Finnegan's monthly review of essential decisions, key developments, evolving trends in trademark law, and more.

June/July 2011 Issue

TTAB Cases

Blackhorse v. Pro-Football, Inc.,
98 USPQ2d 1633 (TTAB May 5, 2011)

The TTAB stated that it will take an active role in the pretrial management of cases that have the potential to become overly contentious or generate voluminous records.  The TTAB exercised its authority under Trademark Rule 2.120(i)(2) to order the parties to attend a pretrial conference.  At the conference, the TTAB issued detailed instructions on the conduct of the case, which it then summarized in this decision, including: refusing to entertain motions for summary judgment unless certain requirements were met, specifying the type and amount of evidence labeled confidential, and requiring a detailed table of testimony and evidence.


This case involves a dispute between a group of Native Americans, including Amanda Blackhorse (“Petitioners”), and Pro-Football, Inc. (“Respondent”) over registrations covering the REDSKINS marks.  This case involves nearly identical facts and claims as the earlier case, Harjo v. Pro-Football, Inc.,
50 USPQ2d 1705 (TTAB 1999) (and later appeals).  Petitioners in both cases are Native Americans who have challenged registrations covering the REDSKINS marks as disparaging under Section 2(a) of the Lanham Act.  The TTAB noted that although this case was brought by different plaintiffs than in Harjo, the pleadings in this case are nearly identical to those from Harjo.  The TTAB also noted that the Harjo case had been “extremely contentious” and generated voluminous amounts of evidence and objections.

In an effort to avoid a repeat of the prior litigation tactics, the TTAB took a proactive role in this case, exercising its authority to hold a pretrial conference under Trademark Rule 2.120(i)(2) and requiring the parties to attend a pretrial conference at the USPTO office in Alexandria, Virginia, with three administrative trademark judges and an interlocutory attorney.  Rule 2.120(i)(2) provides that the TTAB may, upon its own initiative, request that parties meet with the TTAB before trial whenever it appears that questions or issues “have become so complex that their resolution by correspondence or telephone conference is not practical.”

Hoping to manage the proceeding as efficiently as possible, the TTAB issued a number of instructions to the parties, including the following:

The TTAB made a preemptive declaration that it would not consider any further argument of an issue once that issue had been decided or preserved for appeal.  The TTAB also stated that it could use its discretion and disregard an entire motion or brief that included reargument of previously decided issues.

The TTAB limited the parties’ option for filing summary judgment motions because it views the case as “particularly unsuited for disposition by . . . . summary judgment.”  The parties could only file summary judgment motions if they filed a stipulation stating that there are no genuine disputes as to any material facts, and permitting the TTAB to resolve any disputes about material facts.  The TTAB required that the stipulation be approved by the TTAB before any summary judgment motions can be filed.

The TTAB instructed the parties to be circumspect in designating information as “confidential.”  It noted that there have been “far too many cases” in which evidence and testimony were improperly designated confidential.  The TTAB stated that if Respondent designated more than a minimal amount of evidence as confidential and the evidence was more than twenty years old, the Respondent should expect an order to show cause why such a designation was warranted.

Anticipating a voluminous record in the case, the TTAB also required that the parties prepare and file tables summarizing their testimony and evidence, and provided specific guidance for the content of these tables.  The TTAB instructed the parties to include in the tables the following information regarding each piece of evidence on which the parties rely:  the source (e.g., petitioner’s first notice of reliance); the TTABVUE entry number; the probative value of the particular facts or testimony; and the Bates number(s).

The TTAB also discouraged the parties from objecting to evidence that would not affect the outcome of the case or have a significant effect on their position or that of their adversary.

Finally, the TTAB assessed and struck all but two of Respondent’s twelve affirmative defenses.  The TTAB specifically precluded Respondent from introducing evidence exclusively associated with the stricken affirmative defenses and from rearguing those issues in any subsequent briefs.

Although the issues discussed at the pretrial conference in this case are limited to the particular facts and procedural circumstances of this case, the TTAB suggested that conducting pretrial conferences, and taking other steps to control cases, may become more common.  It explained that it will be taking a more active role in the pretrial management of cases that the TTAB identifies as having the potential to become “overly contentious” or involve excessive records.

The TTAB’s decision ordering the parties to attend a pretrial conference at the USPTO suggests that the TTAB’s continued movement toward adopting pretrial management rules used by federal district courts.  Moreover, it is clear that the TTAB intends to take a more active role in managing cases in the future.

*Brian Westley is a Summer Associate at Finnegan.