102.03 General Description of Board Proceedings
An inter partes proceeding before the Board is similar to a civil action in a federal district court. There are pleadings (at least in an opposition or cancellation proceeding); a wide range of possible motions; conferencing; disclosures; discovery; trial; briefs; and, if requested, an oral hearing, followed by a decision on the case. [ Note 1.] However, because the Board is an administrative tribunal, its rules and procedures necessarily differ in some respects from those prevailing in the federal district courts. [ Note 2.] See also TBMP § 502.01 (Available Motions) and TBMP § 702 (Pretrial Disclosures; Manner of Trial; and Introduction of Evidence). The principal difference is that proceedings before the Board are conducted in writing, and the Board’s actions in a particular case are based upon the written record therein. For example, the Board does not preside at the taking of testimony. Rather, all testimony is taken out of the presence of the Board during the assigned testimony periods, and the written transcripts thereof, together with any exhibits thereto, are then filed with the Board. Indeed, a party to a proceeding before the Board need never come to the offices of the Board at all, unless the Board requests that the parties meet with the Board at its offices for a pretrial conference pursuant to 37 CFR § 2.120(i)(2), or unless the party wishes to argue its case at oral hearing (an oral hearing is held only if requested by a party to the proceeding). Parties may stipulate to expediting the proceeding in whole or in part utilizing Accelerated Case Resolution (ACR). See TBMP § 528.0 5 (a) (2), TBMP § 702.04, and TBMP § 705.
An ex parte appeal, being appellate in nature, is a much simpler and shorter procedure, involving only the filing of briefs by the applicant and examining attorney, and, if requested by the applicant, an oral hearing. See TBMP Chapter 1200 (Ex Parte Appeals).
"The Trademark Trial and Appeal Board … include[s] the Director, Deputy Director of the United States Patent and Trademark Office, the Commissioner for Patents, the Commissioner for Trademarks, and [the] administrative trademark judges...." [ Note 3.] Interlocutory motions, requests, and other matters not actually or potentially dispositive of a proceeding may be acted upon by a single Board Administrative Trademark Judge ("judge") or by a single interlocutory attorney ("attorney") to whom such authority has been delegated. [ Note 4.] Decisions on the merits of a case, and on complex or contested motions that are potentially dispositive of the case, are rendered by a panel of at least three Board judges. [ Note 5.] Stipulations or consented (or uncontested) motions to dispose of the proceeding in a certain manner may be decided per curiam by the Board. Institution orders, stipulated scheduling motions, issuance of notices of default, and other administrative matters may be acted upon by Board paralegals or may be administered through ESTTA, (Electronic System for Trademark Trials and Appeals), the Board’s electronic filing system. [ Note 6.] The parties may enter their changes of address and representation using ESTTA. For further information regarding ESTTA, see TBMP § 110.09.
NOTES:
1. See B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S.___ 135 S.Ct. 1293, 113 USPQ2d 2045, 2049 (2015); Yamaha International Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1004 (Fed. Cir. 1988) (USPTO rules governing the procedures are designed to approximate the proceedings in a courtroom trial).
2. See B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S.___ 135 S.Ct. 1293, 113 USPQ2d 2045, 2049 (2015); Yamaha International Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1004 (Fed. Cir. 1988); La Maur, Inc. v. Bagwells Enter., Inc., 193 USPQ 234, 235 (Comm’r 1976) ("The procedures followed by the Board are not like the procedures in a courtroom and the applicability of the Federal Rules of Civil Procedure must be judged in that light....").
3. Trademark Act § 17(b), 15 U.S.C. § 1067(b).