When entrepreneurs, technology startups, and other brand owners embark on their trademark protection strategy in the United States, and file a federal trademark application in the US Patent and Trademark Office, a trademark dispute based on trademark infringement or legal issues may arise, and those issues may be litigated in the USPTO Trademark Trial and Appeal Board (TTAB) resulting in a trademark lawsuit.
In the TTAB, litigants have options for the structure of the trademark lawsuit, whether a traditional trial schedule which includes pleadings, discovery, pre-trial and trial, or the Accelerated Case Resolution (ACR) option, which, as the name implies, accelerates the matter.
According to the US Patent and Trademark Office guidance, ACR is intended as an alternative to a traditional Trademark Trial and Appeal Board (TTAB) proceeding that involves full discovery, trial and briefing. Its form can vary but the process is generally thought of as approximating a summary bench trial, see Acuff-Rose Music, Inc. v. Jostens, Inc., 47 USPQ2d 1953, 1954-55 (2d Cir. 1998) and cases cited therein, or cross-motions for summary judgment and accompanying evidentiary submissions that the parties wish to substitute for a trial record and traditional briefs at final hearing.
Trademark Lawsuits and ACR
The focus here is more on the development of, or proof of, the facts, rather than on the claims and applicable law. The TTAB is willing to consider almost any sort of claim under ACR. However, the most appropriate cases are those in which one or more of the following apply:
- Little discovery is necessary;
- The parties are able to stipulate to many facts;
- Each party expects to rely on the testimony of one or two witnesses and the overall record will not be extensive;
- The parties are prepared to make summary judgment submissions with exhibits and will be prepared to stipulate that the Board panel deciding the case can resolve any lingering genuine disputes as to material facts; or
- The parties are prepared to stipulate to the admissibility of most of the record, and will merely reserve the right to object in trial briefs on the grounds of relevancy or weight to be accorded particular items of evidence.
Many Board attorneys in the USPTO and judges believe a high percentage of cases should be amenable to a procedure focused more on a coordinated presentation of facts and evidence than on the traditional adversarial procedure. Trademark owners and the trademark bar may need more convincing, or at least more time and experience with the process before routinely pursuing it as an option.
How much time is needed for discovery, and what limits will be placed on discovery devices is subject to negotiation and would not be imposed by the Board, under current practice. See, e.g., Philosophy, inc. v. Amansala USA, LLC (91190154) (Parties’ stipulation to proceed by ACR limited discovery to ten interrogatories and ten document requests each, two discovery depositions each, and included a schedule calling for initial disclosures one month later, followed by two months for discovery). Because the particular restrictions on discovery that may be part of an ACR case will vary, depending on the parties’ agreement, there is no one comparison with “regular” discovery that can be made. However, if the parties are unable to agree on some discovery restrictions they will have limited their ability to wring out substantial savings in time and resources. Nonetheless, even if parties have proceeded through traditional discovery, without restriction, and then desire to pursue an ACR trial phase, the Board will consider the request.
Cost of Trademark Lawsuits and ACR
The potential for cost savings would come from the reduced time spent by counsel and client preparing to prosecute or defend the case. When facts are stipulated, no time is spent proving them (although there may be some typical costs involved in preparing and exchanging documents and other materials that illustrate for the involved parties that facts are not genuinely in dispute and therefore can be stipulated). When issues are limited, as for example when likelihood of confusion is accepted but priority of use is to be determined by the Board, savings can be even greater, because all aspects of the proceeding, including discovery, trial and briefing are focused on limited matters. When discovery devices (e.g., number of depositions, document requests and the like) are limited, practice is necessarily more focused and efficient. The extent of savings will largely be a function of the willingness of the attorneys and their clients to focus on factual or legal issues genuinely in dispute, and to utilize discovery and trial only for the resolution of those issues.
Depositions in trademark lawsuits can be taken, but may be limited in number and/or duration. Often, however, parties will agree to the presentation of direct testimony from witnesses by affidavit or declaration, with the adverse party or parties reserving the right to utilize live cross-examination only if necessary. Likewise, in many cases discovery depositions do “double duty” and are submitted in lieu of testimony depositions. The options are many.
Disadvantages of Trademark Lawsuits using ACR
The process is not suitable for parties who can agree on little and who are not willing to restrain, to at least some extent, their discovery and/or trial activities. Nor will an ACR procedure work well for a case that promises to generate a large record. So one disadvantage would be that ACR cannot be of assistance in very contentious cases or in very complicated cases.
When considering initiating or defending a trademark lawsuit, particularly those taking place in the US Patent and Trademark Office Trademark Trial and Appeal Board, Accelerated Case Resolution (ACR) can be a tremendous advantage to one or both parties, by saving time and legal fees and simplifying or narrowing the issues before the Board. On the other hand, in cases where many issues are present, and there is lots of tension between the parties, ACR may prove ineffective in resolving the dispute.
Entrepreneurs, technology startups, and business owners involved in trademark lawsuits can consider ACR as an alternative to traditional lawsuit schedules that include extensive discovery, depositions, and trial briefs. Consultation with an experienced trademark lawsuit and litigation attorney can benefit trademark owners in deciding the best trademark enforcement or defense strategy that is most advantageous to their business.