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TSU63 TTAB hearings: Tips for Oral Argument

Moderator: Erik M. Pelton, Erik M. Pelton & Associates, PLLC (Falls Church, VA)

Time: Sunday, May 20th, 9:00 AM – 11:00 AM

This Table Topic will discuss a variety mechanics, strategies, and tips surrounding
oral hearings in Trademark Trial and Appeal Board (TTAB) cases of both ex parte
appeals and inter partes proceedings.

I. Mechanics of a TTAB Hearing

o Ex Parte Appeal (appeal of a Final Office Action refusal to the TTAB):


 Timing: An applicant must request a hearing within 10 days after
Applicant’s time to file a Reply Brief. 37 C.F.R. § 2.142(e)(1); TBMP
§ 1216.
• Board will contact parties about choosing a date; usually
takes 2-3 months to schedule.
 Costs:
• There are no USPTO filing fees associated with a hearing.
• Costs to consider – time for preparation, travel, etc.
 Hearing details:
• Generally, in an ex parte hearing, an applicant receives 20
minutes for his/her argument and the Trademark Examiner
receives 10 minutes. 37 C.F.R. § 2.142(e)(3); TBMP § 1216.
• Before a panel of three judges.
• Applicant, Examiner Attorney and/or judges may appear on
video.
• Generally held at USPTO headquarters in Alexandria,
Virginia; but may be scheduled during conferences or special
events off site.
 Strategies: Pros and Cons
• Strong vs weak arguments
• Complex cases
• Delaying a decision
 Evidentiary record: cannot introduce new evidence or new
arguments at hearing.

o Inter Partes Proceeding (Opposition or Cancellation)


 Timing: Either party may request a hearing within 10 days after the
final reply brief is due. 37 C.F.R. § 2.126(a); 37 C.F.R. § 2.129(a);
TBMP § 802.02.
• Board will contact parties about choosing a date; usually
takes 2-3 months to schedule.
 Costs:
• There are no USPTO filing fees associated with a hearing.
• Costs to consider – time for preparation, travel, etc.
 Hearing details:
• Generally, each party is allowed 30 minutes for its oral
argument. The plaintiff may reserve part of its 30 minutes
for rebuttal. 37 C.F.R. § 2.129(a); TBMP § 802.05.
• No additional time for oral argument is allotted for
counterclaims or consolidated proceedings. Accordingly, if
there is a counterclaim, the defendant, as the plaintiff in the
counterclaim, may also reserve part of its 30 minutes for
rebuttal on the counterclaim. TBMP § 802.05.
• Before a panel of three judges.
• Parties and/or judges may appear on video.
• If one party elects not to appear, hearing will proceed
anyways.
• Board does not like to change hearing dates once set, must
show good cause. 37 C.F.R. § 2.129(b); TBMP § 802.03.

II. Practical Tips


• What is the order of the argument?
o The applicant will give his/her argument, followed by an argument
from the Trademark Examiner and then the applicant has a rebuttal
(must be reserved in advance).
o In an inter partes hearing, both the plaintiff and the defendant receive
30 minutes for their argument. TBMP § 802.05.
• What should you bring to the hearing?
o Notepad, pens, Hearing Binder, ID.
o Visual displays can be a powerful tool (when appropriate).
 Anything displayed must be in the record.
 Generally, it is a courtesy to advise the other side that you are
intending to use one.
• How should you prepare for the hearing?
o Outline all of your argument (especially helpful if you freeze during
one of the questions; it helps remind you what issues you need to
cover).
o Practice with your associate/partner about what you will say to the
court.
o Prepare a list of questions contrary to your argument that the judges
may ask you.
o Prepare a list of responses to those questions.
o Research each of the judges to find out more about their backgrounds
and past decisions.
o Know the record in detail (and have a copy for presentation).
• How should you structure your argument?
o Always include an introduction and conclusion.
o In the introduction, use a roadmap to lay out your 2-3 main points.
 A judge may ask you right after the roadmap to go directly to a
specific point (i.e. point number 2), so it’s a good way to keep
yourself organized in responding to questions.
o Recognize that the TTAB is bound especially by precedent form the
Court of Appeals for the Federal Circuit (CAFC).
o Research all the main cases cited by the other side in their Brief.
• What hearing details should you be aware of?
o How much time you have for your argument.
o How much time opposing counsel has for the argument.
o Whether you can reserve time for rebuttal if you are the plaintiff.
 If you are the plaintiff, make sure you reserve time for rebuttal
in your opening sentence to the court.
• How to use your time do when opposing counsel is speaking?
o Look for answers to questions you left unanswered with the judges or
that you could not find in the record.
o Take notes about the other side’s argument and find ways to
undermine their argument when it is your turn to speak if ou get a
rebuttal
• What is the scope of rebuttal?
o During the rebuttal, the applicant is permitted to take testimony and
offer documents, but such evidence must be narrowly focused on
issues that were raised by the examining attorney in his/her oral
argument. TBMP § 703.01(m).
• View a live hearing in advance if it is your first time, so be more familiar
with the setting and process.
• Day of hearing:
o Arrive early.
o Have a brief outline, but be prepared for many questions.
o Have entire record accessible and handy.
o Everyone in the courtroom is to rise when Judges enter and leave.
o Expect that there maybe others present to view the argument, as
they are open to the public.

III. Gauging the Judges


• How should you address the court?
o “Your Honor.” “May it please the Court.”
o Do not interrupt the judge or opposing counsel.
o Watch your gestures and body language, especially when addressing
the court and hearing the opposing party’s argument. Specifically,
do not show signs that you do not agree with the opposing party
because the judges take notice.
o Be engaged and respectful.
• Gaining and keeping the attention of the court during the oral argument
o Keep eye contact with the judges and gauge their impressions,
thoughts, and gestures during your argument.
o When answering questions, be short and to the point.
o Listen carefully to the questions asked by the court. Do not avoid or
delay in answering a judge’s question. When answering the
questions, provide a clear and direct response, if you do not provide
one, they will keep reminding you that you failed to answer their
question.
o When appropriate, use colorful analogies and hypotheticals to support
your arguments.
• How do you peak a judge’s interest in a topic?
o Research past decisions by each judge, so you can anticipate what
facts and laws interest them the most about your case.
o Cite to specific places in the record when possible.
o Cite to specific precedent when possible.
• How do you approach a difficult question?
o Take a second to pause and gather your thoughts.
o Formulate your response in your head.
o Attempt to steer the answer to part of your prepared
outline/argument.
o Know relevant case law that supports and hurts your arguments. Be
prepared to argue why a related precedential case should or should
not apply to the instant case.
• Prepare for handling a situation where the judges are aggressively attacking
an argument.
o Know when to back off a topic/point without conceding that you are
wrong.
o Know when to admit that you are wrong about a particular issue.
o Recognize that sometimes even when attacking they may be seeking
to frame the issues to support your overall claims.
• What can you gauge from a judge’s question?
o The topic of most interest to a judge.
o Not all questions are hostile. Sometimes a judge asks a question with
the intent to persuade a colleague and/or in an effort to assist counsel
to strengthen a position.
• What is a common question asked by the judges?
o Judges like to ask hypotheticals, such as “what would it mean if I
found in your favor” or “explain what cases/marks will be governed by
the new rule.”
• Cite to and explain the record where needed.
o Generally, the judges will have read the briefs but will not have read
the record and will therefore have questions about what is in the
record and what is not.
o Be exact when you are stating dates, times, and places.
o Mastering the record establishes credibility with the panel and allows
you to emphasize the best parts of the record in response to the
Board’s questions.

IV. General Hearing Etiquette


• Turn your mobile phone on silent when entering the courtroom.
• Dress appropriately.
• Appear confident. Body language and facial expression are an important part
of the entire presentation.
• Do not use first names when addressing anyone in the courtroom.
• It is okay to admit that you do not know an answer. You should admit that
you do not know something, rather than make up an answer for the sake of
answering a question.
• If you do not understand the question, ask for clarification.
• Do not talk about the case, the judges, opposing counsel, etc. in the
bathroom, elevator, or any common areas of the courthouse. People can
and will often times overhear you.