Whether and How to Appeal a PTO Final Refusal: TTAB and Beyond Navigating Ex Parte Appeals, Civil Actions in District Court, and Appeals to the Federal Circuit

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TUESDAY, FEBRUARY 10, 2015

Presenting a live 90-minute webinar with interactive Q&A

Jess M. Collen, Partner, Collen IP, Ossining, N.Y.

Helen Hill Minsker, Esq., Banner & Witcoff, Chicago

John L. Welch, Of Counsel, Lando & Anastasi, Boston

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Whether & How to Appeal a PTO Final

Refusal – The TTAB & Beyond

Helen Hill Minsker

© 2015 Helen Hill Minsker

Getting the Case Ready for the

TTAB

• Responding to a Final Office Action/

Requests for Reconsideration

• Ex Parte Appeals to TTAB

6

When is Case Ripe for Appeal?

• After a Final office action is issued; or

• After second refusal on same ground is

made, even if the office action is not

“Final”

7

Responding to Final Office Actions: Requests

for Reconsideration - Friend or Foe?

• Friend, if you need to add evidence into

the record to bolster chances of success

on appeal;

• Friend…to extent it shows Examining

Attorney resolve to fight that may make

him/her reluctant to defend refusal on

appeal

8

Foe…

• To the extent it gives the Examining

Attorney more opportunities to shore up

refusal

• Bottom Line: THINK before filing

request for reconsideration

9

Extreme Example – In Re

Bottega Veneta (TTAB 2013)

(SN 77/219184)

10

Application pending for years…

• Various issues including utilitarian and

aesthetic functionality, distinctiveness,

ornamentation

• 4 office actions – last one “Final OA”

• Examining Attorney put in 1100 pages of

evidence in support of Final OA

11

“Victory” for Applicant, But

Short Lived

• TTAB reversed Examining Attorney’s

refusal – preference to allow mark to be

published if objection is

2(e)/functionality

• But, TTAB required fairly narrow/

detailed description of mark

• Registration now being opposed

12

When to Use Request for

Reconsideration

• Need to get more evidence in record

• Need to respond to any outstanding

issues (Don’t forget to respond to all

issues, even formalities, before filing

appeal)

13

Completing the Record

• Evidentiary record must be complete at

time of appeal

• General rule is you can’t introduce

evidence not in record below (but there

are some exceptions)

14

Strategy for Reconsideration

• Make an honest assessment of your case

• For 2(d), have you addressed all the

relevant DuPont factors?

• Is there a way to challenge the sufficiency

of Examining Attorney’s evidence?

• 2(f) – Is there MORE you can submit?

15

Evidentiary Considerations

• Is evidence properly of record (for

example, copies of registrations/PTO

records, Internet references, declarations)

• TTAB more forgiving on form of

evidence for ex parte appeals than with

inter partes cases, but there are limits

16

Case Study – Example of Good

Use of 3d Party Registrations

• In Re Thor Tech, Inc. (TTAB 2015) (SN

8566718)

• TERRAIN for recreational vehicles,

namely towable trailers ≠ TERRAIN for

motor vehicles, namely, trucks

17

Thor Tech….

• KEY: Examining Attorney submitted 7

registrations with trucks/trailers in goods;

Applicant submitted 50 pairs of

registrations for substantially identical

marks for land motor vehicles v. towable

recreational vehicle trailers

• 2(d) Refusal Reversed

18

Know your forum!

• Procedural issues must be addressed in

Petition to Commissioner

• Substantive issues in ex parte appeal

19

Should You Appeal to TTAB???

• If the request for reconsideration fails,

should you appeal to TTAB?

• Consider practical v. tactical issues

20

Most Common Issues for

Appeal

• Section 2(d) – Likelihood of confusion

• Section 2(e)/(f) – Range of descriptive

objections, surname, geographic, generic,

functional and sufficiency/

appropriateness of Section 2(f) -

acquired distinctiveness claim

21

Sobering Statistics:

• Consistently an 80% to 90% affirmance

rate

• Some variance depending on the issue on

appeal, e.g. 2(d), 2(e) or other issues, but

almost always within the range of 80% to

90%

22

3 Rules to Remember

1. Only strong cases need apply.

2. Procedure/Timing is often as important

as substance.

3. Argument is no substitute for evidence.

23

Exception #1

• Not all ex parte appeals are created equal

• Chances of success may vary based on

subject matter of appeal (e.g.

descriptiveness versus likelihood of

confusion)

24

Exception #2

• Many Ex Parte Appeals are filed due to a

non-extendable deadline but may be

dropped before decision on merits, or

may be resolved favorably for applicant

after going back for request for

reconsideration

25

Before Filing Appeal

• Are you better off appealing and losing

or not filing appeal at all? (i.e., Do you

really want an opinion on the merits by

an expert tribunal?)

• Are there acceptable alternatives to

appeal, such as…

26

1. Amending to Section 2(f) to claim

acquired distinctiveness

2. Amending to Supplemental Register

3. Entering a disclaimer

27

4. Re-applying to register mark in stylized

form or with design

5. Obtaining a consent agreement

6. Some combination of the above

28

Other Options…

• Is time on your side (i.e., can mark

acquire distinctiveness)?

• Or is it “now or never” (no acceptable

alternative; mark important enough to

justify appeal).

29

On some occasions…

• The Examining Attorney is just flat

wrong, so each case has to be reviewed

on its own merits

30

And sometimes you get lucky…

• See, In re Truck-Lite Co., Inc. (TTAB

1/26/06) – (Unpublished)

• Refusal under Section 2(e)(1) to register

“SUPER” for vehicle lights reversed (SN

76/532510)

31

However…

• Statistics suggest that “luck” is rarely on

the side of the Applicant (See, e.g., In re

Positec Limited (TTAB 9/13/13), in

which registration of “SUPERJAWS”

was refused and the TTAB commented

that “SUPER” was merely descriptive,

notwithstanding earlier registrations)

32

Rule #1: Only Strong Cases

Need Apply

• Overwhelming statistics over many years

say odds favor affirming refusal

• With 2(d), doubt resolved in favor of

prior registrant

• With most 2(e) issues (and others), doubt

resolved in favor of publication, BUT,

still hard to prevail

33

Tactical v. Practical

• Bottom line – there may be tactical

reasons for filing appeal (get Examining

Attorney’s attention), but..

• Practical reasons for dropping it if the

Examining Attorney does not relent early

in the appeal process, as the chances of

success is low thereafter

34

Timing & Procedures

• Rule 2: Timing/Procedure is Often as

Important as Substance.

35

Understand the Rules!

• Appeal can only be taken from final

refusal or second refusal on same ground

• A timely notice of appeal must be filed

w/in 6 months of final refusal

36

• Filing a request for reconsideration does

not automatically toll time for filing

notice of appeal

• Failure to pay appeal fee by appeal

deadline results in dismissal

37

• Brief due 60 days from filing appeal

unless EOT obtained or case is remanded

for reconsideration

• Timely filing of request for

reconsideration will toll time for filing

appeal brief

38

• If request for remand to submit new

evidence filed after deadline for appeal,

unless parties agree, good cause must be

shown. Good cause includes…

39

• Evidence not previously available

• New counsel or new examining attorney

has taken over case

• Both sides agree to remand for new

evidence

40

Oral Argument

• Must be timely requested (10 days after

last brief)

• Important if you have something to add

or clarify within bounds of record (such

as explaining complicated technology)

• Not so important if case is not

complicated

41

The Record on Appeal

• Rule 3: Argument is no substitute for

evidence.

• Make sure you have prepared evidentiary

record in advance of appeal

• Remember that type of evidence you

need varies according to issues on appeal

42

Non-Traditional TM Issues

• Configurations, trade dress, etc. will

generally face higher standard of scrutiny

• Prepare evidentiary record accordingly

• Focus on demonstrating the public

recognizes configuration, etc. as a mark

43

Strategies for Winning

Plan your strategy carefully and be flexible

in your approach

44

Sec. 2(e) – Pleading in the

Alternative

• Don’t be afraid to argue that mark is

inherently distinctive while also offering

evidence of 2(f) distinctiveness and/or

suitability for Supplemental Register

45

Settlement Opportunities

• Always look for opportunities to settle

• Examining Attorney may be more

amenable once it is clear that appeal is

going to go through to completion

• If new evidence arises, bring it

Examining Attorney’s attention (even if

you can’t get it in record)

46

Look for Procedural

Opportunities

• If Examining Attorney fails to object to

untimely evidence, and/or addresses in

his brief, it may be considered by the

Board even though not timely filed

• Don’t rely on this happening, but use it if

the opportunity presents itself

47

Don’t waste time…

• On weak arguments

• Likely will be ignored and may affect

your credibility

48

Don’t make arguments…

• Based on evidence not in record

• Again, the argument likely won’t be

considered and you may lose credibility

49

Avoid Trying the Board’s

Patience!

• Don’t ignore Board’s orders (e.g., don’t

attach evidence Board has refused to

consider as “appendix” to your brief)

• Avoid invective and name calling in your

brief

50

Remember…

• Even the rare strong case on appeal can

be lost if procedures are not followed

• Understanding rules and procedures can

make difference between success and

failure

51

THANK YOU!

For questions, please contact: Helen Hill Minsker

Banner & Witcoff, Ltd.

hminsker@bannerwitcoff.com

52

Presented by: Jess M. Collen

15 U.S.C. § 1071 (Lanham Act § 21) o § 1071(b)(1) “Whenever a person authorized by subsection (a) of this

section to appeal to the United States Court of Appeals for the Federal Circuit is dissatisfied with the decision of the Director or Trademark Trial and Appeal Board, said person may, unless appeal has been taken to said United States Court of Appeals for the Federal Circuit, have remedy by a civil action . . . .”

54

37 C.F.R. § 2.145 ◦ § 2.145(c) “Any person who may appeal to the U.S. Court of Appeals for

the Federal Circuit (paragraph (a) of this section), may have remedy by civil action under section 21(b) of the Act. Such civil action must be commenced within the time specified in paragraph (d) of this section.”

◦ Timing – same as an appeal to the CAFC

55

Federal Venue Statute 28 U.S.C. § 1391(b) ◦ “a judicial district in which any defendant resides, if all defendants are

residents of the State in which the district is located”

◦ “a judicial district in which a substantial part of the events or omissions giving rise to the claim occurred, or a substantial part of property that is the subject of the action is situated; or”

◦ “if there is no district in which an action may otherwise be brought as provided in this section, any judicial district in which any defendant is subject to the court's personal jurisdiction with respect to such action”

56

15 U.S.C. § 1071(b)(4) (Lanham Act § 21(b)(4)) ◦ “If there are adverse parties residing in a plurality of districts not

embraced within the same State, or an adverse party residing in a foreign country, the United States District Court for the Eastern District of Virginia shall have jurisdiction . . . .”

57

McCarthy’s says “proper venue of a suit against the Director of the USPTO is before the U.S. District Court in the Eastern District of Virginia. District Court appeals from ex parte rejections must be filed in the Eastern District of Virginia.” 3 McCarthy on Trademarks and Unfair Competition § 21:25 (4th ed.) ◦ McCarthy’s cites one appeal from the TTAB where a change of venue from the District of

DC to the Eastern District of VA was not opposed (Glendale Intern. Corp. v. U.S. Patent & Trademark Office, 374 F. Supp. 2d 479, 75 U.S.P.Q.2d 1139 (E.D. Va. 2005)) and also cites other non-TTAB cases (Boundy v. U.S. Patent and Trademark Office, 2002 WL 32166534 (D.D.C. 2002) (transferring petitions for review of the patent examiner’s procedures from the DC District court to the Eastern District of Virginia); In re Munson, 2003 WL 21396874 (D.C. Cir. 2003) (discrimination case against the PTO); U.S. ex rel. Prevensik v. U.S. Patent & Trademark Office, 2005 WL 691875 (D.D.C. 2005) (suit against the PTO and its employees))

◦ However, note, Adams below was decided in the Western District of Pennsylvania and the opinion says that venue was proper under § 1391

58

Parties may submit new evidence and raise new issues with the District Court

Appellate review of District Court’s decision by the Circuit Court

Costs associated with a new trial (pleadings, discovery, motion practice)

Deference given to TTAB if no new evidence or issues are presented

59

Circuit’s precedent and splits of authority ◦ Likelihood of confusion

Fourth Circuit – likelihood of confusion is a factual issue Petro Shopping Ctrs., L.P., v. James River Petroleum, Inc., 130 F.3d 88, 92 (4th Cir. 1997)

Federal Circuit – likelihood of confusion is a legal determination Coach Svcs., Inc. v. Triumph Learning, LLC, 668 F.3d 1356, 1365-66 (Fed. Cir. 2012), i.e., de novo review

Trial by jury ◦ DC Circuit and District of MD – trial by jury for all factual issues

◦ ED PA and SD IL – no right to trial by jury

60

District Court reviews TTAB findings: ◦ De novo – if new evidence is submitted

“In sum, where new evidence is submitted, de novo review of the entire record is required because the district court ‘cannot meaningfully defer to the PTO's factual findings if the PTO considered a different set of facts.’” Swatch AG v. Beehive Wholesale, LLC, 739 F.3d 150, 156 (4th Cir. 2014) (citing Kappos v. Hyatt, 132 S. Ct. 1690, 1700 (2012))

◦ Substantial evidence standard – when new evidence is not submitted, TTAB findings are given great weight and only disturbed in cases where the findings are not supported by substantial evidence

61

Adams Mfg. Corp. v. Rea, 2014 U.S. Dist. LEXIS 31584 (W.D. of Pa. March 12, 2014)

Applicant, Adams Mfg. Corp. applied to register a suction cup mark in connection with “plastic suction cups, not for medical purposes”:

The examining attorney refused the registration based on functionality and non-distinctiveness. Adams appealed to the Western District of PA. The parties cross moved for summary judgment on the issue of registrability. Adams submitted additional evidence; the Court affirmed the refusal based on functionality

62

Timex Group USA, Inc. v. Focarino, 2013 U.S. Dist. LEXIS 177835 (E.D. Va. Dec. 17, 2013) (clarified by Timex Group USA, Inc. v. Focarino, 2014 U.S. Dist. LEXIS 4646 (E.D. Va., Jan. 13, 2014)). Timex Group USA, Inc. appealed to the Eastern District of VA the TTAB’s refusal to register the INTELLIGENT QUARTZ trademark in connection with watches on the basis that the trademark was descriptive

Timex submitted additional evidence that the trademark was suggestive. The Court applied the old standard of review (review of the TTAB record for substantial evidence and review of the new evidence de novo) and found that the TTAB erred in finding that the trademark was suggestive. Three weeks after the Timex decision was issued, the 4th Circuit issued its opinion in Swatch AG v. Beehive Wholesale, LLC, which changed the standard of review to de novo review of the entire record. The Timex Court then issued a clarification of the decision saying that, under the new standard the trademark would still be found suggestive

63

Shammas v. Rea, 978 F. Supp. 2d 599 (E.D. Va. 2013). Shammas appealed the TTAB’s refusal to register the PROBIOTIC trademark in connection with fertilizer. The TTAB affirmed the refusal based on genericism. The Court applied the old standard of review and found that the Board’s decision was based on substantial evidence and the parties’ additional evidence showed that PROBIOTIC was generic. The Court affirmed the refusal

64

Glendale Int'l Corp. v. United States PTO, 374 F. Supp. 2d 479 (E.D. Va. 2005). An appeal from the refusal to register the TITANIUM trademark in connection with recreational vehicles on the basis that it was deceptively misdescriptive because the vehicles did not contain titanium. The parties stipulated not to submit additional evidence. The Court found that there was substantial evidence that consumers would likely believe that the goods contain titanium.

65

Jess M. Collen

jcollen@collenip.com

Ph. 914-941-5668

www.collenip.com

© 2015 Collen IP 66

Appeals From The

TTAB To The CAFC

John L. Welch

Choices

• An applicant that is dissatisfied with the

final decision of the Board has two options

for obtaining review of the decision:

• 1. Appeal to the United States Court of

Appeals for the Federal Circuit

• 2. Civil action in a United States District

Court for review

68

CAFC

• The CAFC is the Board’s primary

reviewing court.

• The CAFC limits its review to the record

developed before the TTAB.

• No new evidence may be submitted and

no new issues raised.

69

Waiver

• An applicant who takes an appeal to the

CAFC waives its right to proceed by way

of civil action.

• It may be possible to withdraw that appeal

prior to expiration of the appeal period,

and then proceed in district court.

70

Timing

• Notice of appeal must be filed with the

USPTO within two months of the Board’s

decision.

• The USPTO may grant extensions of time

for the filing of the appeal, for good cause,

or, if after the appeal period has expired,

upon a showing of excusable neglect.

71

Timing

• A request for rehearing, reconsideration,

or modification of the Board’s decision

stays the time for filing the notice of

appeal, which will then be due two months

after action on the request.

72

Timing

• Simultaneously with the filing of the notice

of appeal, three copies of the notice of

must be sent to the clerk of the CAFC,

along with the appeal fee ($450).

• The appeal will be docketed by the CAFC

when the USPTO sends the certified list of

contents of the record before the Board

and a copy of the decision being appealed

(within 40 days of the notice of appeal).

73

Standard of Review

• Factual issues are reviewed under a

“substantial evidence” standard. The court

must ask whether a reasonable person

might find that the evidence supports the

Board’s conclusion.

• Questions of law are reviewed de novo –

i.e., without deference.

74

Particular Issues

• Most issues decided by the Board in ex

parte cases are factual issues, reviewed

under the “substantial evidence” standard.

• Likelihood of confusion, however, is a

legal conclusion, based on underlying

facts.

75

Likelihood of Confusion

• The CAFC reviews the underlying factual

findings (the du Pont factors) under the

substantial evidence standard.

• The ultimate conclusion of likelihood of

confusion is reviewed on a de novo basis.

76

Likelihood of Confusion

• Example: In re St. Helena Hospital, 113

USPQ2d 1082 (Fed. Cir. 2014).

• The CAFC reversed TTAB: TAKETEN

for health care services not confusingly

similar to the registered mark TAKE 10!

for printed materials dealing with physical

activity and physical fitness.

77

Likelihood of Confusion

• The Board’s finding that the marks were

similar was supported by substantial

evidence

• The finding as to relatedness of the

goods/services was not supported by

substantial evidence.

• The Board’s determination that the factor

of consumer care was neutral lacked

substantial evidence.

78

Other Issues of Fact

• Genericness, distinctiveness,

descriptiveness, arbitrary or fanciful

• Eligibility for Supplemental Register (i.e.,

capability to function as a trademark).

• Misdescriptiveness

79

Other Issues of Fact

• Functionality

• Geographic descriptiveness,

misdescriptiveness, and deceptiveness.

• Priority determinations

80

In re Newbridge Cutlery Co.

• Reversing a Section 2(e)(2) refusal to

register NEWBRIDGE HOME for cutlery,

the CAFC ruled that "[t]he conclusion that

Newbridge, Ireland, a town of less than

twenty thousand people, is a place known

generally to the relevant American public

is not supported by substantial evidence."

81

Other Issues of Fact

• Material alteration of mark

• Primarily a surname

• Abandonment

82

Issues of Law

• Equivalence and tacking (?)

• Scandalousness (In re Fox).

• Issue and Claim Preclusion

• Section 2(b) governmental insignia

83

In re Houston and District of

Columbia

• CAFC, in upholding the TTAB’s affirmance

of the USPTO’s Section 2(b) refusals to

register the governmental seals of the

District of Columbia and the City of

Houston: “We review the Board’s legal

conclusions, including its interpretation of

the Lanham Act, without deference.”

84

Briefs and Oral Argument

• Appellant’s brief is due sixty days after the

USPTO serves the certified list of the

record.

• Appellee has 40 days to file its brief after

appellant’s brief is filed.

• A reply brief may be filed within 14 days.

85

Briefs and Oral Argument

• The appendix to the briefs must be filed by

the appellant within seven days after the

last brief is served and filed.

• The CAFC generally allows oral argument.

The maximum time allowed is 30 minutes

per side. Typically each side gets 15

minutes.

86

In re Tam

• 11-22-13 Notice of Appeal

• 01-07-14 Docketed by CAFC

• 04-21-14 Opening brief (after extension)

• 08-04-14 USPTO brief (after extensions)

• 09-02-14 Reply brief

• 10-01-14 Joint Appendix

• 01-09-14 Oral argument

87

CAFC or District Court?

• If the issue on appeal is one of fact, the

applicant must consider that the CAFC will

review the issue on a “substantial

evidence” standard.

• But the ruling on likelihood of confusion is

reviewed on a de novo basis.

88

CAFC or District Court?

• CAFC appeal is on a closed record, so

expenses may be kept down.

• District Court judge may give more

deference to a TTAB ruling.

89

Some Recent CAFC Decisions

• In re Newbridge Cutlery Co.

[NEWBRIDGE HOME]: Section 2(e)(2)

geographical descriptiveness – Reversed.

(2015).

• In re St. Helena Hospital [TAKETEN]:

Section 2(d) – Reversed (2014).

90

Some Recent CAFC Decisions

• In re Nordic Naturals, Inc. [CHILDREN’S

DHA]: Genericness – Affirmed (2014).

• In re Geller [STOP THE ISLAMISATION

OF AMERICA]: Section 2(a)

disparagement – Affirmed (2014).

91

Some Recent CAFC Decisions

• In re Houston and D.C. [Governmental

Seals]: Section 2(b) – Affirmed. (2012).

• In re Fox [C&%$ SUCK&%]: Section 2(a)

scandalousness – Affirmed. (2012).

92

Some Recent CAFC Decisions

• In re Miracle Tuesday, LLC [JPK PARIS &

Design]: Section 2(e)(3) – Affirmed (2012).

• In re Viterra, Inc. [XCEED]: Section 2(d) –

Affirmed (2012).

• In re Chamber of Commerce [CHAMBER

OF COMMERCE]: Section 2(e)(1) mere

descriptiveness – Affirmed (2012)

93

Some Recent CAFC Decisions

• In re Becton, Dickinson Miracle [Tube

closure cap]: Section 2(e)(5) – Affirmed.

(2012).

• In re Chippendales USA, Inc.: Inherent

Distinctiveness – Affirmed (2010).

• In re Mighty Leaf Tea [ML]: Section 2(d) –

Affirmed (2010).

94

John L. Welch 617-395-7072

jwelch@LALaw.com