The TTAB has been considering 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in person at the Board’s offices in Alexandria, VA), judgment set aside on other grounds, 110 USPQ2d 1679 (TTAB 2014) (non-precedential); Blackhorse v. Pro-Football Inc., 98 USPQ2d 1633, 1634 (TTAB 2011) (Board exercised its authority to require parties to attend a pretrial conference at the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) (2021).
To allow it to streamline and better manage cases and trials, the TTAB is considering implementing 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 would provide each other party more pre-trial information than is presently required by TTAB pretrial disclosure requirements. For example, parties would 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 would 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 would emphasize the parties’ consideration and adoption of stipulations regarding evidence to be introduced and considered, as well as stipulations of fact.