17:06,160 --> 00:17:07,840 of the actual proceeding. 155 00:17:08,400 --> 00:17:11,840 So in an opposition we'll either sustain, meaning  156 00:17:11,840 --> 00:17:15,040 the opposer wins, or dismiss,  meaning the applicant 157 00:17:15,040 --> 00:17:18,320 wins. In a cancellation  proceeding, we either grant  158 00:17:18,320 --> 00:17:21,360 the petition to cancellation meaning the applicant 159 00:17:21,360 --> 00:17:30,640 wins or the registration will be cancelled or we deny the we don't award damages or attorney fees 160 00:17:30,640 --> 00:17:38,480 or serve injunctions. Significant differences between the remedies of Board and those of a 161 00:17:38,480 --> 00:17:43,680 court. Our proceedings are less expensive. They're almost always less expensive than court 162 00:17:43,680 --> 00:17:48,560 litigation. They're not always faster. They can be but not always. 163 00:17:48,560 --> 00:17:56,480 We pretty much allow the parties to dictate the pace of our trial cases. So if the parties want to 164 00:17:56,480 --> 00:17:58,960 take it slow, then they can take it slow. 165 00:17:59,680 --> 00:18:07,280 The more significant point I want to make to you in connection with the notion of decisions in our 166 00:18:07,280 --> 00:18:14,560 cases is that claims presented at the Board are often going to be substantively different than 167 00:18:14,560 --> 00:18:21,920 those in federal courts. If you're faced with a decision on whether to present a claim at the 168 00:18:21,920 --> 00:18:28,000 Board or federal court, you need to look closely. For some claims you will have a better chance of 169 00:18:28,000 --> 00:18:34,320 success at the Board and some you have a better chance at court. That's something you have to look 170 00:18:34,320 --> 00:18:37,040 at and evaluate when making those decisions. 171 00:18:37,600 --> 00:18:38,160 Next slide.   172 00:18:39,760 --> 00:18:45,600 Who may oppose? Any person who believes they would be damaged. You have to show you would 173 00:18:45,600 --> 00:18:52,400 suffer some injury if this mark is registered. There's an important timing requirement. I won't 174 00:18:52,400 --> 00:18:58,080 go into the details. You absolutely have to meet that or your opposition will go nowhere. 175 00:18:58,880 --> 00:19:06,000 Next slide. I'll give you a few examples now of the trial cases you might find interesting. This 176 00:19:06,000 --> 00:19:14,400 first one dealt with Section 1052A: you can't falsely suggest a connection with some person or 177 00:19:14,400 --> 00:19:25,440 institution. In this case, Frank Sinatra enterprises opposed an application for the mark 178 00:19:25,440 --> 00:19:33,120 Franks Anatra, franks as in hot dogs. The Board said that's not going to work. People are going to 179 00:19:33,120 --> 00:19:51,200 think of Frank Sinatra. This is an example of example 1052d, likelihood of confusion case. This 180 00:19:51,200 --> 00:19:58,160 is the most frequent in cases both appeals and trial cases. 181 00:19:58,800 --> 00:20:05,840 This one turned on whether or not the name Richard in English and the name Ricardo in Spanish were 182 00:20:05,840 --> 00:20:13,040 similar enough. The Board said we don't think they are. Even though one is the English version of the 183 00:20:13,040 --> 00:20:18,800 name and the other is a Spanish version. The Board said the words were not similar enough and the 184 00:20:18,800 --> 00:20:26,080 opposition was dismissed. One of many types of likelihood of confusion we see at the Board. 185 00:20:28,960 --> 00:20:34,400 We do get some dilution claims. They're not that common and difficult to win on. Dilution is 186 00:20:34,400 --> 00:20:47,120 limited to famous marks. They tried to register just drew it. Nike opposed to their just do it 187 00:20:47,120 --> 00:20:52,800 mark. Board says Nike's mark is very famous and sustained the opposition. 188 00:20:56,880 --> 00:21:04,080 Another basis for refusing applications is Section 1052e2 which says you can't register a mark that 189 00:21:04,080 --> 00:21:10,240 is primarily geographically descriptive. Here they were trying to register Charleston Harbor Tours. 190 00:21:10,800 --> 00:21:23,600 The Board says Charleston Harbor tours is geographically descriptive for tours of the 191 00:21:23,600 --> 00:21:28,640 Charleston Harbor therefore the application sustained and refused. 192 00:21:28,640 --> 00:21:42,800 Next example is an abandonment case. I won't go to the details it's beyond bootcamp type material. I 193 00:21:42,800 --> 00:21:50,160 will say you can file a petition if you believe the mark is abandoned. This is a common basis for 194 00:21:50,160 --> 00:21:57,200 cancellations. Linking back to the presentation that Jason gave you, if your application has been 195 00:21:57,200 --> 00:22:04,240 refused based on a likelihood of confusion with a registered mark, if you investigate and you find 196 00:22:04,240 --> 00:22:09,520 that that registered mark has been abandoned, then you can file a petition to cancel that mark and be 197 00:22:09,520 --> 00:22:15,200 able to get rid of it. And your application can go forward. I wanted to mention that abandonment is a 198 00:22:15,200 --> 00:22:22,400 basis for cancelation and get your own mark registered. 199 00:22:23,040 --> 00:22:30,400 Next slide. So where do you go if you don't like the outcome from the Board. You have two options. 200 00:22:30,400 --> 00:22:36,800 You can appeal to the federal circuit and it will be decided on the record as it stands. You can 201 00:22:37,360 --> 00:22:42,640 challenge the decision in a US District Court. This is very different because in this process 202 00:22:42,640 --> 00:22:48,080 you're actually filing a new case. There will be a new trial. And you present new evidence in that 203 00:22:48,080 --> 00:22:56,240 trial. Parties who felt they didn't submit quite enough evidence to the Board will use a US 204 00:22:56,240 --> 00:23:06,320 District Court route and present new material. An interesting twist, if you go to that appeal will 205 00:23:06,320 --> 00:23:12,560 go to the regional circuit courts of appeal and not the federal circuit. Our cases can ultimately 206 00:23:12,560 --> 00:23:16,400 end up all over the country in the federal appeals courts. 207 00:23:17,120 --> 00:23:21,840 US Supreme Court discretionary. There have been a few recent decisions. 208 00:23:22,400 --> 00:23:31,360 Next slide, we'll show we'll just there are two that go together here. Unfortunately we couldn't 209 00:23:31,360 --> 00:23:39,600 fit them on one slide. Section 2A of the statute did prohibit as drafted disparaging marks, go to 210 00:23:39,600 --> 00:23:47,040 the next slide. It also prohibited immoral or scandalous marks. There were a pair of cases that 211 00:23:47,040 --> 00:23:52,880 challenged those provisions of the statute. The Supreme Court said they were unconstitutional. 212 00:23:52,880 --> 00:23:53,760 Those are now gone. 213 00:23:54,480 --> 00:24:01,756 The most recent case was booking.com. The Office refused that as generic. Booking is generic, dot 214 00:24:01,756 --> 00:24:08,960 com is generic. The Supreme Court said, no you have to evaluate it as a whole. You can't use a 215 00:24:08,960 --> 00:24:19,200 per se rule. That concludes the slides. You can show the key word slide. I thank you all very much 216 00:24:19,200 --> 00:24:26,000 for the time and attention and look forward to the rest of our distinguished judges and their roles 217 00:24:26,000 --> 00:24:31,760 in the program.