802 Oral Hearing
37 C.F.R. § 2.129 Oral argument; reconsideration.
- (a) If a party desires to have an oral argument at final hearing, the party shall request such argument by a separate notice filed not later than ten days after the due date for the filing of the last reply brief in the proceeding. Oral arguments 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. If any party appears at the specified time, that party will be heard. Parties and members of the Board may attend in person or, at the discretion of the Board, remotely. If the Board is prevented from hearing the case at the specified time, a new hearing date will be set. Unless otherwise permitted, oral arguments in an inter partes case will be limited to thirty minutes for each party. A party in the position of plaintiff may reserve part of the time allowed for oral argument to present a rebuttal argument.
- (b) The date or time of a hearing may be reset, so far as is convenient and proper, to meet the wishes of the parties and their attorneys or other authorized representatives. The Board may, however, deny a request to reset a hearing date for lack of good cause or if multiple requests for rescheduling have been filed.
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For general information concerning oral hearings in ex parte appeals to the Board, see TBMP § 1216
Please Note: Administrative Trademark Judges and other statutory members of the Board collectively are referred to as "judges."
802.01 In General
The oral hearing on the case in an inter partes proceeding before the Board corresponds to the oral summation in court proceedings after all the evidence is in. [ Note 1.] For information on oral hearings in ex parte cases, see TBMP § 1216.
An oral hearing is optional and is scheduled only if a timely request therefor is filed by a party to the proceeding, with the requisite fee. [ Note 2.] In the vast majority of cases, an oral hearing is not requested. The oral hearing provides a party with one last opportunity to emphasize its strongest arguments, and to refute its adversary’s arguments. It is particularly useful in cases with complex issues, a complex record, highly technical goods and/or services, or where the defendant needs to respond to arguments in the plaintiff’s reply brief. If neither party requests an oral hearing, the case will be decided on the evidence made of record during the testimony periods. The record and brief, therefore, are of paramount importance.
Subject to Fed. R. Civ. P. 11, a party is entitled to offer at oral hearing any argument it feels will be to its advantage. However, the facts recited and arguments made at oral hearing must be based on the evidence offered at trial. An oral hearing may not be used as a vehicle for the introduction of evidence. [ Note 3.] TBMP § 704.06 and TBMP § 801.01.
Board practice does not allow parties to submit additional comments or clarify their positions after oral hearing unless specifically requested to do so by the Board. [ Note 4.]
Following an oral hearing, the Board will add as an entry in TTABVUE an "Appearance Record" identifying the presiding judges and the individuals who appeared on behalf of each party.
Questions or inquiries regarding an oral hearing can be directed to TTABHearings@uspto.gov.
Parties and judges may attend oral hearings in person or, at the discretion of the Board, remotely through video conference. [ Note 5.]
NOTES:
3. See 37 C.F.R. § 2.123(k).
4. Swiss Watch International Inc. v. Federation of the Swiss Watch Industry, 101 USPQ2d 1731, 1736 (TTAB 2012) ("Motion to Request Clarification After Oral Argument" given no consideration; "[i]f petitioner had some question about how to comply with the Board’s request, perhaps in view of the confidentiality agreements the parties had signed, a motion for clarification might have been warranted on this subject.").
802.02 Request for Oral Hearing
A party that wishes to have an oral hearing on the case must file a request, by separate submission via ESTTA – not as part of its brief on the case – not later than 10 days after the due date for filing the last reply brief in the proceeding. [ Note 1.] The request for oral hearing must be accompanied by the requisite filing fee. [ Note 2.] Under certain limited circumstances, a party may file a request for oral hearing via paper submission. [ Note 3.] Any party to the proceeding may request a hearing.
The Board will issue an order acknowledging receipt of the request and allowing time for submission of several potential dates for the hearing, agreed upon by both parties, if the information was not provided in the request. The response also should indicate whether either party will attend the oral hearing by video conference. Such information is intended to assist the Board in scheduling the oral hearing. Ordinarily, hearings are scheduled on Tuesdays, Wednesdays and Thursdays between 10:00 a.m. and 3:00 p.m. (Eastern Time). The Board will notify the parties by written order the date and time of the scheduled hearing.
If an oral hearing is not requested, the case will be decided in due course after the due date for filing the last reply brief on the case.
NOTES:
802.03 Time and Place of Hearing
When a timely request for an oral hearing, with the requisite fee, has been filed by a party to an inter partes proceeding before the Board, the Board sets the date and time for the hearing with input from the parties, and sends each party written notice of the hearing specifying the date, time, and location of the hearing. [ Note 1.] Oral hearings are scheduled on Tuesdays, Wednesdays and Thursdays between 10:00 a.m. and 3:00 p.m. (Eastern Time). In setting an oral hearing, the Board normally expects the parties, or their attorneys or other authorized representatives, to confer with each other to determine at least three convenient dates (suggested to be within the next four to eight weeks) and times for the hearing within the foregoing parameters. It is recommend that the requesting party provide that information to the Board with the request for oral hearing. If the parties do not provide potential dates with the request for oral hearing, the Board will issue an order asking the parties to provide three possible dates. If the Board issues such an order and the parties do not respond, or the response does not include agreed upon dates or a reason why the parties could not reach consensus on the dates, the Board will consider the request for oral hearing to be waived.
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.
Attendance at a scheduled oral hearing is voluntary, not mandatory. If any party appears at the specified time, the party will be heard, whether or not the party that appears is the one that requested the hearing. [ Note 2.]
Any party who does not intend to be present for the oral hearing should notify the Board at least two (2) weeks in advance of the scheduled hearing date. If a party, or its attorney, that requested an oral hearing fails to appear at the appointed time, without giving prior notice to the Board of its nonappearance, that party's right to an oral hearing will be deemed waived, and the hearing will not be rescheduled.
Please Note: For the foreseeable future, the Board will only be conducting oral hearings by video. For more information, please visit our website at www.uspto.gov/ttab.
NOTES:
802.03(a) Rescheduling a Hearing
If the Board is prevented from hearing the case at the time specified in the notice of hearing, a new hearing date will be set. [ Note 1.] The Board will reschedule an oral hearing, at the request of the parties, if there is a reasonable basis for the request; but, absent compelling circumstances or the consent of all other parties, a hearing date will not be changed if the request for rescheduling is made within two weeks of the scheduled hearing date. A party who wishes to reschedule an oral hearing with the consent of all parties must first determine at least three agreed-upon, non-consecutive dates and times, and file through ESTTA a written stipulation or consented motion confirming the parties’ agreement to reschedule, and the proposed three new dates and times. The agreed-upon dates must be between four and eight weeks from the mailing date of the Board scheduling order setting the original hearing date. The parties should also contact the Board’s Hearing and Decisions Program Specialist by telephone to provide notification of the filed stipulation or consented motion to reschedule. If the parties agree to reschedule an oral hearing due to settlement negotiations, they should request that proceedings, including the time for oral hearing, be suspended pending completion of the negotiations. If agreement cannot be reached, the party that wishes to have the hearing reset must file through ESTTA a motion therefor showing good cause. [ Note 2.] Parties should not file repeated requests to reschedule an oral hearing. The Board may deny a request to reschedule a hearing date for lack of good cause or if multiple requests for rescheduling have been filed. [ Note 3.]
NOTES:
2. See 37 C.F.R § 2.129(b).
3. 37 C.F.R § 2.129(b). MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69968 (October 7, 2016).
802.03(b) Attendance by Video Conference
For hearings held at the offices of the Board, a party may request attendance via video conference from another location. A video conference will be conducted in the same manner as if conducted entirely in the hearing room.
When a party submits its written request for an oral hearing, it should indicate if it is also requesting to attend by video conference. A request to attend a hearing by video conference may also be made in response to the Board order which issues after a party submits a request for oral hearing. Otherwise, a party is expected to appear in person unless it has clearly stated, in its initial request for oral hearing or in its response to the Board’s order, its intent to participate by video conference. A party that has not timely and clearly stated its intent to participate by video conference may not be able to switch to video participation without also rescheduling any already scheduled date for the hearing.
The USPTO does not provide the parties with the means to participate by video conference. The party requesting attendance at the oral hearing through a video conference is responsible for arranging and paying for its video connection. The Board cannot assist the party in this endeavor. The requesting party also is responsible for contacting a USPTO video conference technician by email at VTCOPSDISTLIST@USPTO.gov no fewer than three business days before the confirmed hearing date to provide the proceeding number(s), the date/time of the hearing, and the type of equipment that the party plans to use. A USPTO video conference technician will schedule a test of the equipment the party plans to use. The Board will liberally grant remote attendance, but retains discretion to account for any technological limitations. [ Note 1.]
For information concerning requests to reset an oral hearing, see TBMP § 541.01.
NOTES:
1. 37 C.F.R. § 2.129(a). MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 81 Fed. Reg. 69950, 69968 (October 7, 2016).
802.04 Before Whom Held
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 attend oral argument in person or remotely. [ Note 1.] Normally, an oral hearing panel consists of only three judges. If for some reason a judge on a panel of three that heard the oral argument is unable to participate in the final decision, another judge may be substituted at final decision for the unavailable judge, even though the substituted judge was not present at the oral hearing; no new oral hearing is necessary. [ Note 2.]
The Director of the USPTO or the Board may, in its discretion, use an augmented panel to hear a case. A decision to use an augmented panel may be made either upon the Director’s or the Board’s own initiative, or upon motion filed by a party to the proceeding. [ Note 3.]
For information concerning motions for an augmented panel hearing, see TBMP § 540. For further information concerning the constitution of Board panels, see In re Alappat, 33 F.3d 1526, 31 USPQ2d 1545, 1547-51 (Fed. Cir. 1994) (en banc).
NOTES:
1. See Trademark Act § 17, 15 U.S.C. § 1067(b); 37 C.F.R. § 2.129(a); MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 81 Fed. Reg. 69950, 69967 (Oct. 7, 2016) (codifying current practice that all statutory members of the Board may hear oral argument and parties and members of the Board may attend oral argument in person or, at the discretion of the Board, remotely). See also Knickerbocker Toy Co. v. Faultless Starch Co., 467 F.2d 501, 175 USPQ 417, 420 n.8 (CCPA 1972) (where only one Board member's name appeared on decision, court presumed the proper number participated in decision).
2. See Swiss Watch International Inc. v. Federation of the Swiss Watch Industry, 101 USPQ2d 1731, 1733 n.1 (TTAB 2012) (change in composition of panel does not necessitate a rehearing of oral argument); Hunt Control Systems Inc. v. Koninklijke Philips Electronics N.V., 98 USPQ2d 1558, 1560 n.1 (TTAB 2011) (same), rev’d on other grounds, No. 11-3684 (D.N.J. Aug. 29, 2017); Rocket Trademarks Pty Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1068 n.1 (TTAB 2011) (same). See also In re Bose Corp., 772 F.2d 866, 227 USPQ 1, 3-4 (Fed. Cir. 1985) (statutory requirement that a case be heard "means judicially heard not physically heard"); Jockey International, Inc. v. Bette Appel Unltd., 216 USPQ 359, 360 (TTAB 1982) (finding "nothing in the Trademark Act or in the Trademark Rules of Practice which prohibits the substitution of a Member for a Member who has resigned or retired between the hearing of the oral argument and the determination of the issues in a proceeding before us"). Cf. Plus Products v. Medical Modalities Associates, Inc., 211 USPQ 1199 (TTAB 1981), set aside on other grounds and new decision entered, 217 USPQ 464, 464 (TTAB 1983) (final decision rendered by only two Board members vacated); Ronson Corp. v. Ronco Teleproducts, Inc., 197 USPQ 492, 494 (Comm’r 1978) (final decision heard by three Board members but rendered by only two, vacated and oral hearing rescheduled); Ethicon, Inc. v. American Cyanamid Co., 193 USPQ 374, 377 (Comm’r 1977) (petition to vacate decision denied).
3. See In re Alappat, 33 F.3d 1526, 31 USPQ2d 1545, 1547-51 (Fed. Cir. 1994) (en banc) (Director has the authority under § 7 of the Patent Act (now § 6 of the Leahy-Smith America Invents Act) to convene an expanded panel which includes not only administrative patent judges, but also one or more of the senior executive officers of the USPTO identified in that section, including himself or herself). Cf. 15 U.S.C § 1067 (containing similar provisions for the TTAB).
See also N.Y. Yankees Partnership v. IET Products & Services, Inc., 114 USPQ2d 1497 (TTAB 2015) (augmented seven-member panel used to sustain opposition regarding dilution by blurring claim); In re Lebanese Arak Corp., 94 USPQ2d 1215 (TTAB 2010) (augmented panel used to affirm examining attorney’s refusal to register the mark KHORAN as disparaging under Trademark Act § 2(a)); In re Ferrero S.p.A., 22 USPQ2d 1800 (TTAB 1992) (augmented panel used to overrule previous decision barring examining attorneys from requesting reconsideration), recon. denied, 24 USPQ2d 1061 (TTAB 1992); In re Johanna Farms Inc., 8 USPQ2d 1408, 1409 (TTAB 1988) (in view of issues presented, oral hearing held before augmented panel of eight Board members); In re McDonald’s Corp., 230 USPQ 210 (TTAB 1986) (augmented five-member panel); and In re WSM, Inc., 225 USPQ 883 (TTAB 1985) (augmented panel used to delineate rights in FCC "assigned" call letters for radio broadcasting services). See also In re Active Ankle Systems Inc., 83 USPQ2d 1532, 1534 (TTAB 2007) (an augmented panel is not necessary to reach the proper decision where the examining attorney relied on cases that are no longer good law); Crocker National Bank v. Canadian Imperial Bank of Commerce, 223 USPQ 909, 909 n.1 (TTAB 1984) (augmented panel of eight members because of the importance of the issues). Cf. Federal Circuit Rule 35. Cf. also Fioravanti v. Fioravanti Corrado S.R.L., 1 USPQ2d 1304, 1305 (TTAB 1986) (case not appropriate for designation of augmented panel on request for en banc consideration).
802.05 Length of Oral Argument
Ordinarily, each party in a Board inter partes proceeding is allowed 30 minutes for its oral argument. If it so desires, the plaintiff may reserve part of its 30 minutes for rebuttal. [ Note 1.] No additional time for oral argument is allotted for counterclaims or consolidated proceedings. Accordingly, if there is a counterclaim, the defendant, as the plaintiff in the counterclaim, may also reserve part of its 30 minutes for rebuttal on the counterclaim.
There is no requirement that a party use all of its allotted 30 minutes for oral argument. Often a case may be presented in considerably less than 30 minutes.
On the other hand, if a party feels that it needs more than 30 minutes for oral argument, it may file a request with the Board for additional time. [ Note 2.] If the request is granted, each party will be allowed the same amount of time for oral argument. For information concerning requests or motions for additional time for oral argument, see TBMP § 541.02.
NOTES:
2. See 37 C.F.R. § 2.129(a); U.S. Navy v. United States Manufacturing Co., 2 USPQ2d 1254, 1255 (TTAB 1987) (additional time for arguments allowed in view of voluminous record).
802.06 Audio Recording and Video Recording
Upon motion showing good cause and with prior arrangement, the Board will usually permit a party to make an audio recording of an oral hearing. [ Note 1.] The recording, when permitted by the Board, is strictly for the party’s private use, and is not to be used for purposes of publicity, or as "evidence" in any proceeding (the oral hearing is not part of the evidentiary record in a proceeding before the Board). The motion should be filed well in advance of the date set for the oral hearing, so if an objection is raised, the Board will have time to rule on the matter. For information concerning motions for leave to audio record an oral hearing, see TBMP § 542.
If permission to record an oral hearing is granted, the moving party is responsible for furnishing, operating, and removing its own audio recording equipment in an unobtrusive manner.
A court reporter is distracting and disruptive in the context of an oral hearing before the Board, and therefore may not be used. For the same reason, an oral hearing before the Board may not be video recorded. TBMP § 542.
NOTES:
1. But cf. 37 C.F.R. § 2.120(j)(3) (Parties prohibited from recording conferences held to determine stipulations, motions, and other interlocutory issues.).
802.07 Visual Aids, etc.
It is recommended that a party who wishes to present a visual aid at the hearing email a copy to TTABHearings@uspto.gov and to opposing counsel at least three days before the hearing for distribution to the panel. The Board will generally allow certain types of materials, such as graphs, large depictions of marks, schedules, charts, etc., to be used at oral hearing, either for clarification or to eliminate the need for extended description, when such materials are based on evidence properly of record. [ Note 1.]
A party may also bring to the oral hearing any materials introduced as exhibits at trial, including audio or video recordings of commercials or demonstrations. It is recommended that a party that introduced an audio or video recording as an exhibit at trial which wishes to play the recording at the oral hearing notify the Board at least three days in advance so that the Board can be prepared with the appropriate platform. In addition, a party that wishes to play such a recording at oral hearing is responsible for furnishing, operating, and removing the necessary equipment in an unobtrusive manner.
A party may not, however, use an oral hearing for the purpose of offering new evidence, whether in the form of charts, graphs, exhibits, or other such materials. TBMP § 802.01. Nor may a party submit in writing the text of its oral argument; to allow such a practice would be to permit a party, in effect, to file an additional brief on the case. [ Note 2.]
NOTES:
1. See Reflange Inc. v. R-Con International, 17 USPQ2d 1125, 1126 n.5 (TTAB 1990).
2. See Reflange Inc. v. R-Con International, 17 USPQ2d 1125, 1126 n.5 (TTAB 1990).
802.08 Nature of Hearing
Prior to an oral hearing, the judges read the briefs on the case and, if necessary, examine the case files. Thus, persons presenting oral arguments should not read from the briefs on the case, except to emphasize an admission contained in an adversary’s brief.
Normally, an oral hearing case is not assigned to a particular judge to draft a final decision until after the oral hearing. Thus, the judge who sits in the middle of the panel of three is not necessarily the person to whom the case will be assigned for decision; rather, the middle panel member is usually (but not always) the senior judge.
A person presenting oral arguments should be prepared to answer questions from the judges at any point in the arguments. If exhibits or visual aids have been brought to the oral hearing, it is recommended that they should have been provided to the Board and opposing counsel at least three days before the hearing. See TBMP § 802.07. When a hearing is in session, no one should be heard except for counsel making an argument or a judge. Further, a person presenting oral arguments should never interrupt the oral arguments of the adversary.