>> HOPE SHIMABUKU: Now, I have the opportunity to transition us to the TTAB section of the program.
And the first speaker will the honorable Mark Thurmon. Judge Thurmon serves as Deputy Chief
Judge as an administrative trademark judge at the Trademark Trial and Appeal Board at the USPTO.
Judge Thurmon has served on board panels for appeals and trials. He assists the Chief Judge in
the administration of all board operations. Prior to joining the Board in 2019, Judge Thurmon was a
law professor at the University of Florida for 15 years. Judge Thurmon worked with private practice
intellectual property law firms for 20 years.
Prior to law school, he served with distinction on the USS Narwhal, a fast tack nuclear submarine.
Judge Thurmon earned his law degree from Duke University and his BS in electrical engineering
from LSU. Judge Thurmon is going to provide an overview of the Trademark Trial and Appeal Board.
>> MARK THURMON: I'm thrilled to provide you an introduction to the Trademark Trial and Appeal
Board or the TTAB as Hope properly pronounced our title. Our sister board is frequently known as
PTAB. We like to pronounce each of the letters. I'm going to be the first of a number of folks
you'll see over the next few hours. We have eight of our judges beyond me who are going to be doing
parts of the presentation here today. I think that may very well be a record for us. Let's go ahead
and get this started. We'll go to the next slide and quickly talk about who we are.
So we have three primary groups of individuals who do work on our cases. We have our administrative
judges, 24 of them now. That does not include the Chief Judge and me. If you include us, that's 26.
There are 19 interlocutory attorneys now and 10 paralegals. I'll talk about what each of these do.
The others are management administration and support and generally doing things necessary to
make sure that our three groups of professionals can get our cases through the system and get our
decisions out.
Next slide. What kind of cases do we decide? The Board is an administrative tribunal. That means
we're an administrative court, so to speak. We
were created under the Lanham Act. We actually were
not created in 1946, though. The board was created by an amendment in 1958. So we are a mere 63 years
old, not quite the full 75 years that the Lanham Act is.
We resolve issues related to the registration of trademarks. That's it. We do not resolve trademark
infringement. We don't resolve unfair competition claims. We don't decide copyright infringement and
we never, ever decide patent issues, not at all.
Next slide. Let's look more closely at the groups of professionals I mentioned earlier. Our judges
decide our cases. They preside at oral hearings as well. You'll see one of these hearings. You'll see
a live hearing coming up a little later in the program today. We handle appeals and trial cases
as well. I'll talk more about those later.
The main thing I want to tell you about our judges is these folks really know what they're doing. Our
average judge at the board has about 25 to 30 years or more experience in trademark law. They
sit in panels of three to decide your cases. If you think about that, when we convene a panel of
judges to decide our cases, you have 75 to 90 years of combined trademark experience going into
that decision. So this is a really expert tribunal.
They also work with interlocutory attorneys which is on the next slide. Interlocutory attorneys are
our case managers. They handle the pretrial stages of our trial cases. They don't work on appeals,
only on the trial cases. They serve a role similar to what the federal magistrates do in the federal
litigation system. They're the primary case managers. And they resolve contested motions. On
dispositive motions just like a federal magistrate judge that has to send them up to the federal
district judge, they work with our panel of three judges who ultimately sign off on dispositive
motion decisions. On the nondispositive motions they resolve them entirely on their own. They
conduct conferences to try to resolve discovery disputes. They have conferences on any kind of
contested motion.
Their general role is to manager our cases as they're going through the system. Next slide. The
paralegals handle the cases on the front end. They will touch every single case that comes into the
board. They work on all trial cases, appeal cases. In trial cases they will draft and issue orders on
uncontested motions. If they've agreed to an extension of time, the paralegal can handle those
issues. They draft orders in appeal cases. For example, if the applicant and the examining
attorney want the case to go back to examination, they can issue a remand order. They deal with
extensions of time to oppose.
Next slide. This slide is a bit of a digression. This is not really something about just the board.
But I do want to mention to you the very important rule adopted about two years ago, the US counsel
rule, which states that all foreign parties it's defined there from the quote from the rule must be
represented by an attorney in trademark matters. That includes proceeding as the TTAB. A precedent
we issued last year to ensure that it does apply to board proceedings.
Next slide. What kind of proceedings are we talking about? Well, we handle appeals. We'll talk
a little more about each of these. But appeals are from the process that Jason was telling you about.
If you're not satisfied with the outcome of that, you can appeal to the board.
We also handle had a group of trial cases we call them. These are adversarial cases, those are
oppositions which happens during the application process. Cancelation is a proceeding to challenge
an issued registration. And then concurrent use proceedings allow for the possibility of a
geographically restricted registration.
These are important, the concurrent use. But we don't get many of them. We probably have less than
ten of those per year.
Next slide. So let's focus now on some of the types of cases that we handle. I'm going to go
through a few examples of some of these cases which may be more interesting. First of all, our
appeals, as we said, these are from examination. It has to come from a final office action. So you
get two chances in examination to resolve your issues. If you can't and you want another shot at
it, you can appeal to the Board.
Next slide. You can request an oral hearing as part of the appeal. That's not particularly
common. Only about 10% of our appeal cases request hearings. There is now a fee. It's substantial.
There's a $500 fee now to request an oral hearing that went into effect in early January of this
year.
Hearings are handled by a panel of three judges. You will see one of those in action a little bit
later.
The applicant presents its arguments. It has 20 minutes to do so. The examining attorney will then
present arguments on behalf of the Office. That's basically it for the hearing.
Now one important part any party can participate in our hearings remotely, the same way I'm
participating this morning. I'm coming you from sunny Denver, Colorado. I'm in the Rocky Mountain
regional office. I recently relocated here. Just to show you the geographical presentation
today. We've come from Alexandria, Virginia, from Texas, and from Denver, Colorado. So we've been
doing these kinds of things for a long time. When we moved into the pandemic conditions, our
hearings are entirely done virtually now. We used the hybrid model before. And we'll move back to
that after the current conditions have fully lifted. So there will always be the opportunity
for any party to participate from anywhere that they have an appropriate connection for one of our
hearings. Next slide.
So now I'm going to go through a few examples. A few actual cases we've decided. The next few are
going to all be appeals. The first one was the application to register the mark Obama Pajama. The
application had been refused under Section 1052c. It says you cannot register a mark that identifies
a particular living individual unless you have that person's written content. The applicant here
did not have the written consent of Barack Obama, so the application was refused.
The next case we'll talk about is the nearly descriptive basis. As Jason was explaining to you
earlier, a term that is merely descriptive is not a trademark. You cannot register it. In this case
an ice cream company attempted to register the name scoop for ice cream. The Board said no,
because that just describes a portion of ice cream, a scoop of ice cream. The image you show on
the slide here shows the way the applicant was using the mark. So the cartoon mascot figure, I
guess, there, it's not really legible here because it's too small.
But if you look below the bow tie on the white uniform shirt that's where the scoop was being
used. Scoop was being used as the name of their mascot. That's the way they were using the mark.
That does not have anything to do with the decision here. Rather, the decision here was based
on the meaning of the word scoop. The Board says, yes, that describes a portion of ice cream and
cannot be registered.
Next slide. You cannot register generic terms as Jason explained earlier. In this case an applicant
attempted to register the words allergy care for the services of medical are treatment of
allergies. The Board says allergy care is generic for the medical treatment of allergies. You can't
register the words. The applicant was able to disclaim those words this is a little complicated
for the boot level presentation, but in essence they were able to get it on the supplemental
register, a holding place for terms and things capable of becoming marks but are not at the time.
So that was the outcome of this case.
Next slide. You also cannot register something that is functional. Now functional has to do with
the usefulness or at least in this context with the utility of something. So these are trade cases
where someone is trying to register the appearance of some product. In this case it was a circular
saw blade. If you look closely at the design there, you notice there are cuts in the blade that
go toward the middle of the blade. And then there's a round section at the end of those. The
evidence indicated that those performed an important role in the performance of the blade. We
found that the design was basically dictated by the function, the purpose of the product. It was
functional. And therefore the application was refused.
Next slide. The failure to function basis for refusals has been getting a lot of attention
lately, at least for the last few years. This is just
one example of a number of different applications
that have been refused on this basis.
In this case, the party tried to register dot cam which is many of new generic top level domain
which have been approved for use on the Internet. This was meant for camera or photography related
uses. The Board held this does not function as a trademark, because the intended use of it would be
with other parties' names including probably some brands together with dot cam. You might see things
like Nikon dot cam or Kodak dot cam and things like that. It's not going to function as one
source. So this was also refused.
Next slide. Let's turn now to our trial cases. I'll give you a quick overview of those. We'll
start out by going through the stages of our trial cases. You'll see here we also refer to these as
inter partes, adversarial. You have a pleading stage where you make the claim. Discovery where
you're doing investigation and getting the materials you need in order to bring to trial. The
trial is where you present that record. This is really where our process gets different.
We do not conduct live trials at the board. They're done at paper and electronic submissions.
There are a lot of detailed rules for how you have to participate in that process. If you are not
familiar with Board proceedings, then you need to be very, very careful at the trial stage. You need
to be careful at every stage of our proceedings, but particularly at trial. If you make a mistake
there, you may not be able to undo it.
After the trial stage, you move to briefing and oral hearing. The record is complete at the end of
the trial. You cannot submit your evidence with your briefs. You can't present new evidence at an
oral hearing either. It all has to be complete.
If you're not satisfied with the outcome from the Board, what can you do? You can ask us to
reconsider or you can appeal. Next slide.
Oral hearings are held in our trial cases as well. It's a larger percentage, about a quarter of our
trial cases have oral hearings. The fee I mentioned before applies to it. The parties get
longer. Each side will get 30 minutes to present their arguments.
Arguments only. They can't submit new evidence or new testimony during the oral hearing. Final
decision. Yes we decide the cases. We have certain words we use for these. It's based on the nature
of the actual proceeding.
So in an opposition we'll either sustain, meaning
the opposer wins, or dismiss, meaning the applicant
wins. In a cancellation proceeding, we either grant
the petition to cancellation meaning the applicant
wins or the registration will be cancelled or we deny the we don't award damages or attorney fees
or serve injunctions. Significant differences between the remedies of Board and those of a
court. Our proceedings are less expensive. They're almost always less expensive than court
litigation. They're not always faster. They can be but not always.
We pretty much allow the parties to dictate the pace of our trial cases. So if the parties want to
take it slow, then they can take it slow.
The more significant point I want to make to you in connection with the notion of decisions in our
cases is that claims presented at the Board are often going to be substantively different than
those in federal courts. If you're faced with a decision on whether to present a claim at the
Board or federal court, you need to look closely. For some claims you will have a better chance of
success at the Board and some you have a better chance at court. That's something you have to look
at and evaluate when making those decisions.
Next slide.
Who may oppose? Any person who believes they would be damaged. You have to show you would
suffer some injury if this mark is registered. There's an important timing requirement. I won't
go into the details. You absolutely have to meet that or your opposition will go nowhere.
Next slide. I'll give you a few examples now of the trial cases you might find interesting. This
first one dealt with Section 1052A: you can't falsely suggest a connection with some person or
institution. In this case, Frank Sinatra enterprises opposed an application for the mark
Franks Anatra, franks as in hot dogs. The Board said that's not going to work. People are going to
think of Frank Sinatra. This is an example of example 1052d, likelihood of confusion case. This
is the most frequent in cases both appeals and trial cases.
This one turned on whether or not the name Richard in English and the name Ricardo in Spanish were
similar enough. The Board said we don't think they are. Even though one is the English version of the
name and the other is a Spanish version. The Board said the words were not similar enough and the
opposition was dismissed. One of many types of likelihood of confusion we see at the Board.
We do get some dilution claims. They're not that common and difficult to win on. Dilution is
limited to famous marks. They tried to register just drew it. Nike opposed to their just do it
mark. Board says Nike's mark is very famous and sustained the opposition.
Another basis for refusing applications is Section 1052e2 which says you can't register a mark that
is primarily geographically descriptive. Here they were trying to register Charleston Harbor Tours.
The Board says Charleston Harbor tours is geographically descriptive for tours of the
Charleston Harbor therefore the application sustained and refused.
Next example is an abandonment case. I won't go to the details it's beyond bootcamp type material. I
will say you can file a petition if you believe the mark is abandoned. This is a common basis for
cancellations. Linking back to the presentation that Jason gave you, if your application has been
refused based on a likelihood of confusion with a registered mark, if you investigate and you find
that that registered mark has been abandoned, then you can file a petition to cancel that mark and be
able to get rid of it. And your application can go forward. I wanted to mention that abandonment is a
basis for cancelation and get your own mark registered.
Next slide. So where do you go if you don't like the outcome from the Board. You have two options.
You can appeal to the federal circuit and it will be decided on the record as it stands. You can
challenge the decision in a US District Court. This is very different because in this process
you're actually filing a new case. There will be a new trial. And you present new evidence in that
trial. Parties who felt they didn't submit quite enough evidence to the Board will use a US
District Court route and present new material. An interesting twist, if you go to that appeal will
go to the regional circuit courts of appeal and not the federal circuit. Our cases can ultimately
end up all over the country in the federal appeals courts.
US Supreme Court discretionary. There have been a few recent decisions.
Next slide, we'll show we'll just there are two that go together here. Unfortunately we couldn't
fit them on one slide. Section 2A of the statute did prohibit as drafted disparaging marks, go to
the next slide. It also prohibited immoral or scandalous marks. There were a pair of cases that
challenged those provisions of the statute. The Supreme Court said they were unconstitutional.
Those are now gone.
The most recent case was booking.com. The Office refused that as generic. Booking is generic, dot
com is generic. The Supreme Court said, no you have to evaluate it as a whole. You can't use a
per se rule. That concludes the slides. You can show the key word slide. I thank you all very much
for the time and attention and look forward to the rest of our distinguished judges and their roles
in the program.