102.03 General Description of Board Proceedings
An inter partes proceeding before the Board is similar to a civil action in a federal district court. There are pleadings (at least in an opposition or cancellation proceeding); a wide range of possible motions; conferencing; disclosures; discovery; trial; briefs; and, if requested, an oral hearing, followed by a decision on the case. [ Note 1.] However, because the Board is an administrative tribunal, its rules and procedures necessarily differ in some respects from those prevailing in the federal district courts. [ Note 2.] See also TBMP § 502.01 (Available Motions) and TBMP § 702 (Pretrial Disclosures; Manner of Trial; and Introduction of Evidence). The principal difference is that proceedings before the Board are conducted in writing, and the Board’s actions in a particular case are based upon the written record therein. For example, the Board does not preside at the taking of testimony. Rather, all testimony is taken out of the presence of the Board during the assigned testimony periods, and the written transcripts thereof, together with any exhibits thereto, are then filed with the Board. Indeed, a party to a proceeding before the Board need never come to the offices of the Board at all, unless the Board requests that the parties meet with the Board at its offices for a pretrial conference pursuant to 37 C.F.R. § 2.120(j), or unless the party wishes to argue its case at oral hearing (an oral hearing is held only if requested by a party to the proceeding). Parties may stipulate to expediting the proceeding in whole or in part utilizing Accelerated Case Resolution (ACR). See TBMP § 528.0 5 (a)(2), TBMP § 702.04, and TBMP § 705.
An ex parte appeal, being appellate in nature, is a much simpler and shorter procedure, involving only the filing of briefs by the applicant or registrant and an examining attorney, and, if requested by the applicant or registrant, an oral hearing. See TBMP Chapter 1200 (Ex Parte Appeals from Refusals of Applicantions) and TBMP Chapter 1300 (Ex Parte Appeals from Expungement and Reexamination of Registration Proceedings).
"The Trademark Trial and Appeal Board shall include the Director, Deputy Director of the United States Patent and Trademark Office, the Commissioner for Patents, the Commissioner for Trademarks, and [the] administrative trademark judges...." [ Note 3.] This Manual refers to these statutory members of the Board collectively as "judges."
Interlocutory motions, requests, conceded matters, and other matters not actually or potentially dispositive of a proceeding may be acted upon by a single Board judge, or by a single interlocutory attorney ("attorney") or paralegal to whom such authority has been delegated, and certain conceded and non-dispositive matters may be acted on automatically by ESTTA. [ Note 4.] Decisions on the merits of a case, and on complex or contested motions that are potentially dispositive of the case, are rendered by a panel of at least three Board judges. [ Note 5.] Stipulations or consented (or uncontested) motions to dispose of the proceeding in a certain manner may be decided per curiam by the Board. [ Note 6.] Institution orders, stipulated scheduling motions, issuance of notices of default, and other administrative matters may be acted upon by Board paralegals or may be administered through ESTTA. Motions disposed of by orders entitled ‘‘By the Trademark Trial and Appeal Board’’ have the same legal effect as orders by a panel of three Administrative Trademark Judges of the Board. [ Note 7.] The parties must enter their changes of address and representation using ESTTA. For further information regarding ESTTA, see TBMP § 110.
NOTES:
1. See B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. 138, 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015); Yamaha International Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1004 (Fed. Cir. 1988) (USPTO rules governing the procedures are designed to approximate the proceedings in a courtroom trial).
2. See B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S.138, 135 S.Ct. 1293, 113 USPQ2d 2045, 2049 (2015); Yamaha International Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1004 (Fed. Cir. 1988); La Maur, Inc. v. Bagwells Enterprises, Inc., 193 USPQ 234, 235 (Comm’r 1976) ("The procedures followed by the Board are not like the procedures in a courtroom and the applicability of the Federal Rules of Civil Procedure must be judged in that light....").
3. Trademark Act § 17(b), 15 U.S.C. § 1067(b).
5. 37 C.F.R. § 2.129(a), 37 C.F.R. § 2.142(e)(1). See Fifth Generation Inc. v. Titomirov Vodka LLC, 2019 USPQ2d 418666, at *3 (TTAB 2019) (Board will not decide potentially dispositive motion by telephone; such motions must issue by panel or per curiam).
6. See Fifth Generation Inc. v. Titomirov Vodka LLC, 2019 USPQ2d 418666, at *3 (TTAB 2019) (potentially dispositive motions may issue per curiam).