New Procedural Rules Dramatically Alter Practice Before the Trademark Trial and Appeal Board

Scott Johnston and Greg Golla are partners in the Minneapolis office of Merchant & Gould P.C. and focus their practices on trademark litigation and prosecution. They may be reached at sjohnston@merchantgould.com and ggolla@merchantgould.com.

On August 1, 2007, the Trademark Trial and Appeal Board (TTAB) substantially changed the procedural rules for trademark oppositions and cancellation actions.  The new rules generally track those published for comment in 2006, with some key clarifications that were made in response to comments from the trademark community.  The changes are likely to facilitate early settlements as intended, particularly in those cases where the parties would not otherwise communicate about settlement at the beginning of the proceeding.  In addition, the new rules are likely to reduce incidents of unfair surprise, another objective of the Board.  However, in order to achieve that objective, the Board has added a number of new steps to the process, which creates more opportunity for error and is likely to drive up costs for cases that do not settle early.  Practitioners should note that most of the new rules go into effect November 1, 2007, with some specific rules going into effect August 31, 2007, and others applying immediately to pending cases.  They will also want to be aware of th...