802 Oral Hearing
37 CFR § 2.129 Oral argument; reconsideration.
- (a) If a party desires to have an oral argument at final hearing, the party shall request such argument by a separate notice filed not later than ten days after the due date for the filing of the last reply brief in the proceeding. Oral arguments will be heard by at least three Administrative Trademark Judges of the Trademark Trial and Appeal Board at the time specified in the notice of hearing. If any party appears at the specified time, that party will be heard. If the Board is prevented from hearing the case at the specified time, a new hearing date will be set. Unless otherwise permitted, oral arguments in an inter partes case will be limited to thirty minutes for each party. A party in the position of plaintiff may reserve part of the time allowed for oral argument to present a rebuttal argument.
- (b) The date or time of a hearing may be reset, so far as is convenient and proper, to meet the wishes of the parties and their attorneys or other authorized representatives.
802.01 In General
The oral hearing on the case in an inter partes proceeding before the Board corresponds to the oral summation in court proceedings after all the evidence is in. [ Note 1.] For information on oral hearings in ex parte cases, see TBMP § 1216.
An oral hearing is optional and is scheduled only if a timely request therefor is filed by a party to the proceeding. The oral hearing provides a party with one last opportunity to emphasize its strongest arguments, and to refute its adversary's arguments. It is particularly useful in cases with complex issues or a complex record, or where the defendant needs to respond to arguments in the plaintiff's reply brief. If neither party requests an oral hearing, the case will be decided on the evidence made of record during the testimony periods.
Subject to Fed. R. Civ. P. 11, a party is entitled to offer at oral hearing any argument it feels will be to its advantage. However, the facts recited and arguments made at oral hearing must be based on the evidence offered at trial. An oral hearing may not be used as a vehicle for the introduction of evidence. [ Note 2.] TBMP § 704.06 and TBMP § 801.01 .
NOTES:
2. See 37 CFR § 2.123(l).
802.02 Request for Oral Hearing
A party that wishes to have an oral hearing on the case must file a request, by separate submission either via ESTTA or by paper (not as part of its brief on the case), not later than 10 days after the due date for filing the last reply brief in the proceeding. [ Note 1.] Any party to the proceeding may request a hearing.
If an oral hearing is not requested, the case will be decided in due course after the due date for filing the last reply brief on the case.
NOTES:
802.03 Time and Place of Hearing
When a timely request for an oral hearing on the case has been filed by a party to an inter partes proceeding before the Board, the Board sets the date and time for the hearing, and sends each party a written notice of hearing specifying the date, time, and location of the hearing. [ Note 1.] Oral hearings are only scheduled on Tuesdays, Wednesdays and Thursdays between 10:00 a.m. and 3:00 p.m. (Eastern Standard Time). In setting an oral hearing, it is the normal practice of the Board to telephone the parties, or their attorneys or other authorized representatives, to determine a convenient date and time for the hearing. A written notice formally scheduling the hearing is mailed.
Oral hearings typically are held at the offices of the Board but may be held elsewhere, in conjunction with conferences or continuing legal education programs. For hearings held at the offices of the Board, a party may request attendance via video connection from another location. A video conference will be conducted in the same manner as if conducted entirely in the hearing room. To request a hearing by video conference, a party should make the request in its written request for an oral hearing. A party may also request attendance through a video conference when the Board contacts the party to schedule the date and time for the hearing. The party requesting attendance at the oral hearing through a video conference is responsible for arranging and paying for its video connection. The party attending the hearing through a video connection should contact the Board's Hearing and Decision Specialist to determine if the party has compatible technology. The Board will contact the party attending the hearing through a video conference to test the video connection no later than the day before the hearing.
Attendance at a scheduled oral hearing is voluntary, not mandatory. If any party appears at the specified time, the party will be heard, whether or not the party that appears is the one that requested the hearing. [ Note 2.] If a party elects not to attend a scheduled hearing, the party should notify the Board, well in advance of the scheduled hearing date, that it will not attend the hearing.
If a party that requested an oral hearing fails to appear at the appointed time, without giving prior notice to the Board of its nonappearance, the failure to appear will be construed by the Board as a withdrawal of the request for an oral hearing. Any new request for an oral hearing will be granted only upon a showing that the failure to appear was occasioned by extraordinary circumstances.
If the Board is prevented from hearing the case at the time specified in the notice of hearing, a new hearing date will be set. [ Note 3.] The Board will reschedule an oral hearing, at the request of the parties, if there is a reasonable basis for the request. But, absent compelling circumstances, a hearing date will not be changed if the request for rescheduling is made within two weeks of the scheduled hearing date unless both parties agree to the change. When the parties agree to the resetting of an oral hearing, they should determine a new date and time convenient to every party and then contact the Board's Hearing and Decision Specialist by telephone, well prior to the scheduled hearing date, to request that the hearing be reset for the new date and time. The parties should also file a written stipulation or consented motion confirming their agreement. If the parties agree to reset an oral hearing due to settlement negotiations, they should request that proceedings, including the time for oral hearing, be suspended pending completion of the negotiations. If agreement cannot be reached, the party that wishes to have the hearing reset should file a motion therefor. [ Note 4.] However, parties should not file repeated requests to reset an oral hearing.
For information concerning requests to reset an oral hearing, see TBMP § 541.01.
NOTES:
4. See 37 CFR § 2.129(b).
802.04 Before Whom Held
An oral hearing is held before a panel of at least three judges of the Board. [ Note 1.] Normally, an oral hearing panel consists of only three judges. If for some reason a judge on a panel of three that held the oral hearing is unable to participate in the final decision, another judge may be substituted at final decision for the missing judge, even though the substituted judge was not present at the oral hearing; no new oral hearing is necessary. [ Note 2.]
The Director of the USPTO, or the Board may, in their discretion, use an augmented panel to hear a case. A decision to use an augmented panel may be made either upon the Director’s or the Board's own initiative, or upon motion filed by a party to the proceeding. [ Note 3.]
For information concerning motions for an augmented panel hearing, see TBMP § 540. For further information concerning the constitution of Board panels, see In re Alappat, 33 F.3d 1526, 31 USPQ2d 1545, 1547-51 (Fed. Cir. 1994) (en banc).
NOTES:
1. 37 CFR § 2.129(a). See also Trademark Act § 17, 15 U.S.C. § 1067; Knickerbocker Toy Co. v. Faultless Starch Co., 467 F.2d 501, 175 USPQ 417, 420 n.8 (CCPA 1972) (where only one Board member signed decision, court presumed the proper number participated in decision). Please Note: judges no longer provide a handwritten signature on decisions.
2. See Swiss Watch International Inc. v. Federation of the Swiss Watch Industry, 101 USPQ2d 1731, 1732 n.1 (TTAB 2012) (change in composition of panel does not necessitate a rehearing of oral argument). See also In re Bose Corp., 772 F.2d 866, 869, 227 USPQ 1, 3-4 (Fed. Cir. 1985) (statutory requirement that a case be heard "means judicially heard not physically heard"), and Jockey International, Inc. v. Bette Appel Unltd., 216 USPQ 359, 360 (TTAB 1982). Cf. Plus Products v. Medical Modalities Associates, Inc., 211 USPQ 1199 (TTAB 1981), set aside on other grounds and new decision entered, 217 USPQ 464, 464 (TTAB 1983) (final decision rendered by only two Board members vacated); Ronson Corp. v. Ronco Teleproducts, Inc., 197 USPQ 492, 494 (Comm’r 1978) (final decision heard by three Board members but rendered by only two, vacated and oral hearing rescheduled); and Ethicon, Inc. v. American Cyanamid Co., 193 USPQ 374, 377 (Comm’r 1977) (petition to vacate decision denied).
3. See In re Alappat, 33 F.3d 1526, 31 USPQ2d 1545, 1547-51 (Fed. Cir. 1994) (en banc) (Director has the authority under § 6 of the Patent Act to convene an expanded panel which includes not only BPAI administrative patent judges, but also one or more of the senior executive officers of the USPTO identified in that section, including himself or herself). Cf. 15 U.S.C. § 1067 (containing similar provisions for the TTAB).
See also In re Lebanese Arak Corp., 94 USPQ2d 1215 (TTAB 2010) (augmented panel used to affirm examining attorney’s refusal to register the mark KHORAN as disparaging under Trademark Act § 2(a)); In re Ferrero S.p.A., 22 USPQ2d 1800 (TTAB 1992) (augmented panel used to overrule previous decision barring examining attorneys from requesting reconsideration), recon. denied, 24 USPQ2d 1061 (TTAB 1992); In re Johanna Farms Inc., 8 USPQ2d 1408, 1409 (TTAB 1988) (in view of issues presented, oral hearing held before augmented panel of eight Board members); In re McDonald's Corp., 230 USPQ 210 (TTAB 1986) (augmented five-member panel); and In re WSM, Inc., 225 USPQ 883 (TTAB 1985) (augmented panel used to delineate rights in FCC "assigned" call letters for radio broadcasting services). See also In re Active Ankle Systems Inc., 83 USPQ2d 1532, 1534 (TTAB 2007) (an augmented panel is not necessary to reach the proper decision where the examining attorney relied on cases that are no longer good law); Crocker National Bank v. Canadian Imperial Bank of Commerce, 223 USPQ 909, 909 n.1 (TTAB 1984) (augmented panel of eight members because of the importance of the issues). Cf. Federal Circuit Rule 35. Cf. also Fioravanti v. Fioravanti Corrado S.R.L, 1 USPQ2d 1304, 1305 (TTAB 1986) (case not appropriate for designation of augmented panel on request for en banc consideration).
802.05 Length of Oral Argument
Ordinarily, each party in a Board inter partes proceeding is allowed 30 minutes for its oral argument. If it so desires, the plaintiff may reserve part of its 30 minutes for rebuttal. [ Note 1.] No additional time for oral argument is allotted for counterclaims or consolidated proceedings. Accordingly, if there is a counterclaim, the defendant, as the plaintiff in the counterclaim, may also reserve part of its 30 minutes for rebuttal on the counterclaim.
There is no requirement that a party use all of its allotted 30 minutes for oral argument. Often, a case may be presented in considerably less than 30 minutes.
On the other hand, if a party feels that it needs more than 30 minutes for oral argument, it may file a request with the Board for additional time. [ Note 2.] If the request is granted, each party will be allowed the same amount of time for oral argument. For information concerning requests or motions for additional time for oral argument, see TBMP § 541.02.
NOTES:
2. See 37 CFR § 2.129(a); U.S. Navy v. United States Manufacturing Co., 2 USPQ2d 1254, 1255 (TTAB 1987) (additional time for arguments allowed in view of voluminous record).
802.06 Audio Recording and Video Recording
Upon motion showing good cause and with prior arrangement, the Board will usually permit a party to make an audio recording of an oral hearing. The recording, when permitted by the Board, is strictly for the party's private use, and is not to be used for purposes of publicity, or as "evidence" in any proceeding (the oral hearing is not part of the evidentiary record in a proceeding before the Board). The motion should be filed well in advance of the date set for the oral hearing, so if an objection is raised, the Board will have time to rule on the matter. For information concerning motions for leave to audio record an oral hearing, see TBMP § 542.
If permission to record an oral hearing is granted, the moving party is responsible for furnishing, operating, and removing its own audio recording equipment in an unobtrusive manner.
A court reporter is distracting and disruptive in the context of an oral hearing before the Board, and therefore may not be used. For the same reason, an oral hearing before the Board may not be video recorded. TBMP § 542.
802.07 Visual Aids, etc.
The Board will generally allow certain types of materials, such as graphs, large depictions of marks, schedules, charts, etc., to be used at oral hearing, either for clarification or to eliminate the need for extended description, when such materials are based on evidence properly of record. [ Note 1.]
A party may also bring to the oral hearing any materials introduced as exhibits at trial, including audio or video recordings of commercials or demonstrations. A party that introduced an audio or video recording as an exhibit at trial, and wishes to play it at the oral hearing, should notify the Board in advance. In addition, a party that wishes to play such a recording at oral hearing is responsible for furnishing, operating, and removing the necessary equipment in an unobtrusive manner.
A party may not, however, use an oral hearing for the purpose of offering new evidence, whether in the form of charts, graphs, exhibits, or other such materials. TBMP § 802.01. Nor may a party submit in writing the text of its oral argument; to allow such a practice would be to permit a party, in effect, to file an additional brief on the case. [ Note 2.]
NOTES:
1. See Reflange Inc. v. R-Con International, 17 USPQ2d 1125, 1126 n.5 (TTAB 1990).
2. See Reflange Inc. v. R-Con International, 17 USPQ2d 1125, 1126 n.5 (TTAB 1990).
802.08 Nature of Hearing
Prior to an oral hearing, the judges read the briefs on the case and, if necessary, examine the case files. Thus, persons presenting oral arguments should not read from the briefs on the case, except to emphasize an admission contained in an adversary's brief.
Normally, an oral hearing case is not assigned to a particular judge to draft a final decision until some time after the oral hearing. Thus, the judge who sits in the middle of the panel of three is not necessarily the person to whom the case will be assigned for decision; rather, the middle panel member is usually (but not always) the senior judge.
A person presenting oral arguments should be prepared to answer questions from the judges at any point in the arguments. If exhibits or visual aids have been brought to the oral hearing, they should be shown to the adversary before they are shown to the judges. When a hearing is in session, no one should be heard except for counsel making an argument or a judge. Further, a person presenting oral arguments should never interrupt the oral arguments of the adversary.