Trademark Trial
and Appeal Board Celebrates 60 Years
Guest blog by Chief Administrative Trademark Judge Gerard
Rogers and Administrative Trademark Judge Susan Hightower
Employees of the Trademark Trial and Appeal Board (TTAB)
like to say: “We have our trials, but our work is appealing.” So what does that
mean, exactly? The Board’s 60th birthday in 2018 offers the perfect opportunity
to take a closer look.
The TTAB is an administrative tribunal within the U.S. Patent
and Trademark Office (USPTO) and seeks to spur job creation by the timely
adjudication of trademark disputes. The Board’s trial proceedings are similar
in many ways to a federal district court, except that we don’t hear testimony
from live witnesses. Instead, our proceedings are conducted outside the Board
and in writing; and we make decisions based on written administrative records,
although parties can opt for an oral hearing in their cases, after the
presentation of evidence is complete.
Today, most cases commenced at the TTAB – around 70% –
are trial cases, but most cases decided on the merits – around 75% – are ex parte appeals by applicants whose
applications to register trademarks have been refused by a Trademark Examining Attorney.
The trial part of the Board’s work involves deciding trademark registration
disputes between two or more parties, known as inter partes proceedings. Most of these inter partes proceedings before the TTAB are oppositions, where a
plaintiff attempts to prevent registration of a pending trademark. Cancellations
are cases in which the plaintiff is trying to cancel an existing registration.
Approximately 50 paralegals, attorneys and administrative trademark judges work
on these cases. Our decisions in both ex
parte appeals and inter partes proceedings
can be reviewed by either a U.S. district court or the U.S. Court of Appeals
for the Federal Circuit.
Things were very different 60 years ago. When the Trademark Act (15 U.S.C.
§§ 1051-1141) – also commonly known as the Lanham Act – was enacted in
1946, ex parte appeals were
heard directly by the Commissioner of Patents, while inter partes cases were decided by an Examiner of Trademark
Interferences, with the right to appeal to the Commissioner of Patents. (Both
types of cases could be delegated to an Assistant Commissioner of Patents.) Due
to the volume of these cases, in a 1955 article in the Journal of the Patent Society, Assistant Patent Commissioner Daphne
Leeds, who was the first woman Assistant Commissioner and an active member of
the American Bar Association committee that assisted in drafting the Trademark
Act, suggested creating an administrative board to handle the workload.
Leeds’ idea
came to fruition on August 8, 1958, when President Eisenhower signed an amendment
to Trademark Act Section 17, 15 U.S.C. § 1067. The amendment created the Trademark
Trial and Appeal Board “to determine and decide the respective rights of
registration” and provided for the appointment of Board members to hear and
issue, by a three-member panel, final decisions in inter partes cases and ex
parte appeals. Four members were appointed, and the Board consisted of
those original four members through 1974. The Board still decides the merits of
its cases by panels of three judges, now called administrative trademark judges
– ATJs for short – appointed by the Secretary of Commerce. Board paralegals and
attorneys handle motions and “interlocutory” filings to keep cases moving
through the appeal and trial processes, so that they are ready for submission
“on brief” or after oral argument.
The Board’s
leader was known as the “Chairman of the Board” until 1993 and today has the
title “Chief Administrative Trademark Judge.” Past and present Chairmen of the
Board/Chief Administrative Trademark Judges include Saul Lefkowitz (1975-81), Dan
Skoler (1982-84), David Sams (1984-2009), and Gerard F. Rogers (Acting Chief
Judge 2009-10; Chief Judge 2010-present). The first Deputy Chief Judge, Susan
Richey (2014-2017), was appointed in 2014.
Throughout the years, the TTAB has presided over a
variety of cases presenting issues of “first impression” or which garnered significant
public attention. While most cases involve word marks or designs such as logos,
the Board has also had to rule on the registrability of scent marks, sound
marks, color marks and the shape or “configuration of” products or product
packaging.
TTAB decisions rarely are discussed in cases reaching the
U.S. Supreme Court, but in 2015, in the case of B&B Hardware, Inc. v.
Hargis Industries, Inc., 135 S. Ct. 1293, that court held that Board
decisions “can be weighty enough to ground issue preclusion” when the parties
that were involved in a Board case later are involved in a case in a U.S.
district court. In other words, the Board decision may, in appropriate
circumstances, bind the district court and bar the parties from relitigating
the issue in that subsequent court proceeding.
Most recently, the U.S. Supreme Court issued a ruling in Matal v. Tam, 137 S. Ct. 1744 (2017), in
which musician Simon Shiao Tam applied to register the mark “The Slants” for
his dance-rock band. Tam’s application was denied as disparaging to people of
Asian descent under a provision of the Trademark Act that prohibits
registration of any mark that “may disparage persons, institutions, beliefs, or
national symbols,” a decision which the TTAB affirmed. The U.S. Court of
Appeals for the Federal Circuit, in an en banc decision, vacated the TTAB’s
decision on constitutional grounds and the case wound up before the Supreme
Court. The Supreme Court ultimately agreed with Tam that the disparagement
clause of the Trademark Act violated the Free Speech Clause of the First
Amendment.
Twice within the last decade, the Board also decided
challenges brought by Native Americans seeking to cancel as disparaging the “Redskins”
trademark owned by the Washington Redskins professional football team. Though
both decisions were appealed to district courts, neither reached the Supreme
Court. The more recent of these two cases was rendered moot by the Supreme
Court’s decision in Matal v. Tam.
Examples of some other recent high-profile cases include
refusals to register marks for marijuana products (illegal under federal law);
disputes over who owns registrations after musical groups break up; and attempts
to register someone’s name as a trademark without their permission (“Obama
Bahama Pajamas,” for one).
In the years to come, the Board will continue to hear and
decide trials and appeals of cutting-edge trademark issues reflecting the rapid
changes in U.S. commerce and society, and the products and services that we all
use. We look forward to the challenge.
For more
information, please visit the TTAB page of
the USPTO website.
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