1216 Oral Hearing
- (1) If the appellant desires an oral hearing, a request should be made by a separate notice filed not later than ten days after the due date for a reply brief. Oral argument will be heard by at least three Administrative Trademark Judges or other statutory members of the Trademark Trial and Appeal Board at the time specified in the notice of hearing, which may be reset if the Board is prevented from hearing the argument at the specified time or, so far as is convenient and proper, to meet the wish of the appellant or the appellant’s attorney or other authorized representative. Appellants, examining attorneys, and members of the Board may attend in person or, at the discretion of the Board, remotely.
- (2) If the appellant requests an oral argument, the examining attorney who issued the refusal of registration or the requirement from which the appeal is taken, or in lieu thereof another examining attorney as designated by a supervisory or managing attorney, shall present an oral argument. If no request for an oral hearing is made by the appellant, the appeal will be decided on the record and briefs.
- (3) Oral argument will be limited to twenty minutes by the appellant and ten minutes by the examining attorney. The appellant may reserve part of the time allowed for oral argument to present a rebuttal argument.
For general information concerning oral hearings in proceedings before the Board, see TBMP § 802. What follows below is information pertaining specifically to oral hearings in ex parte appeals to the Board.
An oral hearing is not mandatory in an ex parte appeal to the Board, but will be scheduled if a timely request therefor is filed by the applicant. [ Note 1.] If the applicant does not request an oral hearing, the appeal will be decided on the record and briefs. [ Note 2.] An examining attorney may not request an oral hearing. An oral hearing is particularly useful in ex parte cases involving complex issues or where the goods or services identified in the applicant’s application (or a cited registration) are technical or unfamiliar, or where an issue on appeal is not clearly defined. In addition, the oral hearing sometimes provides an opportunity for the applicant and examining attorney to work out an agreement that results in approval of the application for publication (or for registration, in the case of a Supplemental Register application).
If the applicant desires an oral hearing in an ex parte appeal to the Board, the applicant should file a written request not later than 10 days after the due date for applicant’s reply brief. The request should be a separate document, and not included in an applicant’s brief, reply brief, or other submission filed with the Board. The request for oral hearing must be filed through ESTTA, which includes "Request for Oral Hearing" among the list of entries identifying the type of submission being filed. In the rare circumstances it is filed on paper, only one copy of such request should be submitted. The request should include three tentative dates and times for the oral hearing and whether applicant would like to appear at the oral hearing in person or by video conference. The Board will then send the applicant a notice specifying the date, time and location of the hearing. If the request for an oral hearing does not include tentative dates, the Board will issue an order requesting the applicant to provide possible dates, and upon receipt will send the applicant a notice of hearing specifying the date, time, and location of the hearing. If there is no response to the Board’s order the request for oral hearing will be considered waived. Ordinarily, hearings are scheduled on Tuesdays, Wednesdays and Thursdays between 10:00 a.m. and 3:00 p.m. (Eastern Time).
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, and the Board in its discretion may allow, attendance via video connection from another location. [ Note 3.] A video hearing will be conducted in the same manner as if conducted entirely in the hearing room. An applicant should request a hearing by video conference in its written request for an oral hearing. An applicant that requests attendance at the oral hearing via video conferencing is responsible for arranging and paying for its video connection. The Board’s order scheduling the hearing will specify the software that the Board uses for the video connection, and the applicant must use compatible technology. A day before the scheduled hearing, the Board will contact the applicant to test the video connection. See TBMP § 802.03.
An oral hearing is held before a panel of at least three members of the Board (i.e., its statutory members, generally administrative trademark judges), who may appear via video or phone. [ Note 4.] The time for oral hearing may be reset if the Board is prevented from holding the hearing at the specified time, or, so far as is convenient and proper, to meet the wishes of the applicant (or the applicant’s attorney or other authorized representative) or the examining attorney. [ Note 5.] Board practice in such a situation is to reschedule an oral hearing, either by postponing the date or by moving it forward, but, absent compelling circumstances, not to change a hearing date if the request for rescheduling is made within two weeks of the scheduled hearing date, unless both the applicant and the examining attorney agree to the change. Therefore, if the applicant requires a rescheduling of the oral hearing, it should inform the Board by telephoning the Board’s Hearing and Decision Specialist (whose contact information appears on the scheduling order), and by a follow-up confirmation, filed through ESTTA, not later than two weeks prior to the scheduled hearing date. If circumstances arise that prevent the applicant from providing such notice, the applicant should inform the Board as soon as the circumstances become known. Although the Board will allow the cancellation of the oral hearing by the applicant at any point, the Board will consider the circumstances in determining whether it will grant a request by the applicant to reschedule the oral hearing, or whether it will decide the case on the briefs without oral hearing. Both the reason for the rescheduling request, and the time in advance of the hearing at which it is made, will be considered in determining whether the request is granted. [ Note 6.]
If the applicant requests an oral hearing, the examining attorney who issued the Office action from which the appeal was taken, or another examining attorney who has been designated for the purpose by a supervisory or managing attorney, must appear at the hearing and present an oral argument. [ Note 7.] If the examining attorney requires a rescheduling of the oral hearing, he or she should advise the Hearing Officer of the Board, by telephone or email, not later than two weeks prior to the scheduled hearing date. If circumstances arise which prevent the examining attorney from providing such notice, another examining attorney should be designated by a supervisory or managing attorney to appear at the oral hearing. In the rare instances in which the applicant appears but the examining attorney does not, the oral hearing will be held without the examining attorney; only the applicant will present its oral argument.
The applicant is allowed 20 minutes for its oral argument, and the examining attorney is allowed 10 minutes. If the applicant so desires, it may reserve a portion of its 20 minutes to use for rebuttal argument. [ Note 8.] There is no requirement that the applicant and the examining attorney use all of their allotted time. Often, an ex parte appeal to the Board is of such nature that oral arguments thereon may be presented in considerably less than the allotted time. On the other hand, if, because of the complexity or novelty of the issues, an applicant feels that it needs more than 20 minutes for oral argument, it should file a written request with the Board for additional time. [ Note 9.] Cf. TBMP § 802.05. If the request is granted, the examining attorney will also be allowed additional time.
For information concerning audiotaping, visual aids, videoconferencing and the nature of an oral hearing before the Board, see TBMP § 802.06, TBMP § 802.07, TBMP § 802.03 and TBMP § 802.08, respectively.
The oral hearing is not an opportunity to present new evidence to the Board. Documents offered at the hearing that were not properly made of record will not be considered unless consented to by the nonoffering party, in which case they will be deemed to have been stipulated into the record. [ Note 10.]
NOTES:
3. 37 CFR §2.142(e)(1). See, e.g., In re Datapipe, Inc., 111 USPQ2d 1330, 1332 (TTAB 2014) (counsel for applicant appeared via videoconference at oral hearing).
4. See Trademark Act § 17, 15 U.S.C. § 1067; 37 CFR § 2.142(e)(1); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69968 (Oct. 7, 2016) ("The Office is amending § 2.142(e)(1) to clarify that all statutory members of the Board may hear oral argument. The Office is further amending § 2.142(e)(1) to add that appellants, examining attorneys, and members of the Board may attend oral argument in person or, at the discretion of the Board, remotely. The amendment codifies current Office practice and is consistent with the Office’s amendments to § 2.129(a).").
6. See In re Taylor & Francis [Publishers] Inc., 55 USPQ2d 1213, 1214 n.2 (TTAB 2000) (applicant’s request to reschedule hearing received three hours before the scheduled hearing because of "a sudden conflict of time" was denied; Commissioner [now Director] denied petition stating that Board has wide discretion in scheduling or rescheduling oral hearings).
7. See 37 CFR § 2.142(e)(2).
10. In re Caterpillar Inc., 43 USPQ2d 1335, 1337 (TTAB 1997) (exhibits in booklet submitted at oral hearing which had not previously been made of record were not considered).