703.01(p) Confidential or Trade Secret Material
37 C.F.R. § 2.116 (g) The Trademark Trial and Appeal Board’s standard protective order is automatically imposed in all inter partes 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. 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. The Board may treat as not confidential that material which cannot reasonably be considered confidential, notwithstanding a designation as such by a party.
37 C.F.R. § 2.125(f) Upon motion by any party, for good cause, the Trademark Trial and Appeal Board may order that any part of an affidavit or declaration or 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(h).
37 C.F.R. § 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(f) must be submitted using the "Confidential" selection available in ESTTA, or, where appropriate, under a separate paper 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 for public viewing with the confidential portions redacted must be submitted concurrently.
Except for materials filed under seal pursuant to a protective order, the files of proceedings before the Board, including all filings by the parties and exhibits thereto are available for public viewing on the USPTO website via TTABVUE at http://ttabvue.uspto.gov/. In addition, a link to TSDR, in which reside the records of the files of subject applications and registrations, is available from TTABVUE. [ Note 1.] See TBMP § 122.02 and TBMP § 412.05. Therefore, only the particular exhibits or deposition transcript pages of the testimony affidavit, declaration or deposition 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 as confidential only testimony and evidence that is truly confidential and commercially sensitive trade secrets. [ Note 2.] Cf. TBMP § 801.03. In addition, upon motion by any party, for good cause, the Board may order that any part of an affidavit or declaration or a testimony transcript or any exhibits that directly discloses any trade secret or other confidential research, development, or commercial information may be filed under seal and kept confidential under the provisions of 37 C.F.R. § 2.27(e). Failure to comply with this order may result in imposition of any of the sanctions authorized by 37 C.F.R. § 2.120(h). [ Note 3.] See TBMP § 502.02.
In accordance with 37 C.F.R. § 2.126(c), a party who submits testimony or associated exhibits containing confidential information under seal or designated as confidential in ESTTA, must submit the testimony or associated exhibits using the "Confidential" selection in ESTTA or, where appropriate, under separate paper cover. The party must mark both the submission and its cover "confidential," and must identify the case number and parties. The party also must concurrently submit for the public record a redacted version of the testimony or associated exhibit. [ Note 4.] A rule of reasonableness dictates what information should be redacted, and only in very rare instances should an entire submission be deemed confidential. [ Note 5.] In cases where a redacted version has not been provided, the confidentiality of the information may be deemed waived. [ Note 6.] Where, in any publicly accessible filing, a party has cited, quoted from, or described, without redaction, testimony or documents that it has designated as confidential, or that its adversary has designated as confidential and the adversary has not subsequently objected, the Board may treat this as a waiver of the claim of confidentiality as to the content and subject matter of the pertinent materials. [ Note 7.] For material or testimony that has been designated confidential and which cannot be viewed on TTABVUE, the parties should include TTABVUE entry and page numbers for both the redacted and confidential versions of the submission when referencing such material in a brief. [ Note 8.] See TBMP § 801.03.
In addition, in the confidential submission, parties are strongly 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, and will reduce the likelihood that the Board inadvertently may include confidential matter in a final decision or an order on a motion. For further information regarding the filing of confidential matter and information regarding ESTTA, see TBMP § 110 and TBMP § 412.04.
If ESTTA is unavailable due to technical problems, or extraordinary circumstances exist, a party may file an affidavit, declaration or testimony, and associated exhibits, in paper form. A submission made in paper form must include a written explanation of such technical problems or extraordinary circumstances, or it will not be considered. [ Note 9.] 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.
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.
The Board’s standard protective order is automatically applicable throughout all inter partes proceedings, subject to specified exceptions, unless modified by the parties and approved by the Board. [ Note 10.] For further information on protective orders, see TBMP § 412.
For further information regarding confidential materials, see TBMP § 120.02 and TBMP § 412.
NOTES:
1. 37 C.F.R. § 2.27(d) ("the official records of applications and all proceedings relating thereto are available for public inspection") and 37 C.F.R. § 2.27(e) (filing and handling of confidential matter). See, e.g., Ayoub, Inc. and Ayoub Supply, LLC v. ACS Ayoub Carpet Service, 118 USPQ2d 1392, 1398 n.39 (TTAB 2016) (party allowed time to file redacted version of material marked as "confidential" but not submitted under seal because "it is the general policy of the Board that all papers in a proceeding be public"); Harjo v. Pro-Football, Inc., 50 USPQ2d 1705 (TTAB 1999) (Board agreed to hold exhibits marked confidential for thirty days pending receipt of a motion for a protective order but cautioned that in the absence of such motion, the exhibits would be placed in the proceeding file), rev’d on other grounds, 284 F. Supp. 2d 96, 68 USPQ2d 1225 (D.D.C. 2003), remanded, 415 F.3d 44, 75 USPQ2d 1525 (D.C. Cir. 2005), and aff’d, 565 F.3d 880, 90 USPQ2d 1593 (D.C. Cir. 2009), cert. denied, 130 S. Ct. 631 (2009).
2. 37 C.F.R. § 2.116(g) and 37 C.F.R. § 2.126(c). See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69959 (October 7, 2016) ("The purpose of the rule is to codify existing practice to treat improperly designated material that is public information as public. This is narrowly applied and only done when necessary to articulate the Board decision."). See, e.g., RxD Media, LLC v. IP Application Development LLC, 125 USPQ2d 1801, 1804 n.9 and 1806 n.13-15, 25 (TTAB 2018) (Board not bound by designation; specific examples of improper and over-designation); Kohler Co. v. Honda Giken Kogyo K.K., 125 USPQ2d 1468, 1475 (TTAB 2017) (same); Poly-America, L.P. v. Illinois Tool Works Inc., 124 USPQ2d 1508, 1511 n.6 (TTAB 2017) (same); Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1461 (TTAB 2014); 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 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).
3. See 37 C.F.R. § 2.125(f) (formerly 37 C.F.R. § 2.125(e)). 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), dismissed per stipulationon sub nom Kraft Heinz Foods Co. v. Boulder Brands USA, Inc. Case No. 2:15-0681 (W.D. Pa. May 22, 2017).
4. 37 C.F.R. § 2.126(c). See Ayoub, Inc. and Ayoub Supply, LLC v. ACS Ayoub Carpet Service, 118 USPQ2d 1392, 1398 n.39 (TTAB 2016) (party allowed time to file redacted version of material marked as "confidential" but not submitted under seal); Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014); Duke University v. Haggar Clothing Inc., 54 USPQ2d 1443, 1445 (TTAB 2000) (redacted copy deleting confidential matters must be filed). See also Fiserv, Inc. v. Electronic Transaction Systems Corp., 113 USPQ2d 1913 (TTAB 2015) (entry of confidential exhibits and briefs in ACR case).
5. 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).
6. See, e.g., Wet Seal, Inc. v. FD Management, Inc., 82 USPQ2d 1629, 1633 n.6 (TTAB 2007).
7. Kohler Co. v. Honda Giken Kogyo K.K., 125 USPQ2d 1468, 1475 n.17 (TTAB 2017).
8. Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1468 n.6 (TTAB 2016).
9. See 37 C.F.R. § 2.126(b). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69966 (October 7, 2016) (discussing the procedure for paper filings)