Evidentiary Issues at the TTAB: New Examination Guides, Generic Marks, Third-Party Registrations, Consumer Surveys

Recording of a 90-minute premium CLE video webinar with Q&A


Conducted on Tuesday, August 31, 2021

Recorded event now available

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Course Materials

This CLE course will guide trademark counsel on evidentiary issues at the Trademark Trial and Appeal Board (TTAB). The panel will discuss the new Examination Guides, particularly as they address generic marks, evidentiary issues related to third-party registrations, and consumer surveys. The panel will discuss the scope and timing of discovery. The panel will examine recent court treatment and offer best practices for navigating evidentiary issues at the TTAB.

Description

In 2020, the USPTO updated the Trademark Manual of Examining Procedure (TMEP) by issuing three Examination Guides that provide insights on the USPTO's approach to various evidentiary issues. Among other topics, that guidance addresses the issue of so-called generic.com marks following the Supreme Court's decision in Booking.com and how trademark applicants can establish acquired distinctiveness, including through the use of consumer surveys. That issuance of the examination guidelines follows the Trademark Trial and Appeal Board’s 2017 rules package, which the Board has now had the opportunity to clarify through case law.

Listen as our authoritative panel of IP attorneys examines evidentiary issues associated with the prosecution of applications and with ex parte and inter partes litigation before at the TTAB. The panel will discuss the new Examination Guides, particularly as they address claimed generic.com marks, evidentiary issues related to third-party registrations, and consumer surveys. It also will address the scope and timing of discovery and potential issues associated with:

  • the proper role of notices of reliance;
  • cross-examination of witnesses testifying by declaration;
  • the admissibility and significance of Wayback Machine search results; and
  • the introduction of website captures.

Takeaways will include the best practices counsel should employ when submitting or challenging evidence and testimony, as well as lessons learned from recent case law.

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Outline

  1. New Examination Guides
    1. Generic marks
    2. Consumer surveys
    3. Third-party registrations
  2. Discovery
    1. Scope
    2. Timing
  3. Recent decisions
  4. Best practices

Benefits

The panel will review these and other priority issues:

  • What guidance do the new Examination Guides provide for generic.com marks?
  • What lessons can trademark counsel draw from recent decisions when assessing evidence?
  • What best practices should counsel employ when submitting or challenging evidence?

Faculty

Davis, Theodore
Theodore H. Davis, Jr.

Partner
Kilpatrick Townsend & Stockton

Mr. Davis's practice focuses on domestic and international litigation and client counseling in the fields of...  |  Read More

House, Dyan
Dyan M. House

Partner
Baker & McKenzie

Ms. House practices in the area of intellectual property. She advises clients in a variety of industries, including...  |  Read More

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