101.03 Decisional Law
Proceedings before the Board are also governed, to a large extent, by precedential decisions in prior cases. These decisions include those of the Board itself, as well as the decisions of the Court of Appeals for the Federal Circuit ("Federal Circuit") (which determines appeals from decisions of the Board); the Court of Customs and Patent Appeals (predecessor of the Court of Appeals for the Federal Circuit); and the Director of The United States Patent and Trademark Office (formerly the Commissioner of Patents and Trademarks) ("Director"), who determines petitions seeking review of Board actions on procedural matters.
The Board relies primarily on precedent from the Court of Appeals for the Federal Circuit. The Federal Circuit is the Board’s primary reviewing court since by statute, any applicant or party to an inter partes proceeding who is dissatisfied with the Board’s decision may seek review of the decision in the Federal Circuit. Also, the Federal Circuit's cases address registration issues more specifically. [ Note 1.]
Decisions of the Board, the Director, and the Court of Appeals for the Federal Circuit appear in the United States Patents Quarterly ("USPQ"), Bloomberg Law database, [ Note 2.], and may also be found in LexisNexis Corporation’s LEXIS/NEXIS legal database, and in the Intellectual Property Library of ThomsonReuters Corporation’s WESTLAW database. Final Board decisions are also available on a public electronic database by accessing the TTAB Reading Room at https://ttab-reading-room.uspto.gov/efoia/efoia-ui/#/search/decisions through the Board home page of the USPTO website. Docket information and full images of Board files may be viewed by accessing TTABVUE at http://ttabvue.uspto.gov/ttabvue/.
Decisions that are designated by the Board as "Citable as Precedent," "Precedent of the Board," "Precedent of the TTAB," or "for publication in full" are citable as precedent. Since January 23, 2007, the Board has permitted citation to any Board decision or interlocutory order, although a decision or order designated as not precedential is not binding upon the Board, but may be cited for whatever persuasive value it might have. [ Note 3.] In general, however, the Board discourages the citation to non-precedential opinions. [ Note 4.]
Decisions of other tribunals may be cited to the extent allowed and for the purposes permitted by the tribunal that issued the decision.
Citation to all TTAB decisions should be to the United States Patent Quarterly, if the decision appears therein; otherwise, to a USPTO public electronic database [e.g. TTABVUE], or Bloomberg Law (BL), WESTLAW, or LEXIS/NEXIS, as well as to any other official reporter, if available, such as the Federal Reporter or Federal Supplement. If a non-precedential decision does not appear in the United States Patents Quarterly or the USPTO’s public electronic databases, the citing party should append a copy of the decision to the motion or brief in which the decision is cited. [ Note 5.]
Any cited decision of the Board or another court, which appears in the USPQ, should include a citation to the USPQ, in addition to citation to an official reporter (if any), such as the Federal Reporter or Federal Supplement. [ Note 6.] See TBMP § 801.03 (inter partes briefs); TBMP § 1203.02(f)(ex parte briefs).
NOTES:
1. Grand Canyon West Ranch LLC v. Hualapai Tribe, 88 USPQ2d 1501, 1506 n.2 (TTAB 2008). See also 15 U.S.C. § 1071(a); 28 U.S.C. § 1295(a)(4)(B).
2. Bloomberg Law ceased publishing the USPQ in print form in December 2018.
3. Citation of Opinions to the Trademark Trial and Appeal Board, O.G. Notice (Jan. 23, 2007). See In re tapio GmbH, 2020 USPQ2d 1138, at *8 n.34 (TTAB 2020) (Board found unpersuasive non-precedential decisions decided on different records); In re Society of Health and Physical Educators, 127 USPQ2d 1584, 1587 n.7 (TTAB 2018) ("Board decisions which are not designated as precedent are not binding on the Board, but may be cited and considered for whatever persuasive value they may hold.").
4. See In re tapio GmbH, 2020 USPQ2d 1138, at *10 n.30 (TTAB 2020) ("Generally, the practice of citing non-precedential opinions is not encouraged."); In re Morrison & Foerster LLP, 110 USPQ2d 1423, 1427 n.6 (TTAB 2014) ("Although parties may cite to non-precedential decisions, the Board does not encourage the practice."); In re Fiat Group Marketing & Corp. Commic’ns S.p.A., 109 USPQ2d 1593, 1596 n.6 (TTAB 2014) (non-precedential decisions are not binding on the Board, but may be cited to and considered for whatever persuasive value they may hold); In re Procter & Gamble Co., 105 USPQ2d 1119, 1120-21 (TTAB 2012) (citation to non-precedential opinions permitted but not encouraged; non-precedential decisions not binding on the Board); In re Luxuria s.r.o., 100 USPQ2d 1146, 1151 n.7 (TTAB 2011) (parties may cite to non-precedential decisions, but they are not binding on the Board). See also Corporacion Habanos SA v. Rodriquez, 99 USPQ2d 1873, 1875 n.5 (TTAB 2011) (although parties may cite to non-precedential cases, the Board does not encourage the practice).
5. See, e.g., Citation of Opinions to the Trademark Trial and Appeal Board, O.G. Notice (Jan. 23, 2007). The final decisions of the Board are posted at https://ttab-reading-room.uspto.gov/efoia/efoia-ui/#/search/decisions and files of Board proceedings are available at http://ttabvue.uspto.gov/ttabvue/.
6. See Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826, 1830 (TTAB 2012) (include citation to the United States Patent Quarterly (USPQ) if the case appeared in that reporter); Swiss Watch International Inc. v. Federation of the Swiss Watch Industry, 101 USPQ2d 1731, 1736 n.11 (TTAB 2012) (same); In re Carlson, 91 USPQ2d 1198, 1199 (TTAB 2009) (same).