I am reminded over and over again of the striking generosity and collegiality of the trademark practitioners who hang out in the e-Trademarks listserv. Recently one member of the listserv asked (paraphrasing):
Our client’s trademark application received a Lanham Act § 2(d) refusal based on a senior registration which was last renewed in 2012. We hired a trademark investigator who reported being unable to find any evidence that the senior mark is in use. Our client wants to proceed with a Petition to Cancel that registration the Trademark Trial and Appeal Board.
Here’s the question: we have a pretty good report from the investigator regarding lack of web presence, business listings, address follow-up, etc. showing that the mark isn’t in use. Does it make sense to put any of that into the pleading, by factual allegation, attaching an affidavit, or otherwise? I frankly don’t expect a response but anything’s possible.
Many members of the listserv offered comments about how much to put into the Petition. I’ll summarize some of the comments here, and I will add a couple of thoughts. Oh, and if you are a trademark practitioner, and if you have not yet joined the e-Trademarks listserv, what’s your excuse? Maybe you should join.
A first listserv member responded (paraphrasing):
If I think the other side is going to default I just put in enough to state a claim. I figure if they file an Answer, you can amend your Petition, but there’s no reason to show your hand if you don’t have to. That’s just the way I was trained to litigate though, so maybe it’s wrong. I’d be curious to hear what others think.
The background of course is that if you want to know what counts as “just barely good enough” for a Petition to Cancel from the point of view of the law and the rules, the answer is pretty the same as what counts as “just barely good enough” for a Complaint in District Court under the Federal Rules. You have to “state a claim upon which relief can be granted.” On this view, the minimum level of pleading actually required becomes the maximum amount of pleading that the practitioner decides to do.
Related to this is the cost of toner in the printer, and, in rare cases, maybe the value of one’s professional time. If indeed we are absolutely sure the other side is going to default, then why spend a penny on toner in the printer for even one extra word in the Petition if it is not needed? Might as well omit that word. Oh and why spend the professional time putting that word into the document?
A second listserv member responded:
The other school of thought is “shock and awe”. The more you put in initially, the less likely the bad guys are to respond. But bear in mind that if they do respond and you are unable to prove what you alleged, you can look pretty bad!
What this listserv member is talking about, I imagine, is that marginal middle ground where we think it is fairly likely the other side would default but only if they realize they are going to lose. In such a case, serving the client well may call for a “speaking document”, a Petition that goes into quite a lot of detail about how we are not merely the senior user, but we are incredibly senior, and we are senior to the horse you rode in on. And here are some of the exhibits that we would put into evidence if you were to waste everybody’s time by filing an Answer and making us go through all of this. The goal being to make the other side realize that the smartest thing they could do right now is not bother to spend the money to pay counsel to prepare and file an Answer.
(And by the way we all know the “Oppedahl Rule” for predicting which side will lose in a trademark case, right? The Oppedahl Rule is that if you want to predict with high confidence which side would lose, it is actually extremely easy, you just check to see which side is going to run out of lawyer money first. That is the side that will lose. So if the Oppedahl Rule, as applied to our particular case, says the other side will lose, then maybe we toss into our “speaking document” some things that hint around that our side is not the side that will run out of money first.)
As that second listserv member pointed out, one does not want to allege things and then not be able to prove them.
A third listserv member said:
I agree with the first poster. I don’t like to give the other side a roadmap to discovery. Just keep it simple. Use your own discovery demands to bring the other side to its senses.
I imagine this listserv member is thinking about the kind of case where we know perfectly well that the adversary is going to answer. By this we mean the kind of case where the chances of the adversary actively deciding to throw in the towel and allow the case to go to default are nil. In that case, maybe the smartest thing you can do is to say as little as possible in your Petition. Don’t stick your neck out and take positions about things until you absolutely must. Don’t say more than you need to, earlier than you need to.
Okay so what we have so far is that we rub our crystal ball to get a prediction as to whether the other side is going to default:
- If we are absolutely sure they are going to default, do not spend a penny more than is needed.
- If we are absolutely sure they are going to answer, do not reveal an iota of information more than is needed, any earlier than is needed.
- For some cases in the fuzzy middle, maybe file a “speaking document”.
A fourth listserv member reported how well his own crystal ball worked in some recent cases:
It really depends on the facts of each case. Sometimes I file a bare-bones pleading; sometimes I lay out the case. I choose whichever approach I think is best under the circumstances.
I filed one very detailed Petition to Cancel recently where I knew the other side was going to answer because I wanted them to see what was pointed at them — hoping that they would throw in the towel. (They didn’t.) I filed one recently that was bare-bones where I knew that the company was defunct. (And default judgment was eventually entered.)
It looks like maybe his crystal ball served him very well in his second case but not quite so well in his first case.
I will suggest one more factor, however, in favor of making the Petition to Cancel into quite a bit more than a mere Federal Rules notice complaint. Consider that in the TTAB, you get only so much discovery in terms of number of interrogatories, and that in the TTAB, the schedule for discovery is shorter than you think, and that any “normal” District-Court-style discovery where you serve a first round of requests and then do some depositions and then maybe a second round of requests is almost impossible to accomplish in the constrained schedule. Consider too that in the TTAB, you can’t even start the discovery until that 23g conference has happened and the Initial Disclosures have been served upon the adversary, and then you have to wait and wait and wait for the responses to arrive.
With all of this in mind, consider that the Petition itself is an opportunity to do discovery. In your Petition, you can do what amount to dozens or even hundreds of Requests to Admit. In its Answer, the adversary is required to admit or deny each of your allegations.
So for example imagine that your Petition is against the Binford Corporation. In our hypothetical case, you know that you are senior, but you are not absolutely sure how senior you are. You are not quite sure exactly when they really started selling the Binford 2000 Smackmaster hammer. So in your Petition, after quite a few numbered paragraphs of throat-clearing, and some numbered paragraphs explaining why you have standing, and some numbered paragraphs stating a claim upon which relief can be granted, you write:
- 107. On information and belief, the Binford Corporation did not sell any Binford 2000 Smackmaster hammers earlier than January 1, 2019.
- 108. On information and belief, the Binford Corporation did not sell any Binford 2000 Smackmaster hammers earlier than January 1, 2018.
- 109. On information and belief, the Binford Corporation did not sell any Binford 2000 Smackmaster hammers earlier than January 1, 2017.
- 110. On information and belief, the Binford Corporation did not sell any Binford 2000 Smackmaster hammers earlier than January 1, 2016.
And in their Answer, suppose they say:
- 107. Denied.
- 108. Denied.
- 109. Admitted.
- 110. Admitted.
Guess what? You now have a party admission that they had no sales before January 1, 2017. And you have it at answering time. To extract such a party admission by means of normal discovery would require sitting around and waiting months, and probably spending one of your budget of only 75 permitted Interrogatories.
This kind of early discovery has the chance of helping your side in terms of pinning down facts very early in the process — accomplishing discovery at least two months earlier than you would otherwise be able to accomplish it. But it also has the chance of furthering the aim of that second commenter. It forces the other side to face up to the fact that if its true date of first use of the mark was no earlier than January 1, 2017, then maybe it is not worthwhile spending the money to pay counsel to prepare and file an Answer.
What do you think about factors to consider when deciding how much to say in a Petition to Cancel? Please post a comment below.