Tips and Best Practices from PTO Judge
On February 20, 2014, Administrative Trademark Judge Lorelei Ritchie gave a presentation at Whittier Law School on the best tips and practices when working with the Patent Trademark Office. Judge Ritchie was the Intellectual Property Manager at the University of California Los Angeles, an adjunct Professor of Law at Loyola Law School, Los Angeles, and an Assistant Professor at Florida State University School of Law. She works as a judge on the Trademark Trial and Appeal Board (“TTAB”), which is a body within the United States Patent and Trademark Office responsible for hearing and deciding certain kinds of cases involving trademarks. Judge Ritchie’s overall top advocacy tips when working with the TTAB are to make sure you put everything in the record, get the claim right, and to consider the value of an oral hearing.
When focusing on the record, Judge Ritchie recommends being aware of the size of the record. Only put in what you need as far as the legally significant facts. Stipulations when readily available and consented between both parties will make the process much more efficient. When bringing in a survey, make sure you know when they really helpful to you and never forget to put in the pleaded registration. There have been a handful of cases where a party had forgotten to put the pleaded registration where they might have won; so do not forget to put in the pleaded registration.
The brief must cite to the record and provide a map for the judges. The judges look for the key reasons why they should rule in your favor and do not forget to put these reasons why. Simple persuasive writing techniques Judge Ritchie looks for are to lead with your strongest arguments, concede weak points, and do not make more arguments than you have because judges appreciate honesty.
When working with the TTAB, you must also make sure that you get your claim right. Think about the likelihood of confusion vs. ownership claims. Make sure it is the right non-use claim you are asserting and consider if there is anything else you can do.
Appropriate evidence can also be persuasive. Make sure your ID is right. Third party use can either show relatedness or weakness of the goods or services. Keep in mind that the TTAB will usually not consider actual use except for instances of fame and lack of actual confusion.
Judge Ritchie also recommends that you consider using 15 U.S.C. §1068 cleverly. This section states: “In such proceedings the Director may refuse to register the opposed mark, may cancel the registration, in whole or in part, may modify the application or registration by limiting the goods or services specified therein, may otherwise restrict or rectify with respect to the register the registration of a registered mark, may refuse to register any or all of several interfering marks, or may register the mark or marks for the person or persons entitled thereto, as the rights of the parties hereunder may be established in the proceedings: Provided, That in the case of the registration of any mark based on concurrent use, the Director shall determine and fix the conditions and limitations provided for in subsection (d) of section 2 of this Act [15 USC 1052(d)]. However, no final judgment shall be entered in favor of an applicant under section 1(b) [15 USC 1051(b)] before the mark is registered, if such applicant cannot prevail without establishing constructive use pursuant to section 7(c) [15 USC 1057(c)].” This section is most commonly used for restricting your mark; however, it can be used as a “sneaky way” to get a mark assigned to you by transfer by use of the last line of the section, “or may register the mark or marks for the person or persons entitled thereto…” In cases where a party has claimed to transfer the mark, Judge Ritchie did concede that there were some kind of consent, but the overall tip is to use this Section 18 in a smart way.
Judge Ritchie’s last piece of advice was for the oral hearing. She recommends considering whether there is any actual value added to your case because you cannot put in new material. If you elect for an oral hearing, be aware of the law because there will be judges that will be harsh so you must be prepared to be responsive. Although a video hearing is possible, if you are the party that elects for the oral hearing, make sure you are willing to shell out the costs for a hearing in person.
Special thanks to Katrina Nicha for authoring this post!
Photo by : LASZLO ILYES