USPTO five-year plan may have effect on TTAB

The US Patent and Trademark Office (USPTO) has released its "2007 - 2012 Strategic Plan", which maps out certain goals and performance measures for the next five years. In addition to a management goal to achieve organizational excellence, the USPTO has identified three strategic goals, including a trademark-based goal to optimize trademark quality and timeliness. To achieve this goal, the USPTO intends, in part, to undertake specific actions with respect to the Trademark Trial and Appeal Board (TTAB) in connection with its desire to improve the processing of cases at the TTAB and to focus on the integration of TTAB systems to "provide a seamless interface" and "reliability of operations".

To illustrate and provide context to its strategic planning process, the USPTO included in its Strategic Plan a model of the IP process divided into five sections, including 'Processes' which encompasses appeals and oppositions, and 'Outputs', which includes trademark registrations. The planned TTAB measures are targeted to counter at least two Processes-level issues that the TTAB is experiencing, namely: (i) extended time periods for addressing requests for reconsideration filed at the same time as notices of appeal, and (ii) prolonged opposition proceedings due to "uncontrolled discovery" and an "excessive number of discovery and trial motions".

In keeping with the guiding principles of the Strategic Plan of quality, timeliness, cost-effectiveness, and transparency, the USPTO's initiatives for resolving these issues focus on efficiency and expediency. Specifically, the USPTO plans to promulgate rules that will require parties involved in TTAB proceedings to "participate in discovery conferences, make initial disclosure of information, and disclose potential witnesses" and to support "accelerated case resolution", through which decisions would be based on dispositive filings akin to summary judgment motions stipulated by the parties. The USPTO also intends to expand 'best practices' from TTAB decisions to apply more generally to the examination and allowance phases of the trademark registration process.

The TTAB-level proposals, while a small portion of the Strategic Plan, are intended to reflect the USPTO's overall vision of "leading the world in intellectual property protection and policy".

Ron N Dreben and Meg Bowen, Morgan Lewis, Washington DC