TTAB Timelines Frustrate Counsel Despite Workarounds

Managing Intellectual Property interviewed Finnegan partner Douglas Rettew regarding the Trademark Trial and Appeal Board’s (TTAB) timeline when handling trademark oppositions. On average, the pendency time for TTAB trials was 13.6 weeks in the fourth quarter of FY 2022, while it was 12.7 weeks in the third quarter. In Rettew’s view, “That’s not terrible.”

Rettew is working on a case that was fully briefed by November 2021, but still doesn’t have a ruling. Pointing out that district courts often consider a wider variety of factors, he explained, “A federal court could rule, for example, that there’s no likelihood of confusion on the basis that one company uses a house mark in connection with the contested brand. But the TTAB wouldn’t take this issue into account so long as the application didn’t contain the house mark.” 

When commenting about the TTAB’s requirement for parties to conduct discovery conferences, which include discussions about settlement possibilities, Rettew said these requirements help parties determine whether settlements are viable and pave the way for further discussions. He notes, though, that cases don’t usually settle at the discovery conference stage.