On January 14, 2017, a sweeping set of new rules will govern proceedings before the U.S. Trademark Trial and Appeal Board (TTAB), including those still pending before the Board on that date. The final publication of the new rules can be located on the TTAB portal of the U.S. Patent and Trademark Office’s website at https://www.uspto.gov/trademarks-application-process/trademark-trial-and-appeal-board-ttab. While the portal includes a bevy of links and helpful charts to acquiant practioners with all of the changes, there are a few highlights that deserve specific mention.
The major theme of the TTAB’s amended rules is making “electronic” the default method of procedure. Arguably, practioners were already defaulting to electronic means of filing and communication, not only due to the passive encouragements of the TTAB, but also by the nature of trademark and TTAB practice generally. Nevertheless, electronic filings via the TTAB’s online filing system, ESTTA, will now be required rather than preferred. In the same vein, service of papers and documents between parties must be effectuated by email unless stipulated otherwise, eliminating the extra five days previously alotted in instances of service by mail. The TTAB will also be taking on the responsibility of serving notices of opposition and petitions for cancellation, eletronically, of course, to attorneys of record, rather than requiring parties to serve these initial filings. In addition, several discovery changes are likely to shake up the status quo, specifically the limit of requests for admissions and requests for production of documents to 75 each, along with the mandate that all discovery be completed by the discovery deadline, including responses to any outstanding discovery requests.
Is it possible that TTAB’s first rule amendments in 10 years could signal more sweeping changes incoming? For now, attorneys have enough to contemplate in the next three months.
To the great joy of some and the great outrage of others, the United States Patent and Trademark Office Trademark Trial and Appeal Board cancelled six federal trademark registrations for the name of the Washington Redskins on July 18, 2014. The cancellations came as a result of a long battle by Native American individuals and groups, since at least the early 1990s, to petition the U.S. Patent and Trademark Office to agree that the name was offensive to Native Americans and thus undeserving of trademark protection under federal law 15 U.S.C. §1052. The portion of the Lanham Act in Section 1052 disallows trademark registration for any mark that “[c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.”
The direct impetus of the recent cancellations was a petition filed by six Native American individuals in 2006. The Trademark Trial and Appeal Board reached its decision by going through a two-part analysis. The Board decided that the term “Redskins” in the marks would clearly be understood to identify Native Americans as a group, and further, that the term may be perceived as disparaging by a substantial composite, or significant portion, of that group. Perhaps most interestingly, the Board ultimately held the federal registrations should be cancelled because the marks were disparaging at the time they were registered.
In this case, as in many other socially and politically charged issues, the pendulum of tradition swings both ways. On the one hand, the Washington Redskins have gone by that name for more than forty years and were granted federal registrations despite the Board’s assertion that the names have always been disparaging. On the other hand, society’s increased sensitivity to what has been termed “political correctness” is not necessarily a bad thing when derogatory names for racial groups are broadcast in popular culture on a national level. It is important to note that the trademark cancellations do not require the team to change its name or prevent it from still enjoying the protection of state and common laws resultant from its long period of use and fame of the marks. Additionally, much of the NFL is governed by contract, with a multitude of licensing arrangements that more than likely still provide the team with a large portion of exclusivity to the name. The team does, however, lose the benefits afforded by federal registration, such as presumptions of trademark validity, U.S. Customs protections, and the ability to sue for potentially large statutory damages for trademark infringement. It is also widely believed that the decision will be appealed, most likely to the federal district court, which has the ability to review such decisions de novo. As such, no matter which side one falls on, it is probably way too early to call “Game Over.”