[Federal Register Volume 76, Number 78 (Friday, April 22, 2011)]
[Notices]
[Pages 22678-22679]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2011-9801]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

[Docket No. PTO-C-2011-0011]


Trademark Trial and Appeal Board Participation in Settlement 
Discussions

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of inquiry.

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SUMMARY: The United States Patent and Trademark Office (``USPTO'' or 
``Office'') is seeking comments from stakeholders about the extent to 
which the Trademark Trial and Appeal Board (``TTAB'' or ``Board'') 
should become more directly involved in settlement discussions of 
parties to inter partes proceedings, including oppositions, 
cancellations and concurrent use cases. The purpose of this notice of 
inquiry is to determine whether the involvement of an Administrative 
Trademark Judge (ATJ) or Board Interlocutory Attorney (IA) would be 
desirable by parties, and if so, how extensively and at what points in 
proceedings. In addition, to the extent stakeholders voice a preference 
for assistance in settlement discussions but prefer such assistance to 
be provided by mediators or individuals other than Board judges and 
attorneys, it will be useful for the Board to receive suggestions on 
this option.

COMMENT DEADLINE DATE: Written comments must be received on or before 
June 21, 2011.

ADDRESSES: Written comments should be sent by electronic mail message 
over the Internet addressed to [email protected]. 
Comments may also be submitted by mail addressed to: Mail Stop 
Comments--TTAB, P.O. Box 1451, Alexandria, VA, 22313-1451, marked to 
the attention of Karen Kuhlke. Although comments may be submitted by 
mail, the Office prefers to receive comments electronically. Comments 
may also be submitted through the Federal eRulemaking Portal Web site 
at http://www.regulations.gov. Additional instructions on providing 
comments through the Federal eRulemaking Portal are available at http://www.regulations.gov. All comments submitted directly to the Office or 
provided on the Federal eRulemaking Portal should include the docket 
number (PTO-C-2011-0011).
    The written comments will be available for public inspection at the 
Trademark Trial and Appeal Board, located in Madison West, Ninth Floor, 
600 Dulany Street, Alexandria, Virginia, and will be available via the 
Office's Internet Web site (address: http://www.uspto.gov). Because 
comments will be made available for public inspection, information that 
is not desired to be made public, such as an address or phone number, 
should not be included in the comments.

FOR FURTHER INFORMATION CONTACT: Karen Kuhlke, Administrative Trademark 
Judge, Trademark Trial and Appeal Board, at (571) 272-4287.

SUPPLEMENTARY INFORMATION: Over time, representatives of the Board have 
engaged in discussions with the Trademark Public Advisory Committee 
(TPAC) concerning the average overall length of Board trial 
proceedings. These discussions have generated a number of suggestions 
for process improvements, including suggestions related to fostering 
settlement discussions. The USPTO 2010-2015 Strategic Plan includes a 
commitment by the Office to assess the desirability among stakeholders, 
including trademark owners, intellectual property organizations, the 
trademark bar and others with an interest in defining Board procedures, 
for meaningful involvement of Board personnel in settlement discussions 
regarding inter partes proceedings (i.e., trial cases). In general, the 
Office seeks comments from stakeholders on all aspects of this issue, 
and is now opening the discussion to stakeholders and will consider all 
comments and suggestions that address this subject as well as any 
others which may be pertinent to the discussion. Below, specific 
questions are posed to generate discussion, but it is useful to first 
consider some background information.
    The Board estimates that two-thirds of all inter partes cases are 
disposed of without an answer being filed (e.g., because of withdrawal, 
default, or settlement). This may suggest that it would not be 
resource-effective to have a judge, attorney or mediator routinely 
involved in settlement discussions prior to close of the pleadings. On 
the other hand, perhaps the two-thirds figure would be higher, or cases 
that do settle without an answer ever being filed would be disposed of 
more quickly, if judges, attorneys or mediators were involved in 
settlement discussions early on.
    Most of the cases comprising the one-third that are not disposed of 
prior to an answer being filed still are disposed of without a full 
trial and do not require issuance of a final decision on the merits. 
While some of these are cases that a plaintiff fails to prosecute, or 
cases in which a defendant eventually abandons an application or 
surrenders a registration, i.e., cases disposed of as the result of 
unilateral action (or inaction), many are cases that are settled by 
agreement of the parties. In informal discussions with Board personnel, 
some have suggested that more parties would be willing to discuss 
settlement, even of seemingly intractable disputes, if the Board 
required them to discuss settlement. Based on anecdotal reports and 
observations, it would appear that there are many cases in which 
settlement talks are most useful after the exchange of initial 
disclosures or after the exchange of discovery requests and responses. 
Thus, related to the inquiry about whether Board personnel should be 
involved in settlement discussions of the parties is the inquiry about 
the particular point (or points) in the chronology of a proceeding when 
Board involvement in discussions should be

[[Page 22679]]

initiated or resumed to be most effective.
    In the Board's Notice of Final Rule Making published August 1, 
2007, at 72 FR 42242, the Board introduced to its inter partes 
proceedings the requirement for a discovery conference, which includes 
a requirement for discussion of settlement or possible narrowing of 
claims and defenses. In that notice, and in response to concerns 
expressed by some who responded to the Notice of Proposed Rule Making, 
the Board stated that its involvement in settlement discussions would 
be rather limited. Subsequently, however, some stakeholders have 
suggested that the Board explore the possibility of more frequent 
Board-convened settlement conferences and consider the possibility of 
involving mediators on a routine basis.
    Under current Board practice, if a party requests Board involvement 
in a discovery conference, Board personnel will first inquire whether 
the parties have initiated settlement discussions. To date, parties 
have infrequently invited Board personnel to participate in these 
conferences. Moreover, when Board personnel participate in discovery 
conferences, Board involvement in settlement discussions is only in the 
broadest context. There is no routine Board involvement in settlement 
discussions in cases in which the Board is not invited into the 
discovery conference or, for cases in which the Board is so invited, 
after the completion of the discovery conference.
    Non-party involvement (through an ATJ, an IA, a USPTO mediator, or 
an outside mediator) in these settlement conferences could help the 
parties consider various means for resolution of the proceeding. For 
example, where parties are at an impasse because of difficulty 
resolving possible amendments to the identifications of goods or 
services, assistance could be provided to the parties in arriving at 
mutually agreeable amendments, and this is an area in which Board 
personnel could be particularly helpful. Or a mediator could be 
involved in discussions regarding possible restrictions on use of a 
mark, such as a requirement that it be used with a disclaimer or with a 
house mark. Also, in cases where pre-trial settlement is not possible, 
Board personnel or a mediator could be involved in discussions that 
would nonetheless narrow the issues for trial and encourage the parties 
to adopt an Accelerated Case Resolution procedure for their case. In 
other words, even if greater involvement by Board personnel or by 
mediators does not result in more frequent or faster settlements, an 
alternative result may be faster, more focused trials.
    Thus, the Office seeks responses to the following questions, as 
well as comments or suggestions on related topics (as these questions 
are illustrative of the discussion to be generated and not the 
exclusive issues to be discussed):
    (1) Should the Board be routinely involved in settlement 
discussions of parties, or instead, be involved only in particular 
cases on an ``as needed'' basis?
    (2) If you believe parties would benefit from involvement of a non-
party, would it be preferable for settlement discussions to be handled 
by (a) an ATJ, (b) an IA, (c) a USPTO employee trained as a mediator 
but who is not an ATJ or IA, or (d) a third-party mediator?
    (3) How would the involvement be triggered? For example, by 
stipulation of the parties, by unilateral request or by some other 
trigger? Examples of situations that might be used as triggers for 
required settlement discussions involving a non-party could include the 
use by the parties of multiple suspensions for settlement discussions 
which proved unsuccessful, or events such as the filing of an answer, 
the exchange of disclosures, the completion of some discovery, or the 
close of the discovery period.
    (4) How many triggers should there be that would prompt Board or 
mediator involvement in settlement talks? For example, apart from the 
initial discovery conference, should there be a follow-up inquiry from 
the Board in the middle of discovery, at the end of discovery, or 
before pre-trial disclosures are made and commencement of trial is 
imminent? Should there be a required phone conference after the second 
or any subsequent request to extend or suspend discovery for 
settlement?
    (5) To what extent should Board personnel involved in settlement 
discussions be recused from working on the case?
    (6) Should motions for summary judgment, the vast majority of which 
are denied and do not result in judgment, be barred unless the parties 
have been involved in at least one detailed settlement conference? 
Should an exception to such a rule be made for motions based on 
jurisdictional issues or claim or issue preclusion?
    (7) Should the parties be accorded only limited discovery until 
they have had a detailed settlement discussion with a Board judge, 
attorney or mediator, with the need for subsequent discovery dependent 
on the results of the discussion?
    (8) Should the Board amend its rules to require that a motion for 
summary judgment be filed before a plaintiff's pre-trial disclosures 
are due, and that the parties be required to engage in a settlement 
conference in conjunction with a discussion of plaintiff's pre-trial 
disclosures?
    The potential benefits from facilitating more frequent and/or more 
detailed settlement discussions may include the following: (a) 
Increasing the number of settlements by having Board personnel or non-
party mediators available to address parties' needs in inter partes 
cases with varying claims and complexity; (b) gaining efficiency for 
the Board and users of the Board's procedures by eliminating the cost 
and time of litigating through the full trial and briefing of all 
pleaded claims and defenses; and (c) increasing commercial stability by 
achieving faster and more cost-effective resolution to disputes, which 
provides for a more stable ownership platform.

Authority

    Section 17 of the Trademark Act, 15 U.S.C. Section 1067, provides 
that the Trademark Trial and Appeal Board shall determine and decide 
the respective rights of registration of parties to various inter 
partes proceedings. Proposed amendments to any rules governing these 
proceedings, which may result from this notice of inquiry, would be 
announced in a Notice of Proposed Rule Making and be subject to public 
comment.
    Notice of Inquiry: The Office is providing the public, including 
user groups, with an opportunity to comment on the procedures under 
consideration. The Office will consider the comments and decide whether 
to pursue suggestions for process improvements. If the Office decides 
to pursue implementation of suggestions, the Office will publish a 
notice to set forth the procedures and requirements. The Office 
appreciates any comments and feedback related to these subjects. 
Persons submitting written comments should note that the USPTO may not 
provide ``comment and response'' analysis, since notice and opportunity 
for public comment are not required for this notice under 5 U.S.C. 
553(b) or any other law. The Board may further discuss this subject 
with stakeholders and user groups at a roundtable to be convened in the 
future.

    Dated: April 8, 2011.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2011-9801 Filed 4-21-11; 8:45 am]
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