[E-trademarks] Request from INTA Precedential Decisions Task Force

[Carl Oppedahl]

Hello listserv members.  I received an inquiry just now from Jason 
Elster, who is a new member of the e-trademarks listserv. He is a member 
of INTA's Precedential Decisions Task Force.  This task force has a goal 
of substantially increasing the number of precedential decisions issued 
by the Trademark Office’s Trademark Trial and Appeal Board each year.

Members might or might not be familiar with the web page Nomination for 
Designation or De-Designation of PTAB Decisions 
<https://www.uspto.gov/patents/ptab/ptab-decision-nomination>.  This 
submission form allows individuals to nominate any routine decision of 
the Board for designation as precedential or informative.

Jason asked if I thought it would be appropriate for him to post to the 
listserv about this.  And I have encouraged him to do so. I imagine that 
presently he will post something about this topic.

My own personal view is that it would be helpful if more PTAB decisions 
could be precedential.  There have been quite a few times over the years 
when I would happen upon some decision and would wish that I could have 
cited it in some document, and then I would see that the decision has 
been designated non-precedential.

I guess probably nobody likes to come out and say it, but I think that 
there is a rarely-said-out-loud feeling with some trademark 
practitioners that one worries that when a panel issues a decision that 
is designated non-precedential, this might somehow count as license or 
permission for the author of the decision to ... not flesh out the 
reasoning quite as fully or cogently.  And that if more panels were to 
crank out more decisions with the idea and expectation that they would 
be precedential, the result would be a larger number of higher-quality 
decisions that would work to everybody's benefit.

Having said all of this, I certainly do recognize that some fraction of 
cases necessarily get decided based purely on a narrow set of facts, 
where there is just no reason to think that any later case would have 
its own set of facts that would track so closely as to benefit from the 
earlier case being precedential. To say this another way, when a case is 
tied to some very narrow set of facts, I am prepared to cut some slack 
for the author of the decision.  I am prepared to accept the decision 
being a document that does not get the benefit of the fine-tuning that 
would go into a precedential decision.

What I do not mean to do here is to speak for Jason.  I am sure he has 
his own goals in terms of inviting practitioners to make use of the form 
and how to describe why he thinks it would be a good idea.


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