703.01(p) Confidential or Trade Secret Material
37 CFR § 2.116 (g) The Trademark Trial and Appeal Board’s standard protective order is applicable during disclosure, discovery and at trial in all opposition, cancellation, interference and concurrent use registration proceedings, unless the parties, by stipulation approved by the Board, agree to an alternative order, or a motion by a party to use an alternative order is granted by the Board. The standard protective order is available at the Office’s Web site, or upon request, a copy will be provided. No material disclosed or produced by a party, presented at trial, or filed with the Board, including motions or briefs which discuss such material, shall be treated as confidential or shielded from public view unless designated as protected under the Board’s standard protective order, or under an alternative order stipulated to by the parties and approved by the Board, or under an order submitted by motion of a party granted by the Board.
37 CFR § 2.125(e) Upon motion by any party, for good cause, the Trademark Trial and Appeal Board may order that any part of a deposition transcript or any exhibits that directly disclose any trade secret or other confidential research, development, or commercial information may be filed under seal and kept confidential under the provisions of § 2.27(e). If any party or any attorney or agent of a party fails to comply with an order made under this paragraph, the Board may impose any of the sanctions authorized by § 2.120(g).
37 CFR § 2.126(c) To be handled as confidential, submissions to the Trademark Trial and Appeal Board that are confidential in whole or part pursuant to § 2.125(e) must be submitted under a separate cover. Both the submission and its cover must be marked confidential and must identify the case number and the parties. A copy of the submission with the confidential portions redacted must be submitted.
The requirements for confidential submissions are specified in 37 CFR § 2.126(c). To be handled as confidential, and kept out of the public record, submissions to the Board that are confidential when submitted by paper must be filed under a separate cover. Both the submission and its cover must be marked confidential and must identify the case number and the parties. A copy of the submission with the confidential portions redacted must also be submitted. [ Note 1.] In addition, in the confidential submission, parties are encouraged to enclose confidential information in brackets to better mark the specific information to be kept confidential. This facilitates a better comparison between the public and confidential versions of the submissions when the Board is preparing a final decision or an order on a motion. If a party submits a transcript or other such filing containing confidential information under seal, the party must also submit for the public record a redacted version of said papers. [ Note 2.] Cf. TBMP § 120.02 (Confidential Materials), TBMP § 412 (Protective Orders), TBMP § 526 (Motion for a Protective Order), and TBMP § 527.01 (Motion for Discovery Sanctions). A rule of reasonableness dictates what information should be redacted, and only in very rare instances should an entire submission be deemed confidential. [ Note 3.]. In cases where a redacted version has not been provided, the confidentiality of the information may be deemed waived. [ Note 4.]
If a party submits confidential material using ESTTA, the filer should select "CONFIDENTIAL Opposition, Cancellation or Concurrent Use" under "File Documents in a Board Proceeding." Filings made using this option will not be made available for public viewing, although an entry will be made on the publicly-available docket sheet in TTABVUE. Electronic filing using ESTTA is preferred for submissions containing confidential material. See TBMP § 120.02 and TBMP § 412.04.
If a paper submission contains confidential material, it must be submitted under separate cover. Both the submission and its cover must be marked confidential and must identify the case number and the parties. Paper submissions are scanned into TTABVUE and designated "confidential." After scanning and designating as "confidential," the Board retains the confidential paper submissions for a short period of time before disposing of the confidential paper submissions in an appropriate manner. Confidential testimony and exhibits submitted in paper are disposed of shortly after the proceeding is terminated.
37 CFR § 2.116(g) provides that the Board’s standard protective order, which is available on the Board home page of the USPTO website or upon request made to the Board, is applicable to all inter partes trademark proceedings, unless the parties agree to, and the Board approves, an alternative protective order, or unless a motion by a party to enter a specific protective order is granted by the Board. [ Note 5.]
Except for materials filed under seal pursuant to a protective order or agreement, all Board proceeding files and exhibits thereto are available for public inspection and copying. [ Note 6.] Therefore, only the particular exhibits or deposition transcript pages that disclose confidential information should be filed under seal pursuant to a protective order. If a party over-designates material as confidential, the Board will not be bound by the party’s designation, and will treat only testimony and evidence that is truly confidential and commercially sensitive (such as sales expenditures, revenues and trade secrets) as confidential. [ Note 7.] Similarly, if a party designates portions of its brief as confidential, and the statements in such portions do not appear to be confidential, the Board may order the party to submit a redacted brief in which only information that is truly confidential is deleted; failure to comply with the Board’s order may result in the original brief with the confidential portions becoming part of the public record. [ Note 8.] See TBMP § 801.03
For further information regarding confidential materials, see TBMP § 120.02 and TBMP § 412.
NOTES:
1. See 37 CFR § 2.126(c); Cf. ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1237-1238 n. 24 (TTAB 2015) (party that submitted entire discovery deposition designated as confidential was ordered to resubmit separate public and confidential copies), appeal filed, No. 15-0681 (W.D. Pa. May 26, 2015).
2. Cf. 37 CFR § 2.120(f).
3. . See, e.g., Carefirst of Maryland, Inc. v. FirstHealth of the Carolinas, Inc., 77 USPQ2d 1492, 1495 n.5 (TTAB 2005) (where briefs in their entirety were deemed "confidential," Board requested redacted copies). See also General Mills Inc. v. Fage Dairy Processing Industry SA, 100 USPQ2d 1584, 1591 n.4 (TTAB 2011), judgment set aside on other grounds, 110 USPQ2d 1679 (TTAB 2014) (non-precedential) (excessive markings of various information as confidential complicates record and often indicates that matter is improperly designated or not useful to case).
4. See, e.g., Wet Seal, Inc. v. FD Management, Inc., 82 USPQ2d 1629, 1633 n.6 (TTAB 2007).
5. MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42248 (August 1, 2007).
6. See Duke University v. Haggar Clothing Co., 54 USPQ2d 1443, 1445 (TTAB 2000).
7. Blackhorse v. Pro-Football Inc., 98 USPQ2d 1633, 1635 (TTAB 2011) (in pretrial order, parties reminded to refrain from improperly designating evidence or a show cause order may issue); Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1402 (TTAB 2010); Bass Pro Trademarks LLC v. Sportsman's Warehouse Inc., 89 USPQ2d 1844, 1848 (TTAB 2008). See also Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1461 (TTAB 2014); General Motors Corp. v. Aristide & Co., Antiquaire de Marques, 87 USPQ2d 1179, 1181 (TTAB 2008) (although entire deposition was marked confidential, the Board’s decision referred to selective portions that appeared to not be truly confidential).
8. Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1461 (TTAB 2014); Morgan Creek Productions Inc. v. Foria International Inc., 91 USPQ2d 1134, 1136 n.9 (TTAB 2009).