Permanent Expansion of Telephone Conferencing on
            Interlocutory Matters in Inter Partes Cases Before the
                       Trademark Trial and Appeal Board

   Since August 18, 1998, the Trademark Trial and Appeal Board (Board)
has run a pilot project in which a group of three staff attorneys have
heard arguments on, and disposed of, a wide range of pending
interlocutory motions and related matters by telephone.

   Under the pilot project, the greater use of telephone conferencing has
proven beneficial to both the Board and the parties to contested cases.
By this notice, the Board reports general findings from the pilot
project and announces that telephone conferencing is now an option for
resolving interlocutory matters in any inter partes case pending before
the Board.


   During the first year of the pilot project, there were twenty-two
instances in which one party requested a conference, eight instances in
which the Board initiated a conference, and two instances in which the
parties were already conferencing and added the Board to their
conversation. There were also at least six instances in which inquiries
were made to schedule a conference, but the parties then settled their

   Of the twenty-two unilateral requests, one was withdrawn, two became
moot, and only five were denied. One request was denied because of
logistical difficulties; four were denied because they involved
discovery disputes deemed not suitable for resolution by telephone
conference (e.g., issues not focused enough, too many discovery requests
in dispute, or procedurally premature).

   The most frequently discussed subjects were pleadings, discovery issues,
scheduling/status issues, and requests to extend or reopen.

   The following observations and recommendations emerged from the pilot

   . The Board was concerned there would be a deluge of requests, but
the number was manageable.

   . Board attorneys found it useful to initiate conferences.

   . The time spent by the Board attorneys on conferences (e.g.,
scheduling, conducting conferences, and issuing post-conference orders)
was comparable to the time spent reviewing and disposing of written
submissions. Nonetheless, cases in which the Board held conferences were
more likely to remain on track and less likely to result in intractable
disputes between parties.

   . Conference participants generally were cooperative and cordial with
each other and the Board. Participants appeared pleased with the Board's
willingness to hold conferences and render quick decisions.

   . Some parties mistakenly tried to use telephone conferencing as a
substitute for stipulated written motions to suspend or reset dates and
deadlines. [The parties must, except in rare instances, file written
motions or stipulations with the Board when they agree to suspend or
reset dates or deadlines.]

   . Some parties mistakenly requested a telephone conference as a means to
supplement a motion or a related brief. The Board will not allow a
moving party to use a telephone conference to present oral arguments on
a motion that has been fully briefed in writing.

   . A number of conferences proceeded without prior filing of a written
motion or proposed agenda for the conference. Thus, telephone
conferencing proved more flexible than parties might have presumed from
the announcement of the pilot project. Note, however, that a written
motion or proposed agenda, filed by fax or hand delivery following
consultation with a Board attorney, generally is necessary to properly
frame issues for a conference.

                          II. GENERAL GUIDELINES FOR
                            TELEPHONE CONFERENCING

   To alert parties to the availability of telephone conferencing, the
Board will include appropriate information in the notice of institution
for each case, 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 cases already in existence, but telephone conferencing will be
available in all cases, not just those instituted subsequent to this

   An Administrative Trademark Judge may, in a particular case, conduct a
telephone conference, or one Board attorney may substitute for another
otherwise responsible for a case. But the parties must, in the first
instance, direct requests for conferences to the Board attorney
responsible for resolving interlocutory matters in that case.

   Although there will be no formal limitation as to the types of matters
which can be handled through telephone conferences, Board attorneys
retain discretion to decide whether any particular matter can be heard
or disposed of by telephone. A decision may 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, is waived to the extent
that Board attorneys or judges may accept from parties, or direct
parties to present, oral recitations of procedural facts and
presentations of argument. Also, 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, is waived to the extent necessary
to facilitate telephone conferencing. Board attorneys retain the option
of requiring written submissions and service of copies of written
submissions, as necessary.

   Included below are discussions of (1) illustrative 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.

                             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, are suitable for telephone conferencing. Examples

   . 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

   . 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 might 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 is entitled to obtain responses first; these disputes
regarding a supposed "right of priority" to obtain discovery 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 a discovery or
testimony deposition and threaten its progress or completion.

Although many types of motions are suitable for resolution by telephone
conference, certain motions are not.A motion which is potentially
dispositive, i.e., a motion which, if granted, would dispose of a Board
proceeding, must be decided by a three-judge panel and is inappropriate
for a telephone conference with a Board attorney. See 37 CFR   2.127(c).
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 of Civil Procedure 12(b)(6);

   . a motion for judgment on the pleadings under Federal Rule of Civil
Procedure 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 must
always include a showing that the parties have made a good faith attempt
to resolve their discovery dispute prior to filing a motion to compel,
see 37 CFR   2.120(e), and the Board may hold a telephone conference on
this threshold issue.]


   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 by one or both parties,
or (2) 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 multiple
parties agree to participate in a conference, the party or parties must
contact the appropriate Board attorney by telephone. 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 or written agenda to frame the
issues for the conference and will issue instructions for the filing and
service of copies of any motion, brief, or written agenda. If all
parties to a case make a joint request for a conference, while they
should not generally expect to have the conference begin on initial
contact, it is possible.

   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
the motions or briefs required to have the matter decided on the papers.

  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 agree to a telephone conference, they should also decide
which of them will report to the Board and arrange the conference.

   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.

                         V. CONDUCT OF CONFERENCE AND
                              ISSUANCE OF RULINGS


   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's 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 of a petition under
37 CFR    2.146(e)(2) 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 either a request for reconsideration or a petition is

May 23, 2000                                             Q. Todd Dickinson
                                           Under Secretary of Commerce for
                                 Intellectual Property and Director of the
                                 United States Patent and Trademark Office