[E-trademarks] TTAB precedential decisions (with link to submission form)

[Jason Elster]

Hi everyone,

Carl, thank you for the introduction and welcoming me to the List.

As Carl mentioned, I am a member of INTA's Precedential Decision Task Force, which was formed in response to the dramatically low (and decreasing) number of precedential decisions being issued by TTAB year-over-year. To give some context, TTAB issued 403 precedential decisions in 1974; it issued 238 precedential decisions in 1984; and it issued 12 precedential decisions in 2004. The number of precedential decisions has recently stabilized at around 30 (we got 34 TTAB precedential decisions in 2023 and 30 TTAB precedential decisions in 2024), which represents approximately 6% of TTAB's total decisions. The reduction in precedential decisions is also related to TTAB's reluctance to designate decisions as precedential in cases involving complex factual scenarios and/or multiple legal issues even though such cases are now the norm. INTA is joined by both the ABA and AIPLA in its efforts to substantially and meaningfully increase the number of precedential decisions by TTAB.

The reduced number of precedential decisions is a problem for trademark practitioners and stakeholders because it leaves a dearth of topics for which there is no precedent or where the most recent citable TTAB decision is decades old. While there is nothing wrong with citing to "mature" precedent for legal principles and concepts, those principles and concepts were not interpreted in the context of current technology and commercial practices and often fall short of providing the guidance and clarity needed by today's clients and practitioners. And that's a "best case" scenario; in many situations, there simply are no precedential decision addressing modern technologies, regulatory schemes, or commercial/consumer relationships, leaving practitioners and examining attorneys to rely on non-binding judicial decisions, which creates further inefficiencies and uncertainties in TTAB outcomes.

In response to INTA's and other's efforts to reverse this trend, TTAB now provides a form<https://www.uspto.gov/trademarks/trademark-trial-and-appeal-board/ttab-decision-nomination> for the public to nominate any non-precedential decision for redesignation as precedential. If this issue resonates with you, please consider using the form<https://www.uspto.gov/trademarks/trademark-trial-and-appeal-board/ttab-decision-nomination> to submit nominations for any TTAB decision that you believe should be reconsidered for precedential treatment. TTAB will review the submission and decide whether to redesignate the decision based on if it:


  *   Establishes, alters, modifies or clarifies a rule of law or a matter of agency policy;
  *   Reinforces existing law or policy by demonstrating its application to a factual record different from those confronted previously but likely to arise again so that it would be instructive in other cases; or
  *   Involves a legal or factual issue of significant interest or substantial importance to the public generally or to trademark owners or practitioners specifically.

The form<https://www.uspto.gov/trademarks/trademark-trial-and-appeal-board/ttab-decision-nomination> is incredibly short and simple to complete, and, while not a perfect solution, it is the best method for the public to communicate to TTAB which issues deserve precedential treatment. In case the hyperlinks don't work, here is the full link to access the form: https://www.uspto.gov/trademarks/trademark-trial-and-appeal-board/ttab-decision-nomination.

David, thank you for providing information regarding the constitutional issues raised by agencies like TTAB adopting precedential decision making; I look forward to reviewing those materials. For the time being, however, TTAB has made no indication that it intends to abandon its precedential decision-making process and therefore we all have an interest in making that process more productive and efficient.

On behalf of the INTA Precedential Decision Task Force, thank you for your time and attention to this important issue.

Best regards,

Jason
[cid:image001.jpg at 01DB7189.04853AA0]
Jason Elster
Elster & McGrady LLC

Phone: +1 (312) 515-5565
Email: jason at elstermcgrady.com<mailto:jason at elstermcgrady.com>
www.elstermcgrady.com<http://www.elstermcgrady.com/>

3847 N. Lincoln Avenue
Second Floor
Chicago, IL 60613

LinkedIn: www.linkedin.com/in/jasonelster<http://www.linkedin.com/in/jasonelster>


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