101 Applicable Authority
101.01 Statute and Rules of Practice
All proceedings before the Trademark Trial and Appeal Board ("Board") are governed by the Lanham Trademark Act of 1946, as amended, ("Trademark Act"), 15 U.S.C. § 1051 et seq.; the rules of practice in trademark cases (commonly known as the Trademark Rules of Practice), which may be found in Parts 2 and 7 of Title 37 of the Code of Federal Regulations ("CFR"); the rules pertaining to assignments in trademark cases, which may be found in Parts 3 and 7 of 37 CFR; and the rules relating to the conduct of practitioners and the representation of others before the United States Patent and Trademark Office ("USPTO" or "Office") which may be found in Part 11 of 37 CFR. The USPTO rules governing procedure in inter partes proceedings before the Board are adapted, in large part, from the Federal Rules of Civil Procedure, with modifications due primarily to the administrative nature of Board proceedings. [ Note 1.]
A copy of Title 37 of the CFR may be obtained at a nominal cost from the U.S. Government Printing Office. An electronic version of Title 37 of the CFR may be found online at the Government Printing Office website at: www.gpoaccess.gov/cfr/index.html, or on the USPTO website at: www.uspto.gov/trademarks/law/index.jsp.
Information regarding proposed and final rule changes to Title 37 is also posted on the USPTO website at http://www.uspto.gov/trademark/trademark-updates-announcements.
NOTES:
1. Yamaha International Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1004 (Fed. Cir. 1988).
101.02 Federal Rules
37 CFR § 2.122(a) Rules of Evidence. The rules of evidence for proceedings before the Trademark Trial and Appeal Board are the Federal Rules of Evidence, the relevant provisions of the Federal Rules of Civil Procedure, the relevant provisions of Title 28 of the United States Code, and the provisions of this Part of Title 37 of the Code of Federal Regulations.
37 CFR § 2.116 Federal Rules of Civil Procedure.
(a) Except as otherwise provided, and wherever applicable and appropriate, procedure and practice in inter partes proceedings shall be governed by the Federal Rules of Civil Procedure.
Inter partes proceedings before the Board are also governed by the Federal Rules of Civil Procedure, except as otherwise provided in the Trademark Rules of Practice, and "wherever applicable and appropriate," [ Note 1.], and by the Federal Rules of Evidence. [ Note 2.]
There is no provision in the Trademark Rules of Practice concerning the applicability of the Federal Rules of Evidence to ex parte appeals before the Board. However, certain of the principles embodied in the Federal Rules of Evidence are applied by the Board, in practice, in evaluating the probative value of evidence submitted in ex parte cases. [ Note 3.] See TBMP § 1208
NOTES:
1. 37 CFR § 2.116(a). See Multisorb Technology Inc. v. Pactiv Corp., 109 USPQ2d 1170, 1171 (TTAB 2013) (Consistent with 37 CFR § 2.116(a), the Board also generally follows settled federal practice when deciding cases raising procedural issues that fall within the interstices between the provisions in the Federal Rules, the CFR, and the Trademark Board Manual of Procedure); also Great Seats Inc. v. Great Seats Ltd., 100 USPQ2d 1323, 1326 (TTAB 2011) (citing 37 CFR § 2.116(a)).
2. 37 CFR § 2.122(a). See Centroamericana, S.A. v. Cerveceria India, Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1311 (Fed. Cir. 1989) (In applying the burden of proof provisions of Fed. R. Evid. 301, the court stated "[t]he Federal Rules of Evidence generally apply to TTAB proceedings."). See, e.g., Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1117 (TTAB 2009) (applying Fed. R. Evid. 201); Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d 1953, 1956 (TTAB 2008) (Fed. R. Evid. 801); Bass Pro Trademarks LLC v. Sportsman’s Warehouse Inc., 89 USPQ2d 1844, 1861 (TTAB 2008) (Fed. R. Evid. 701); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1104-05 (TTAB 2007) (Fed. R. Evid. 803 and 1004); Genesco Inc. v. Martz, 66 USPQ2d 1260, 1264-65 (TTAB 2003) (Fed. R. Evid. 612); Hard Rock Cafe Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1405 (TTAB 1998) (Fed. R. Evid. 902); HRL Assoc. Inc. v. Weiss Assoc. Inc., 12 USPQ2d 1819, 1822 (TTAB 1989) (Fed. R. Evid. 408); Miles Laboratories Inc. v. Naturally Vitamin Supplements Inc., 1 USPQ2d 1445, 1448, n.20 (TTAB 1986) (Fed. R. Evid. 401).
3. See, e.g., In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859, 1860 (Fed. Cir. 1987) (articles from general and business publications are not hearsay and are probative of descriptive usage); In re Broadway Chicken, Inc., 38 USPQ2d 1559, 1565 (TTAB 1996) (listings from telephone directories and Dun & Bradstreet databases are not inadmissible hearsay); In re American Olean Tile Co., 1 USPQ2d 1823, 1824 n.2 (TTAB 1986) (affidavit consisting of third-hand report by unidentified person is inadmissible hearsay); In re Foundry Products, Inc., 193 USPQ 565 (TTAB 1976) (third-party registrations not considered when copies were not made of record).
101.03 Decisional Law
Proceedings before the Board are also governed, to a large extent, by precedential decisions in prior cases. These decisions include those of the Board itself, as well as the decisions of the Court of Appeals for the Federal Circuit (which determines appeals from decisions of the Board); the Court of Customs and Patent Appeals (predecessor of the Court of Appeals for the Federal Circuit); and the Director of The United States Patent and Trademark Office (formerly the Commissioner of Patents and Trademarks) ("Director"), who determines petitions seeking review of Board actions on procedural matters.
Decisions of the Board, the Director, and the Court of Appeals for the Federal Circuit appear in the United States Patents Quarterly ("USPQ"), a periodical publication of The Bureau of National Affairs, Inc., Washington, D.C. ("BNA"), and may also be found in Reed Elsevier, Inc.’s LEXIS/NEXIS legal database, and in the Intellectual Property Library of West Publishing Company’s WESTLAW database. Board decisions are also available on public electronic databases at the Board home page of the USPTO website at http://e-foia.uspto.gov/Foia/TTABReadingRoom. (final decisions), and at TTABVUE http://ttabvue.uspto.gov (docket information and full images of Board files).
Decisions that are designated by the Board "citable as precedent," "precedent of the Board," or "for publication in full" are citable as precedent. Decisions which are not so designated, or which are designated for publication only in digest form, are not binding on the Board, but may be cited for whatever persuasive weight to which they may be entitled. Decisions of other tribunals may be cited to the extent allowed and for the purposes permitted by the tribunal that issued the decision. "Citation to all TTAB decisions should be to the United States Patent Quarterly, if the decision appears therein; otherwise, to a USPTO public electronic database [as listed above]. If a non-precedential decision does not appear in the United States Patents Quarterly or the USPTO’s public electronic databases, the citing party should append a copy of the decision to the motion or brief in which the decision is cited." [ Note 1.]
Any cited decision of the Board or another court, which appears in the USPQ, should include a citation to the USPQ, in addition to any citation to an official reporter (if any), such as the Federal Reporter or Federal Supplement. [ Note 2.] See TBMP § 801.03 (inter partes briefs); TBMP § 1203.02(f)(ex parte briefs).
NOTES:
1. Citation of Opinions to the Trademark Trial and Appeal Board, O.G. Notice (Jan. 23, 2007). The final decisions of the Board are posted athttp://e-foia.uspto.gov/Foia/TTABReadingRoom. and files of Board proceedings are available at http://ttabvue.uspto.gov/. See also In re Fiat Group. Marketing & Corporate Communications S.p.A., 109 USPQ2d 1593 (TTAB 2014) (non-precedential decisions are not binding on the Board, but may be cited to and considered for whatever persuasive value they may hold); In re the Procter & Gamble Company, 105 USPQ2d 1119, 1121 (TTAB 2012) (no prohibition against citing to non-precedential opinions, but the Board does not encourage this practice); In re Luxuria s.r.o., 100 USPQ2d 1146, 1151 n.7 (TTAB 2011) (parties may cite to non-precedential decisions, but they are not binding on the Board); Corporacion Habanos SA v. Rodriquez, 99 USPQ2d 1873, 1875 n.5 (TTAB 2011) (although parties may cite to non-precedential cases, the Board does not encourage the practice).
2. See Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826, 1830 (TTAB 2012) (include citation to the United States Patent Quarterly (USPQ) if the case appeared in that reporter); Swiss Watch International Inc. v. Federation of the Swiss Watch Industry, 101 USPQ2d 1731, 1736 n.11 (TTAB 2012) (same); In re Carlson, 91 USPQ2d 1198, 1199 (TTAB 2009) (same).
101.04 Director’s Orders and Notices
Occasionally, the Director or another USPTO official acting under the Director’s authority, publishes in the Official Gazette an order or notice relating to a particular Office policy, practice, procedure, or other such matter of interest to the public. Some of these orders and notices affect practice and procedure before the Board. Such notices are also posted on the Office’s website atwww.uspto.gov/about-us/news-updates .
101.05 Trademark Trial and Appeal Board Manual of Procedure
The Trademark Trial and Appeal Board Manual of Procedure ("TBMP") (this Manual) is a compilation of statutory, regulatory, and decisional authority relevant to Board practice and procedure. It is written as a guide for both the Board and practitioners. In addition to compiling applicable authority, the TBMP includes many practical suggestions on practice before the Board. Nonetheless, the TBMP "does not modify, amend, or serve as a substitute for any statutes, rules or decisional law and is not binding upon the [TTAB]." [ Note 1.]
The TBMP is revised from time to time to incorporate changes in applicable statutes, rules, and case law, and to reflect changes in Board practice. [ Note 2.] Practitioners consulting the TBMP should keep the publication date of the current revision in mind, and conduct any research necessary to determine whether there have been any relevant changes in the law since publication.
The TBMP is not – nor is it intended to be – a comprehensive reference on all aspects of the procedural or substantive law applicable to Board proceedings. Parties are urged to conduct appropriate legal research as needed.
NOTES:
1. Rosenruist-Gestao E Servicos LDA v. Virgin Enterprises Ltd., 511 F.3d 437, 85 USPQ2d 1385, 1393 (4th Cir. 2007) (quoting TBMP Introduction). Cf. In re Sones, 590 F.3d 1282, 93 USPQ2d 1118, 1123 (Fed. Cir. 2009) ("the TMEP is instructive, but ‘is not established law,’") (citing In re Pennington Seed, Inc., 466 F.3d 1053, 80 USPQ2d 1758, 1763 (Fed. Cir. 2006)) ("While the TMEP is not established law, but only provides instructions to examiners, it does represent the PTO’s established policy on varietal names that is entitled to our respect.").
2. The Board welcomes suggestions for improving the content of the TBMP. Suggestions and comments should be addressed to:
ATTN: TBMP Editor
U.S. Patent and Trademark Office
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria,VA 22313-1451