412.02    Modification of Board’s Standard Protective Order Governing the Exchange of Confidential and Trade Secret/Commercially Sensitive Information

The terms of the Board’s standard protective order may be modified, upon motion or upon stipulation approved by the Board, to govern the exchange of "Confidential" or "Confidential – For Attorneys’ Eyes Only (trade secret/commercially sensitive)" information. [ Note 1.] The standard protective order may be modified upon motion granted by the Board for good cause based on a particular and specific demonstration of fact, as distinguished from stereotyped and conclusory statements. [ Note 2.]

The most common kind of order allowing discovery on conditions is an order limiting the persons who are to have access to the information disclosed. [ Note 3.] However, the parties may not agree to redefine the Board’s definition of what information constitutes "Confidential" and "Confidential – For Attorneys’ Eyes Only (trade secret/commercially sensitive)" information. The parties may agree to change who has access to information and materials, but the designations retain the meaning the Board dictated in the Standard Protective Order. [ Note 4.]

NOTES:

 1.   37 C.F.R. § 2.116(g). See also MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42244 (August 1, 2007) ("parties are free to agree to modify the standard protective order").

 2.   Intercontinental Exchange Holdings, Inc. v. New York Mercantile Exchange, Inc., 2021 USPQ2d 988, at *4-5 (TTAB 2021).

 3.   8A C. WRIGHT, A. MILLER & R. MARCUS, FEDERAL PRACTICE AND PROCEDURE CIVIL § 2043 (3d ed. April 2021 update) (most common order limits person who have access and how such access may be used).

 4.   Intercontinental Exchange Holdings, Inc. v. New York Mercantile Exchange, Inc., 2021 USPQ2d 988, at *6 (TTAB 2021) (explaining three-part balancing test for modification of protective order to permit access to confidential information); United States Polo Association v. David McLane Enterprises, Inc., 2019 USPQ2d 108442, at *3 (TTAB 2019).

412.02(a)    Modification of Board’s Standard Protective Order upon Stipulation

If the parties choose to modify the terms of the Board’s standard protective order and enter into their own stipulated protective order, a copy of the executed agreement should be filed with the Board. The Board will acknowledge receipt of the agreement, but the parties should not wait for the Board’s acknowledgement to conduct themselves in accordance with the terms of their agreement. [ Note 1.] The terms of the agreement are binding as of the date the agreement is signed. Such an order may not be used as a means of circumventing paragraphs (d) and (e) of 37 C.F.R. § 2.27, which provide, in essence, that except for matter filed under seal pursuant to a protective order issued by a court or by the Board, the file of a published application or issued registration, and all proceedings relating thereto, are available for public inspection. [ Note 2.]

NOTES:

 1.   Intercontinental Exchange Holdings, Inc. v. N.w Y.rk Mercantile Exchange, Inc., 2021 USPQ2d 988, at *2 (TTAB 2021) (Board’s standard protective order may be modified by stipulation of the parties, approved by the Board, or upon motion granted by the Board).

 2.   See Duke University v. Haggar Clothing Co., 54 USPQ2d 1443, 1445 (TTAB 2000).

412.02(b)    Pro Se Litigants and In-House Legal Counsel

While the Board’s standard protective order sets forth guidelines for the disclosure of confidential information to pro se litigants and in-house counsel, in some cases, a modification of the Board’s standard protective order upon motion or by stipulation of the parties, approved by the Board, may be desirable. Special issues regarding the exchange and disclosure of information during discovery may arise in cases involving pro se litigants and in-house legal counsel. For example, under the terms of the Board’s standard protective order, such individuals do not have access to Confidential – For Attorneys’ Eyes Only (Trade Secret/Commercially Sensitive) information. [ Note 1.] The financial burden of retaining either legal counsel in the case of a pro se litigant or outside legal counsel in the case of in-house counsel does not constitute good cause to amend the Board’s protective order to remove the restriction with respect to Confidential – For Attorneys’ Eyes Only (trade secret/commercially sensitive) information. [ Note 2.] In instances where in-house counsel moves to amend the Board’s protective order to permit access to Confidential – For Attorneys’ Eyes Only (Trade Secret/Commercially Sensitive) information, the determining factor is whether in-house counsel is involved in its employer-litigant’s "competitive decision making." [ Note 3.]

NOTES:

 1.   Provisions for Protecting Confidentiality of Information Revealed During Board Proceeding, O.G. Notice (June 20, 2000). See Amazon Technologies Inc. v. Wax, 95 USPQ2d 1865, 1867 n.6 (TTAB 2010) (pro se applicant hired outside attorney solely for purpose of reviewing opposer’s "trade secret/commercially sensitive" information and documents pursuant to the protective order).

 2.   See A. Hirsh, Inc. v. United States, 657 F. Supp. 1297, 1305 (C.I.T. 1987).

 3.   See U.S. Steel Corp. v. United States, 730 F.2d 1465, 1468, 1 USPQ2d 1241, 1249 (Fed. Cir. 1984) (three-part balancing test includes consideration of (1) a party’s need for the confidential information in order to adequately prepare its case, (2) the harm that disclosure would cause the party producing the confidential information, and (3) the forum’s interest in maintaining the confidentiality of the information sought); Intercontinental Exchange Holdings, Inc. v. New York Mercantile Exchange, Inc., 2021 USPQ2d 988, at *2 (TTAB 2021) (applying three-part balancing test of U.S. Steel and denying motion to modify protective order to permit in-house counsel to access competitive information); Georgia Pacific Corp. v. Solo Cup Co., 80 USPQ2d 1950, 1953 (TTAB 2006) (Board applied test to deny opposer’s motion to modify protective order to permit in-house counsel access to trade secret or commercially sensitive information where opposers made only minimal showing that their in-house legal counsel was not involved in "competitive decision-making" activities).

412.02(c)    In Camera Inspection

In situations where there is a dispute between the parties to a proceeding as to the relevance and/or confidentiality of a document, or portions thereof, sought to be discovered, and the Board cannot determine from the arguments of the parties, on motion to compel production, whether the document is relevant and/or confidential, the Board may request that a copy of the document be submitted to the Board for an in camera inspection. [ Note 1.]

See TBMP § 412.05 with regard to the handling of confidential materials that are filed electronically or, where appropriate, on paper with the Board.

NOTES:

 1.   Amazon Technologies, Inc. v. Wax, 95 USPQ2d 1865, 1869 n.8 (TTAB 2010) (based on an in camera inspection, opposer properly designated produced materials as trade secret/commercially sensitive).

412.02(d)    Contents of Protective Order

In some cases, parties may agree to modify the Board’s standard protective order, or the standard protective order is modified upon motion approved by the Board. The revised protective order typically may include provisions further clarifying the following:

  • (1) The description of the manner in which confidential or trade secret information is to be handled.
  • (2) The requirement that a party claiming confidentiality or trade secret protection designate the information covered by the claim prior to disclosure of the information to the discovering party.
  • (3) The provision that a party may not designate information as confidential or trade secret unless the party has a reasonable basis for believing that the information is, in fact, confidential or trade secret in nature.
  • (4) The provision that information designated by the disclosing party as confidential or trade secret may not include information which, at or prior to disclosure thereof to the discovering party, is known to or independently developed by the discovering party; or is public knowledge or becomes available to the public without violation of the agreement.
  • (5) The provision that information designated by the disclosing party as confidential or trade secret may not include information that, after the disclosure thereof, is revealed to the public by a person having the unrestricted right to do so.
  • (6) The provision that information designated by the disclosing party as confidential or trade secret may not include information which is acquired by the discovering party from a third party, which lawfully possesses the information and/or owes no duty of nondisclosure to the party providing discovery.
  • (7) The specification of the persons to whom confidential or trade secret information may be disclosed (e.g., outside counsel; in-house counsel; counsel’s necessary legal and clerical personnel).
  • (8) The provision that all persons to whom confidential or trade secret information is disclosed shall be advised of the existence and terms of the protective order.
  • (9) The provision that the discovering party will not disclose or make use of confidential or trade secret information provided to it under the order except for purposes of the proceeding in which the information is provided.
  • (10) The means for resolving disputes over whether particular matter constitutes confidential or trade secret information.
  • (11) The statement that at the end of the proceeding, each party shall return to the disclosing party all confidential information and materials, including all copies, summaries, and abstracts thereof.
  • (12) For material designated as confidential or trade secret to be made of record in the proceeding, it shall be submitted to the Board electronically designated as "CONFIDENTIAL" via ESTTA, or, where appropriate, by paper in a separate sealed envelope or other sealed container bearing the proceeding number and name, an indication of the general nature of the contents of the container, e.g. opposer’s brief, or applicant’s motion with specification of the subject of the brief or motion, and, in large letters, the designation "CONFIDENTIAL." For Confidential or Confidential – For Attorneys’ Eyes Only (Trade Secret/Commercially Sensitive) submissions filed either via ESTTA or, where appropriate, by paper, two versions are required – a confidential version as well as a redacted version available for public viewing. The redacted copy of the submission must be submitted concurrently with the confidential filing, see 37 C.F.R. § 2.126(c). The parties must file Confidential or Confidential – For Attorneys’ Eyes Only (Trade Secret/Commercially Sensitive) materials via ESTTA. For confidential submissions, it is preferable for the parties to enclose the confidential information in brackets so as to facilitate a better comparison between the public and confidential versions of the filing when the Board is issuing an order or preparing a final decision. In addition, when referring to material or testimony that has been designated confidential and which cannot be viewed on TTABVUE, the TTABVUE docket and entry number where such material or testimony is located should be included in any citation.

    For further information regarding the filing of confidential materials, see TBMP § 120.02, TBMP § 412.04 and TBMP § 412.05.

The Board’s standard protective order can be found on the USPTO website at: www.uspto.gov/ttab.

For additional information concerning the contents of a protective order, see the cases and authorities cited in the note below. [ Note 1.]

NOTES:

 1.   See Intercontinental Exchange Holdings, Inc. v. New York Mercantile Exchange, Inc., 2021 USPQ2d 988 (TTAB 2021) (motion seeking modification of standard protective order may be granted on a showing of good cause). See also Johnston Pump/General Valve Inc. v. Chromalloy American Corp., 10 USPQ2d 1671, 1676 (TTAB 1988) (in addition to provisions mandated by Board, protective order may contain other provisions as are agreeable to parties); Neville Chemical Co. v. Lubrizol Corp., 184 USPQ 689, 690 (TTAB 1975) (Board required provision that information furnished by opposer would be confined to applicant’s attorneys). Please Note: These earlier cases were decided prior to automatic imposition of the Board’s standard protective order under 37 C.F.R. § 2.116(g).