412.04 Filing Confidential Materials with Board
37 C.F.R. § 2.27(d) [Pending trademark application index; access to applications.] Except as provided in paragraph (e) of this section, the official records of applications and proceedings relating thereto are available for public inspection and copies of the documents may be furnished upon payment of the fee required by § 2.6.
37 C.F.R. § 2.27(e) Anything ordered to be filed under seal pursuant to a protective order issued or made by any court or by the Trademark Trial and Appeal Board in any proceeding involving an application or registration shall be kept confidential and shall not be made available for public inspection or copying unless otherwise ordered by the court or the Board, or unless the party protected by the order voluntarily discloses the matter subject thereto. When possible, only confidential portions of filings with the Board shall be filed under seal.
37 C.F.R. § 2.126(c) [Form of submissions to the Trademark Trial and Appeal Board.] 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.
Excerpt from Board’s Standard Protective Order:
12) Redaction; Filing Material with Board
When a party or attorney must file protected information with the Board, or a motion or final brief that discusses such information, the protected information or portion of the motion/brief discussing the same should be redacted from the remainder. Redactions are subject to a rule of reasonableness.
Redaction can entail merely covering or omitting a portion of a page of material when it is copied or printed in anticipation of filing but can also entail the more extreme measure of simply filing the entire page under seal as one that contains primarily confidential material. If only a sentence or short paragraph of a page of material is confidential, covering that material when the page is copied, or omitting the material, would be appropriate.
In contrast, if most of the material on the page is confidential, then filing the entire page under seal would be more reasonable, even if some small quantity of non-confidential material is then withheld from the public record. Likewise, when a multi-page document is in issue, reasonableness would dictate that redaction of the portions or pages containing confidential material be effected when only some small number of pages contain such material. In contrast, if almost every page of the document contains some confidential material, it may be more reasonable to simply submit the entire document under seal. Occasions when a whole document or motion/brief must be submitted under seal should be very rare.
Protected information, and pleadings, briefs or memoranda that reproduce, discuss or paraphrase such information, shall be filed with the Board under seal. If filed by mail, the envelopes or containers shall be prominently stamped or marked with a legend in substantially the following form:
CONFIDENTIAL
This envelope contains documents or information that are subject to a protective order or agreement. The confidentiality of the material is to be maintained and the envelope is not to be opened, or the contents revealed to any individual, except by order of the Board.
If filed electronically by employing the Board’s Electronic System for Trademark Trial and Appeals ("ESTTA"), the filing party should comply with the redaction guidelines set forth above and click the "confidential filing" option prior to transmitting the documents electronically. In all situations, a redacted copy must also be filed for public view.
Except for materials filed under seal pursuant to a protective order or designated as confidential in ESTTA, the files of applications and registrations which are the subject matter of pending proceedings before the Board and all pending proceeding files and exhibits thereto, are available for public inspection and copying on TTABVUE. [ Note 1.] To be handled as confidential pursuant to the Board’s standard protective order or the parties’ individualized protective order, and kept out of the public record, confidential materials must be so designated at the time of filing. [ Note 2.] Electronic submissions in Board proceedings, and paper submissions, where appropriate, which are not properly designated as confidential will be placed in the Board’s public records, available on the Internet. Only the particular discovery responses, exhibits, deposition transcript pages, or those portions of a brief, pleading, or motion that disclose confidential information should be electronically designated as "CONFIDENTIAL" in ESTTA or, where permitted, filed by paper under seal pursuant to a protective order.
If a party submits any brief, pleading, motion, or other such filing containing confidential information, either electronically via ESTTA or, where permitted, by paper under seal, the party must also submit for the public record a redacted version of said submission. [ Note 3.] Thus, for confidential submissions filed either via ESTTA or, where permitted, by paper, two versions are required – a confidential version as well as a redacted version available for public view.
For any confidential unredacted version of a submission, the parties are strongly encouraged 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. A rule of reasonableness dictates what information should be redacted, and only in very rare instances should an entire submission be deemed confidential. [ Note 4.] In cases where a redacted version has not been provided, the confidentiality of the information may be deemed waived. [ Note 5.]
Electronic filing using ESTTA is required for all submissions, including those containing confidential material. [ Note 6.] When 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 entries will be made on the publicly available docket sheet in TTABVUE indicating the Board’s receipt of such filings. These materials may be inspected only by those individuals who are entitled, under the terms of the protective order, to have access to the protected information. However, the redacted copy of the submission which must be submitted separately and concurrently with the confidential filing will be made available for public viewing.
For further information regarding the use of ESTTA for confidential filings, see TBMP § 110 and TBMP § 120.02.
Where appropriate, paper submissions of material designated as confidential should be filed in a separate sealed envelope or other sealed container prominently marked with the word "CONFIDENTIAL." [ Note 7.] Many attorneys also like to attach to the sealed envelope or other sealed container a statement, such as the following:
FILED UNDER SEAL SUBJECT TO PROTECTIVE ORDER.
- The materials contained in this envelope have been designated
- confidential, pursuant to a protective order, and are not to be
- disclosed or revealed except to the Trademark Trial and Appeal
- Board and counsel for the parties, or by order of a court.
The envelope or other container must also bear information identifying the proceeding in connection with which it is filed (i.e., the proceeding number and name) [ Note 8.], and an indication of the nature of the contents of the container (i.e., "Applicant’s Answers to Opposer’s Interrogatories 8 and 19," "Pages 22-26 From the Discovery Deposition of John Doe," "Opposer’s Exhibits 3-5 to the Discovery Deposition of John Smith," etc.).
NOTES:
1. 37 C.F.R. § 2.27(d). Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014) (documents which are designated confidential do not appear in the electronic docket, TTABVUE); Blackhorse v. Pro-Football, Inc., 111 USPQ2d 1080, 1084 n.8 (TTAB 2014) (TTABVUE is the Board’s public online database that contains the electronic case file for the proceeding, available at the USPTO website), aff’d 112 F.Supp. 3d 439, 115 USPQ2d 1524 (E.D. Va. 2015), vacated and remanded on other grounds, 709 F. App’x 182 (mem.) (4th Cir. Jan. 18, 2018).
2. See 37 C.F.R. § 2.116(g).
3. See 37 C.F.R. § 2.27(d); 37 C.F.R. § 2.27(e); 37 C.F.R. § 2.126(c); Duke University v. Haggar Clothing Inc., 54 USPQ2d 1443, 1445 (TTAB 2000).
4. See, e.g., Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1460-61 (TTAB 2014) (discussing improper designation as confidential of testimony and exhibits submitted in Board proceeding); Swiss Watch International Inc. v. Federation of the Swiss Watch Industry, 101 USPQ2d 1731, 1736 (TTAB 2012) (party submitted all evidence under seal, and was ordered to resubmit copies of evidence in which only truly confidential material was redacted); Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1402-03 (TTAB 2010) (discussing improper designation as confidential testimony and exhibits submitted in Board proceeding); Morgan Creek Productions Inc. v. Foria International Inc., 91 USPQ2d 1134, 1136 n.9 (TTAB 2009) (opposer ordered to file redacted brief in which only information which is truly confidential is deleted); Carefirst of Maryland, Inc. v. FirstHealth of the Carolinas, Inc., 77 USPQ2d 1492, 1495, n.5 (TTAB 2005) (where entirety of the briefs were deemed "confidential," Board subsequently requested and received redacted copies).
5. See, e.g., Wet Seal, Inc. v. FD Management, Inc., 82 USPQ2d 1629, 1633 n.6 (TTAB 2007). See also Ayoub, Inc. v. ACS Ayoub Carpet Service, 118 USPQ2d 1392, 1398 n.39 (TTAB 2016) (parties electronically filed documents marked as confidential on their face but did not select the "confidential" designation in ESTTA and did not file redacted public versions; parties allowed time from the date of the decision to file redacted copies, failing which the documents would be treated as part of public record).
7. See 37 C.F.R. § 2.126(c). See also 37 C.F.R. § 2.126(b) (paper filing available only in limited circumstances).
8. See 37 C.F.R. § 2.126(c).