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New U.S. trademark manual welcomed by practitioners

The USPTO’s Trademark Trial and Appeal Board (TTAB) has published the long-awaited third edition of its Trademark Board Manual of Procedure (TBMP), to the delight of US trademark owners and practitioners.

The manual was last updated in March 2004. The new version has been anticipated since soon after the 2007 changes to the rules for litigating inter partes trademark registrability proceedings before the TTAB came into effect. While INTA’s USPTO Subcommittee Chair, Anna Manville of Arnold & Porter, noted that the trademark community is “still getting used to” the 2007 rules—which have made Board proceedings a bit more like the civil litigation process—she said that “having a manual that’s up to date is a big help.”   

The third edition supersedes all previous versions of the manual and incorporates the 2007 rules, as well as all statutory changes and new case law since 2006. Previously, trademark practitioners had to visit several sites in order to find up-to-date information. INTA members have been eagerly awaiting the final version of the manual. “It’s a great tool that people have been looking forward to for a long time,” said Manville.

The previous edition of the TBMP could not be easily updated or searched online. The new manual is available on the USPTO website in both pdf and HTML formats, and users can search for terms within the entire manual or by chapter.  

Manville said that the Index of Changes included at the back of the manual is particularly helpful. The index features a chart highlighting differences between the second and third editions by section.  

The preface to the new manual highlights several of the key changes, and in particular emphasizes Accelerated Case Resolution (ACR), which the Board dubs “a more efficient and less costly method of obtaining a decision on the merits, thus holding the potential for savings in party resources.”

As of last year, there had only been a handful of pure ACR cases—fewer than 10 as of April 2010—despite much effort by the USPTO to advertise the process. However, many parties have been choosing to use hybrid versions of ACR instead, such as adopting abbreviated trial schedules in which the discovery process is shortened.

The new TBMP identifies specific instances in which the Board might recommend ACR. While the extensive update may have taken some time, the Board said that “all users of the manual will be well-served by the attention to detail exercised by Administrative Trademark Judge Angela Lykos,” who supervised the project.

Interview: Judge Angela Lykos

USPTO TTAB Administrative Trademark Judge Angela Lykos supervised the revision of the third edition of the TBMP, which began in 2009. She was also the primary drafter of Chapter 400 on discovery, which includes some of the most significant changes. She and the other judges and attorneys who worked on the manual took on the project in addition to their regular case loads, although Lykos has been working on it full time now for more than a year. Once finalized, the manual also had to be reviewed and approved by the Solicitor’s office.

Lykos notes that the new manual was drafted under the presumption that all filings will now be done via the Electronic System for Trademark Trials and Appeals (ESTTA), and that it includes tips on using ESTTA throughout the manual. She also flags the addition of the chapter on Accelerated Case Resolution (ACR) and advice on using ACR throughout the manual as another central change from the second edition.

The new manual is also expected to be updated at least once every six months in order to avoid such a substantial project in the future. “All of the judges and attorneys have put in a tremendous effort,” says Lykos. “It took a group effort for such a major change.”

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