INTA Successfully Advocates to Increase TTAB Precedent and Leads to Change

Thanks to the combined efforts of INTA’s Precedential Decisions Task Force and other stakeholders, the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board has agreed to work toward a substantial and sustained increase in the number of precedential decisions issued each year. As one potential step toward reaching this goal, a new online form allows the public to nominate any of the Board’s non-precedential decisions for redesignation as precedential.

The U.S. legal system is based on the concept of stare decisis, the legal principle of determining court actions according to precedent. The U.S. Supreme Court confirmed the virtues of stare decisis, finding it “‘promotes the evenhanded, predictable, and consistent development of legal principles, fosters reliance on judicial decisions, and contributes to the actual and perceived integrity of the judicial process.’” Kimble v. Marvel Enterprises, LLC, 135 S. Ct. 2401, 2409 (2015), quoting Payne v. Tennessee, 501 U.S. 808, 827–828 (1991). But the doctrine of stare decisis only functions properly with a robust body of precedent. For that reason, INTA’s Precedential Decisions Task Force, which includes Task Force Chair Jan Jensen (Jensen Law Firm), Jenna Curtis, Sharoni Finkelstein (Venable LLP), Jonathan Hyman (Knobbe Martens), James Menker (Holley & Menker), Joseph Nabor (Fitch Even), and Jennifer Reynolds, spent the past four years advocating for a substantial and sustained increase in the number of precedential decisions issued each year by the TTAB.

After extensive research into the number of precedential decisions issued by the TTAB, in October 2019, the Precedential Decisions Task Force prepared a special report (Report) summarizing its findings and the impact of those findings (see Report). The Report found that, since 2012, the TTAB had designated as precedential an average of 40 cases per year, representing roughly 6.18 percent of all decisions issued by the TTAB. By contrast, in 2018, 40.6 percent of the written and signed opinions from the U.S. Courts of Appeals were published, and 11.8 percent of all U.S. Courts of Appeals opinions and orders, including those that were signed, unsigned, and unsigned without comment, were published.

Precedential TTAB decisions are critical to practitioners, trademark stakeholders, and the public at large. Such decisions improve the quality and efficiency of trademark proceedings, help develop trademark law, provide critical guidance and clarity so trademark owners can avoid disputes, and raise the profile of the TTAB on the global trademark stage.

According to stated policy regarding designation of decisions as precedential, “[a]n opinion or decision of the Trademark Trial and Appeal Board (TTAB) may be designated as a precedent of the Board if it:

• Establishes, alters, modifies or clarifies a rule of law or a matter of agency policy;
• Reinforces existing law or policy by demonstrating its application to a factual record different from those confronted previously but likely to arise again so that it would be instructive in other cases; or
• Involves a legal or factual issue of significant interest or substantial importance to the public generally or to trademark owners or practitioners specifically.”

The TTAB’s policy regarding precedential decisions also emphasizes that an opinion or decision that does not require discussion of multiple issues/claims or complex fact patterns will present the best vehicle through which to announce TTAB precedent.

Under this framework, many TTAB precedential decisions date back decades, forcing practitioners, trademark stakeholders, and trademark Examining Attorneys to rely on very old precedent. Because the TTAB is often confronted with ongoing changes in technology and the ways in which goods and services are created, distributed, used, and consumed, older precedent may no longer be directly applicable.  Generally, the TTAB has been reluctant to designate decisions as precedential in cases involving complex factual scenarios and/or multiple legal issues even though such cases reflect the reality of our world’s exceedingly complex business and legal environment. If the TTAB would embrace such cases, the entire trademark community would benefit from precedential decisions involving complex factual scenarios or multiple legal issues that directly reflect current marketplace realities.

In order to urge an increase in the number of precedential TTAB decisions, INTA CEO Etienne Sanz de Acedo provided the Report to the USPTO’s Chief Administrative Trademark Judge Gerard Rogers and Deputy Chief Administrative Judge Mark Thurmon in a letter dated November 6, 2019 (Report) and, beginning November 21, 2019, the Task Force—in a collaboration with the American Bar Association (ABA) and the American Intellectual Property Law Association (AIPLA) that the Task Force initiated and led—met with Chief Judge Rogers and Deputy Chief Judge Thurmon on multiple occasions to discuss the Report and potential avenues to meaningfully increase the number of precedential TTAB decisions in a sustained way.  Options discussed included:

• Enhancing the mechanism for encouraging judges and interlocutory attorneys to designate decisions as precedential from the outset, including streamlining the process by which decisions are internally designated as precedential;
• Redesignating non-precedential decisions as precedential;
• Designating partial decisions as precedential;
• Designating decisions as precedential in cases involving complex factual scenarios and/or multiple legal issues; and
• Creating a list of, or method to suggest, issues for which there is a pressing need for current precedential decisions.

Chief Judge Rogers and Deputy Chief Judge Thurmon considered these ideas and agreed to continue to work with INTA to achieve its goal of significantly increasing the number of precedential decisions in a sustained way, including designating more precedential decisions from the outset.

Notably, in response to the combined efforts of INTA, the ABA, and AIPLA, the TTAB created a new online form that allows members of the public to nominate a non-precedential decision of the Board for redesignation as precedential. The form is available here.

The nomination form is simple, requiring a case number, case name, entry number, and brief reason for nomination. Contact information for the nominating party is optional. While there is work to be done by the TTAB to establish a sustained substantial increase in the number of precedential decisions issued by the TTAB each year, this form represents one potential mechanism toward achieving that goal. INTA encourages practitioners and trademark stakeholders to use the form to nominate as precedential TTAB decisions that address complex fact scenarios, novel issues of law, new technologies or emerging market issues, and issues for which there are very few (or no) recent precedential decisions, or which build upon existing TTAB precedent.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. 

© 2021 International Trademark Association