412.03    Duration of Protective Order

Excerpt from Board’s Standard Protective Order:

16) Board’s Jurisdiction; Handling of Materials after Termination.

The Board’s jurisdiction over the parties and their attorneys ends when this proceeding is terminated. A proceeding is terminated only after a final order is entered and either all appellate proceedings have been resolved or the time for filing an appeal has passed without filing of any appeal.

The parties may agree that archival copies of evidence, memoranda, discovery deposition transcripts, testimony deposition transcripts, affidavits, declarations, and briefs may be retained solely by outside counsel, subject to compliance with agreed safeguards. Otherwise, within 30 days after the final termination of this proceeding, each party and their attorneys, as well as any other persons subject to the terms of this agreement, shall return to each disclosing party (1) all materials and documents, including ESI, containing protected information, (2) all copies, summaries, and abstracts thereof, and (3) all other materials, memoranda or documents embodying data concerning said material, including all copies provided pursuant to paragraphs 4 and 5 of this Order. In the alternative, the disclosing party or its attorney may make a written request that such materials be destroyed rather than returned. Additionally, parties to this agreement are precluded from disclosing orally or in writing any protected information provided during the course of a Board proceeding once this Board proceeding is terminated.

Under the Board’s protective order, once a proceeding before the Board has been finally determined, the Board has no further jurisdiction over the parties thereto. [ Note 1.] According to the terms of the Board’s protective order, within thirty days following termination of a proceeding, the parties and their attorneys must return to each disclosing party the protected information disclosed during the proceeding, including any briefs, memoranda, summaries, and the like, which discuss or in any way refer to such information. Alternatively, the disclosing party or its attorney may make a written request that such materials be destroyed rather than returned.

It is unclear whether the Board can order parties to enter into a contract that will govern the protection of information after the Board proceeding is concluded. [ Note 2.] Thus, it may be advisable for both the parties and their attorneys to sign a stipulated protective order, so that it is clear that they are all bound thereby; that they have created a contract which will survive the proceeding; and that there may be a remedy at court for any breach of that contract which occurs after the conclusion of the Board proceeding. [ Note 3.] Nonetheless, any determination of whether the agreement establishes contractual rights or is enforceable outside of the Board proceeding is for a court to decide should such matter come before it. [ Note 4.]

NOTES:

 1.   Provisions for Protecting Confidentiality of Information Revealed During Board Proceeding, O.G. Notice (June 20, 2000); Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1787 n.5 (TTAB 2001) ("the Board’s jurisdiction over the parties ends when this proceeding does and the Board will not be involved in enforcing provisions of the [protective] agreement after conclusion of the opposition.").

 2.   See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42251 (August 1, 2007).

 3.   See Duke University v. Haggar Clothing Co., 54 USPQ2d 1443, 1445 n.3 (TTAB 2000) (Board’s jurisdiction would not extend to third-party signatory); Fort Howard Paper Co. v. C.V. Gambina Inc., 4 USPQ2d 1552, 1555 n.3 (TTAB 1987) (Board approves stipulated protective orders signed by parties’ counsel but both counsel "may wish to have the parties sign themselves . . . so that the parties will clearly realize that they have created a contract that will survive the proceeding"); S & L Acquisition Co. v. Helene Arpels Inc., 9 USPQ2d 1221, 1226 n.10 (TTAB 1987) (suggesting that "for the protection of both parties, the parties, as well as their counsel should sign the stipulated protective order so as to create a contract that will survive the proceeding"). See also with respect to violation of a Board protective order after the conclusion of the Board proceeding, Alltrade Inc. v. Uniweld Products Inc., 946 F.2d 622, 20 USPQ2d 1698, 1702 n.11 (9th Cir. 1991) (bringing confidential business documents into the public record in violation of the Board’s protective order established a cause of action in district court).

 4.   See MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES OF PRACTICE, 72 Fed. Reg. 42242, 42251 (August 1, 2007).