The Case for Use of Accelerated Case Resolution in TTAB Proceedings

In November 2007, the Board amended its rules to more closely mirror the Federal Rules, including requiring the disclosure of certain information and documents prior to the commencement of discovery. In conjunction with those amendments requiring greater transparency with respect to likely witnesses and relevant documents, the new rules also highlighted and formalized a number of procedural mechanisms intended to further streamline discovery and focus efforts on those issues of fact and law actually in dispute. Parties have long been able to enter stipulations of fact, agree to more limited depositions, and agree that evidence submitted in summary judgment briefing be deemed admissible at trial, but Board rules now provide specific guidance to parties interested in the necessary stipulations and scheduling considerations required. Governed by T.B.M.P. §720.04, ACR provides procedural options within two broad categories: 1) cross motions for summary judgment (720.04(b)); and 2) an abbreviated trial on the merits (720.04(d)).

Cross Motions for Summary Judgment

Practitioners before the Board are well aware of the typical futility of summary judgment practice before the Board. Absent a failure to prosecute and/or a parties' admission of key facts (most often through a failure to respond to Requests for Admission), the Board often denies summary judgment motions because at least one material fact remains in dispute. Moreover, standard summary judgment briefing does not build a record of evidence for trial itself because the affidavits and accompanying evidence are not (without additional action and expense) necessarily admissible at trial.

ACR allows the parties to stipulate that: 1) the Board will resolve any genuine disputes of material fact presented in the record or discovered by the panel considering the case; and 2) trial evidence will be submitted in a manner traditionally reserved for summary judgment motions. Briefing is also significantly streamlined — 25 pages for opening brief and 10 pages for rebuttal. See, T.B.M.P. §702.04(b). Parties can also adopt an ACR schedule after the Board's denial of a party's motion for summary judgment under T.B.M.P. §702.04(c), effectively allowing the Board to reconsider the summary judgment briefs and evidence as the record and final briefs of the case.

Abbreviated Trial on the Merits

This form of ACR encourages factual stipulations as a means of focusing proceedings and expediting a decision. Under this option, the parties must be prepared to stipulate to most if not all of the evidentiary record, though parties typically reserve the right to object to evidence on substantive grounds (e.g., competency, relevancy, or materiality). This option, therefore, allows parties (and the Board) to focus its attention on the legal issues arising from the record. Absent further stipulation by the parties, the briefing remains unaffected — 55 pages for an opening brief and 25 pages of rebuttal.

How Does ACR Work?

ACR does not operate under a rigid fixed track similar to a “rocket docket” in those jurisdictions that require the parties to adhere to the court's rigorous scheduling. Properly understood, ACR guides the parties in considering and selecting a more expedient and efficient proceeding schedule. At every turn, the consent of the parties (and the Board) is required. Indeed, the Board has repeatedly denied unilateral motions for ACR. Importantly, the parties can consent to ACR at any time during the proceeding. Indeed, many Board panels have encouraged the parties to consider stipulating to ACR after an unsuccessful attempt to obtain summary judgment.

Also, because ACR depends upon the consent of the parties (including the Board), the Board permits a party to withdraw its consent at any time should the parties no longer be able to agree to a particular set of facts, the schedule, or some other aspect of the ACR process. Of course, the Board will encourage the parties to “salvage any efficiencies they can” rather than simply reverting back to a traditional schedule. In some instances, the Board itself may determine that ACR is no longer appropriate based on substantial motion practice or obvious disagreements between the parties. See, TTAB Accelerated Case Resolution (ACR) FAQ.

Suggested ACR Tracks

The Board has outlined four basic tracks to guide the parties in developing the schedule — tracks of 11, 14, 17, and 18 months. See, http://bit.ly/2hPhMJk. Again, these proposed schedules are not set in stone, and may be tailored to suit the parties' interests. The differences between each of the four options highlight the primary considerations: the number of discovery requests required and length of discovery period necessary, whether discovery depositions or cross-examination of affiants will be permitted, potential motion practice, whether discovery depositions are necessary, and the briefing schedule.

The shortest track contemplates an extremely streamlined proceeding. The exchange of what limited discovery requests may be necessary commences 70 days from the institution of proceedings (and assumes that initial disclosures were exchanged no later than the deadline for the discovery conference) and must occur during an abbreviated discovery period of 60 days. The briefing schedule provides for cross-motions for summary judgment, allowing each party an opening and rebuttal brief. This track does not allow for the cross-examination of any affiants, and the parties should anticipate no motion practice in order to stay on track.

As the tracks increase in length, the period for discovery is also increased, though the trial period remains relatively short and the parties are encouraged to rely on discovery depositions. The fourteen month track includes a thirty day period for the cross-examination of affiants after each party's opening brief and accompanying evidence are submitted. This track also contemplates the possibility of discovery/procedural disputes, but requires the parties to seek the Interlocutory Attorney's assistance to resolve any such issues via telephone rather than resorting to motion practice. Only the longest (17- and 18-month) tracks provides for the possibility of an oral hearing.

Drafting the Stipulation

ACR is implemented by the parties filing a stipulation which establishes the framework for the proceeding the key factual and legal disputes on which the parties will focus. When considering ACR, parties must be prepared to hit the ground running — particularly if a shorter track is selected. For example, in order to keep pace with the 11- and 14-month tracks, the parties must exchange discovery requests within 30 days and agree to make all responses (including any production of responsive documents) within 30 days of the requests being served. The parties should remember that the stipulation will be entered only if the Board agrees with the stipulated terms proposed. Accordingly, two key terms in the stipulation are necessary: 1) the Board may resolve on the papers any and all issues of material fact that may be presented in making a final determination on the merits; and 2) the parties will not challenge the submission of evidence other than as to relevance or materiality.

The remaining terms are negotiable: a) the length of discovery period; b) the number of permitted document requests, interrogatories, and/or requests for admission; c) potential factual stipulations; d) the likelihood/need for potential cross-examination of witnesses; and e) the briefing schedule. Apart from these more general terms, parties' stipulations have included a wide variety of terms to govern the proceeding and focus the issues, including for example, the exclusion of expert witnesses, timing within which a party must notice the deposition of an affiant for cross-examination, and many others.

Properly considering these various terms requires a clear understanding of: 1) the potential risks (and benefits) in forgoing traditional discovery tools that can be useful in resolving a case; and 2) the fundamental pieces of evidence that a party will need to build a winning case, on the merits or otherwise. The first consideration likely leads most parties to avoid fully considering the second to determine whether ACR is a viable alternative. Hardwired to look under every rock and challenge the other side at every turn, most litigators are loathe to leave potential arguments/challenges on the table without the opportunity to explore them fully with traditional discovery methods. However, in certain cases, particularly those in which many, if not all, of the key facts are known to the parties and not in dispute, ACR proceedings are attractive and even advantageous to the client's case and its pocketbook.

Strategic Considerations

Perhaps the primary risks/sacrifice that should be considered in whether to use ACR is a party's ability to leverage the traditional tools of discovery to secure an amicable resolution. Most proceedings before the Board are resolved long before a full decision on the merits, and in many the primary concern that brings parties to the negotiating table is the expense of time and money required to litigate to a final decision. Many disputes can be resolved with a more narrowly tailored description of goods/services and/or restrictions as to the junior user's use of its mark. Although such a resolution may not be immediately apparent, use of ACR makes it much less likely (in some sense because there isn't time) to determine that such a resolution may be possible.

In other cases, the dispute is clear and the parties can ascertain very early that an amicable resolution is not possible. When the mark at issue is considered the “crown jewel” of the company, there may be no room for compromise or an amicable resolution. In other situations, a party's enforcement history may demand a specific outcome, ruling out options that may otherwise be sufficient (and more palatable to the other side).

Apart from the risk associated with forgoing the settlement leverage associated with traditional discovery tools, parties must also consider whether the evidence required to build a winning case is in its own possession or the hands of its adversary. Although it is easy to move into the discovery period with standard discovery inquiries regarding each of the most relevant factors to a dispute, parties should also consider who has this evidence. If the necessary evidence is in the hands of a party or is already demonstrable in the public record, then the need for extensive discovery diminishes. In these circumstances, after asking what, if any, evidence a party needs from the other side, it is also important to consider what evidence the other side is likely to produce and whether that possibility is sufficient to merit the full scope of traditional discovery. Although discovery can occasionally produce surprising admissions and salient testimony, many times these developments do not materially affect the core of the dispute. Accordingly, cases where the bulk of the evidence required to prove a party's case is already in hand, ACR remains a solid option — particularly if there is not a need for leverage in potential settlement negotiations.

Conversely, parties should consider the risks that expansive discovery could pose to their case. In other words, choosing an ACR option that provides for limited discovery may allow a party to avoid the possibility of subjecting the facts underlying its theory of the case to intense scrutiny or challenge. This is particularly the case where the parties choose an ACR option that does not provide for discovery depositions or cross-examination of affiants.

Conclusion

Given the flexibility provided under the rules and clients' ever-increasing mandate to avoid expensive litigation costs and expedite a final outcome, attorneys should consider whether ACR might be an appropriate and possibly advantageous option to pursue in Board proceedings.

*****
Chris Bussert has more than 30 years of experience in helping clients protect and defend their most important assets and brands. Mr. Bussert represents clients in trademark, franchise, copyright, and unfair competition litigation, including proceedings before the Trademark Trial and Appeal Board, and in licensing and trademark clearance and prosecution matters. He can be reached at [email protected]. Harris Henderson focuses his practice on trademark and copyright matters, with experience in a wide range of industries, including consumer products, technology, and sports & entertainment. Mr. Henderson routinely counsels clients on a variety of copyright, trademark, and advertising matters regarding the development and regularly represents clients in proceedings before the Trademark Trial and Appeal Board. He can be reached at [email protected].

At the time of early discovery conferences, parties involved in disputes before the Trademark Trial and Appeal Board are required to consider “any additional topics that could promote settlement or efficient adjudication of the Board proceeding,' including the Board's Accelerated Case Resolution (ACR) procedure.” T.B.M.P. §401.01. Based on the number of proceedings that actually take advantage of ACR, however, there are very few takers. Of the 6,156 oppositions and 2,101 cancellations initiated before the Board in 2017 to date, only seventeen took advantage of ACR. See, http://bit.ly/2mKCCeJ.

Although ACR may be inappropriate for many proceedings, the reticence of parties to take advantage of a streamlined, efficient structure for proceedings also likely reflects a lack of familiarity with available ACR options as well as an unjustified perception that a robust discovery and trial period always best serve their interests. This article outlines the available options under the Board's ACR rules and discusses the strategic considerations in determining whether ACR might be advantageous, particularly in light of increasing pressure from clients to reduce costs and expedite the decision-making process. In that regard, current statistics reflect that inter partes proceedings, on average, take more than three years through final decision, use of ACR can result in a decision in less than a year.

What Is Accelerated Case Resolution?

In November 2007, the Board amended its rules to more closely mirror the Federal Rules, including requiring the disclosure of certain information and documents prior to the commencement of discovery. In conjunction with those amendments requiring greater transparency with respect to likely witnesses and relevant documents, the new rules also highlighted and formalized a number of procedural mechanisms intended to further streamline discovery and focus efforts on those issues of fact and law actually in dispute. Parties have long been able to enter stipulations of fact, agree to more limited depositions, and agree that evidence submitted in summary judgment briefing be deemed admissible at trial, but Board rules now provide specific guidance to parties interested in the necessary stipulations and scheduling considerations required. Governed by T.B.M.P. §720.04, ACR provides procedural options within two broad categories: 1) cross motions for summary judgment (720.04(b)); and 2) an abbreviated trial on the merits (720.04(d)).

Cross Motions for Summary Judgment

Practitioners before the Board are well aware of the typical futility of summary judgment practice before the Board. Absent a failure to prosecute and/or a parties' admission of key facts (most often through a failure to respond to Requests for Admission), the Board often denies summary judgment motions because at least one material fact remains in dispute. Moreover, standard summary judgment briefing does not build a record of evidence for trial itself because the affidavits and accompanying evidence are not (without additional action and expense) necessarily admissible at trial.

ACR allows the parties to stipulate that: 1) the Board will resolve any genuine disputes of material fact presented in the record or discovered by the panel considering the case; and 2) trial evidence will be submitted in a manner traditionally reserved for summary judgment motions. Briefing is also significantly streamlined — 25 pages for opening brief and 10 pages for rebuttal. See, T.B.M.P. §702.04(b). Parties can also adopt an ACR schedule after the Board's denial of a party's motion for summary judgment under T.B.M.P. §702.04(c), effectively allowing the Board to reconsider the summary judgment briefs and evidence as the record and final briefs of the case.

Abbreviated Trial on the Merits

This form of ACR encourages factual stipulations as a means of focusing proceedings and expediting a decision. Under this option, the parties must be prepared to stipulate to most if not all of the evidentiary record, though parties typically reserve the right to object to evidence on substantive grounds (e.g., competency, relevancy, or materiality). This option, therefore, allows parties (and the Board) to focus its attention on the legal issues arising from the record. Absent further stipulation by the parties, the briefing remains unaffected — 55 pages for an opening brief and 25 pages of rebuttal.

How Does ACR Work?

ACR does not operate under a rigid fixed track similar to a “rocket docket” in those jurisdictions that require the parties to adhere to the court's rigorous scheduling. Properly understood, ACR guides the parties in considering and selecting a more expedient and efficient proceeding schedule. At every turn, the consent of the parties (and the Board) is required. Indeed, the Board has repeatedly denied unilateral motions for ACR. Importantly, the parties can consent to ACR at any time during the proceeding. Indeed, many Board panels have encouraged the parties to consider stipulating to ACR after an unsuccessful attempt to obtain summary judgment.

Also, because ACR depends upon the consent of the parties (including the Board), the Board permits a party to withdraw its consent at any time should the parties no longer be able to agree to a particular set of facts, the schedule, or some other aspect of the ACR process. Of course, the Board will encourage the parties to “salvage any efficiencies they can” rather than simply reverting back to a traditional schedule. In some instances, the Board itself may determine that ACR is no longer appropriate based on substantial motion practice or obvious disagreements between the parties. See, TTAB Accelerated Case Resolution (ACR) FAQ.

Suggested ACR Tracks

The Board has outlined four basic tracks to guide the parties in developing the schedule — tracks of 11, 14, 17, and 18 months. See, http://bit.ly/2hPhMJk. Again, these proposed schedules are not set in stone, and may be tailored to suit the parties' interests. The differences between each of the four options highlight the primary considerations: the number of discovery requests required and length of discovery period necessary, whether discovery depositions or cross-examination of affiants will be permitted, potential motion practice, whether discovery depositions are necessary, and the briefing schedule.

The shortest track contemplates an extremely streamlined proceeding. The exchange of what limited discovery requests may be necessary commences 70 days from the institution of proceedings (and assumes that initial disclosures were exchanged no later than the deadline for the discovery conference) and must occur during an abbreviated discovery period of 60 days. The briefing schedule provides for cross-motions for summary judgment, allowing each party an opening and rebuttal brief. This track does not allow for the cross-examination of any affiants, and the parties should anticipate no motion practice in order to stay on track.

As the tracks increase in length, the period for discovery is also increased, though the trial period remains relatively short and the parties are encouraged to rely on discovery depositions. The fourteen month track includes a thirty day period for the cross-examination of affiants after each party's opening brief and accompanying evidence are submitted. This track also contemplates the possibility of discovery/procedural disputes, but requires the parties to seek the Interlocutory Attorney's assistance to resolve any such issues via telephone rather than resorting to motion practice. Only the longest (17- and 18-month) tracks provides for the possibility of an oral hearing.

Drafting the Stipulation

ACR is implemented by the parties filing a stipulation which establishes the framework for the proceeding the key factual and legal disputes on which the parties will focus. When considering ACR, parties must be prepared to hit the ground running — particularly if a shorter track is selected. For example, in order to keep pace with the 11- and 14-month tracks, the parties must exchange discovery requests within 30 days and agree to make all responses (including any production of responsive documents) within 30 days of the requests being served. The parties should remember that the stipulation will be entered only if the Board agrees with the stipulated terms proposed. Accordingly, two key terms in the stipulation are necessary: 1) the Board may resolve on the papers any and all issues of material fact that may be presented in making a final determination on the merits; and 2) the parties will not challenge the submission of evidence other than as to relevance or materiality.

The remaining terms are negotiable: a) the length of discovery period; b) the number of permitted document requests, interrogatories, and/or requests for admission; c) potential factual stipulations; d) the likelihood/need for potential cross-examination of witnesses; and e) the briefing schedule. Apart from these more general terms, parties' stipulations have included a wide variety of terms to govern the proceeding and focus the issues, including for example, the exclusion of expert witnesses, timing within which a party must notice the deposition of an affiant for cross-examination, and many others.

Properly considering these various terms requires a clear understanding of: 1) the potential risks (and benefits) in forgoing traditional discovery tools that can be useful in resolving a case; and 2) the fundamental pieces of evidence that a party will need to build a winning case, on the merits or otherwise. The first consideration likely leads most parties to avoid fully considering the second to determine whether ACR is a viable alternative. Hardwired to look under every rock and challenge the other side at every turn, most litigators are loathe to leave potential arguments/challenges on the table without the opportunity to explore them fully with traditional discovery methods. However, in certain cases, particularly those in which many, if not all, of the key facts are known to the parties and not in dispute, ACR proceedings are attractive and even advantageous to the client's case and its pocketbook.

Strategic Considerations

Perhaps the primary risks/sacrifice that should be considered in whether to use ACR is a party's ability to leverage the traditional tools of discovery to secure an amicable resolution. Most proceedings before the Board are resolved long before a full decision on the merits, and in many the primary concern that brings parties to the negotiating table is the expense of time and money required to litigate to a final decision. Many disputes can be resolved with a more narrowly tailored description of goods/services and/or restrictions as to the junior user's use of its mark. Although such a resolution may not be immediately apparent, use of ACR makes it much less likely (in some sense because there isn't time) to determine that such a resolution may be possible.

In other cases, the dispute is clear and the parties can ascertain very early that an amicable resolution is not possible. When the mark at issue is considered the “crown jewel” of the company, there may be no room for compromise or an amicable resolution. In other situations, a party's enforcement history may demand a specific outcome, ruling out options that may otherwise be sufficient (and more palatable to the other side).

Apart from the risk associated with forgoing the settlement leverage associated with traditional discovery tools, parties must also consider whether the evidence required to build a winning case is in its own possession or the hands of its adversary. Although it is easy to move into the discovery period with standard discovery inquiries regarding each of the most relevant factors to a dispute, parties should also consider who has this evidence. If the necessary evidence is in the hands of a party or is already demonstrable in the public record, then the need for extensive discovery diminishes. In these circumstances, after asking what, if any, evidence a party needs from the other side, it is also important to consider what evidence the other side is likely to produce and whether that possibility is sufficient to merit the full scope of traditional discovery. Although discovery can occasionally produce surprising admissions and salient testimony, many times these developments do not materially affect the core of the dispute. Accordingly, cases where the bulk of the evidence required to prove a party's case is already in hand, ACR remains a solid option — particularly if there is not a need for leverage in potential settlement negotiations.

Conversely, parties should consider the risks that expansive discovery could pose to their case. In other words, choosing an ACR option that provides for limited discovery may allow a party to avoid the possibility of subjecting the facts underlying its theory of the case to intense scrutiny or challenge. This is particularly the case where the parties choose an ACR option that does not provide for discovery depositions or cross-examination of affiants.

Conclusion

Given the flexibility provided under the rules and clients' ever-increasing mandate to avoid expensive litigation costs and expedite a final outcome, attorneys should consider whether ACR might be an appropriate and possibly advantageous option to pursue in Board proceedings.

*****
Chris Bussert has more than 30 years of experience in helping clients protect and defend their most important assets and brands. Mr. Bussert represents clients in trademark, franchise, copyright, and unfair competition litigation, including proceedings before the Trademark Trial and Appeal Board, and in licensing and trademark clearance and prosecution matters. He can be reached at [email protected]. Harris Henderson focuses his practice on trademark and copyright matters, with experience in a wide range of industries, including consumer products, technology, and sports & entertainment. Mr. Henderson routinely counsels clients on a variety of copyright, trademark, and advertising matters regarding the development and regularly represents clients in proceedings before the Trademark Trial and Appeal Board. He can be reached at [email protected].