What is a discovery conference in trademark opposition?

The discovery conference is the first thing the parties must do in a trademark opposition after the answer is filed. The Trademark Trial and Appeal Board (TTAB) requires that the parties discuss specific matters related to the opposition prior to the opening of the discovery period.

How do I prepare for the TTAB Discovery Conference?

Preparing for a TTAB Discovery Conference

  1. Encourage open communications. Far too often, attorneys are quite terse during the discovery conference.
  2. Be respectful. Have the other party articulate its interests in defending or opposing a trademark application.
  3. Prepare for settlement.

What is a discovery conference?

This is the formal process of exchanging information between the parties about the witnesses and evidence they’ll present at trial. Discovery enables the parties to know before the trial begins what evidence may be presented. It is to be used at trial or in preparation for trial.

What is the next step after discovery?

After discovery has concluded, if the case does not settle and is not resolved by a motion for summary disposition or judgment, the case will go to trial. Trial requires extensive preparation on the part of attorneys. In a jury trial, the jury is the fact-finder; in a bench trial, the judge decides the facts.

What can I expect at a discovery hearing?

A discovery hearing is a meeting in a conference room that is recorded and transcribed by a court reporter. We help you prepare for this meeting, which consists of the Defendant’s lawyer asking you a number of questions. We also question the Defendant. A discovery hearing is less formal and more private than a Trial.

Do most cases settle after discovery?

But the usual cases will settle after intensive (and expensive) discovery is concluded, usually a few months before the actual trial, sometimes literally on the steps of the court house or in the first few days of trial if parties are willing to push the settlement envelope as far as they can.

When does the USPTO final rule on TTAB?

Bar information is masked from TTABVUE. Trademark and TTAB fees: The United States Patent and Trademark Office (USPTO) set and adjusted Trademark and Trademark Trial and Appeal Board (TTAB) fees for the first time in nearly three years through its Final Rule, effective January 2, 2021.

What do you need to know about TTAB proceedings?

Interference proceedings, which determine who has priority use over a trademark. This type of proceeding is nearly obsolete. TTAB proceedings are similar to litigation and are governed by some of the same civil procedure rules as federal courts.

Do you have to disclose damage computations under TTAB?

Provided that the parties have not waived initial disclosure, the TTAB requirements essentially mirror those in Federal Rule 26(a)(1). The TTAB does not require disclosure of damage computations or insurance agreements because those are going to be irrelevant to opposition or cancellation proceedings.

Can a trademark be protected by the TTAB?

The only question in any decision is whether a trademark can be protected. The TTAB requires submissions to be filed through its Electronic System for Trademark Trials and Appeals (ESTTA). This system, similar to online federal court filings, is designed to speed up resolution of TTAB cases and eliminate the need for paper documents.

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