11 Feb No major changes in new Trademark Trial and Appeal Board standard protective order
As of February 5, 2020, the Trademark Trial and Appeal Board (“TTAB”) has an updated standard protective order (“SPO”) The new SPO makes no substantive changes to its predecessor. As explained briefly below, this leaves two levels of confidentiality protection of information and documents in TTAB proceedings: Confidential or Confidential – For Attorneys’ Eyes Only. The latter applies to trade secret/commercially sensitive materials.
Many brand managers and others who oversee protection of trademark portfolios may know that the TTAB is an administrative board that hears and decides adversary proceedings. It’s docket includes oppositions (when a party opposes a pending trademark after publication in the Official Gazette ) and cancellations (when a party seeks to cancel an existing trademark registration).
Under Trademark Rule 2.116(g), a standard protective order is automatically imposed in TTAB proceedings. Parties or their attorneys need not sign copies of the Order for the parties to be bound by its terms. A protective order is akin to a non-disclosure agreement (“NDA”). It aims to preserve the confidentiality of information disclosed in the proceeding, including in depositions and in response to interrogatories, requests for admissions, requests for production of documents or other methods of discovery.
Under the standard order’s terms, material designated “Attorneys’ Eyes Only” (“AEO”) is available for review only by a party’s outside counsel. Thus, even if the company has its own legal department, AEO material cannot be disclosed to such in-house counsel. A key reason for this is that allowing in-house counsel to review trade secret information could put the company lawyer under tremendous economic pressure to reveal it (a tremendous breach of his or her professional ethics) to the employer at the risk of losing his or her job.
Trade secret and other sensitive information is frequently at issue in trademark disputes. In determining whether two trademarks are likely to be confused, the TTAB will look at the similarity of goods/services at issue, as well as trade channels of the applicant and the owner of the opposing mark. Information such as customer lists, marketing plans, and growth strategies could be extremely valuable if disclosed to a competitor. Other than in a trademark dispute, there may be no other source for obtaining it.
If there is a legitimate need for disclosure of AEO information to in-house counsel, it can be met by a motion. The company seeking it can try to show that the information is either not actually a trade secret or commercially sensitive. Or the company can establish that its in-house counsel is not involved in making relevant commercial decisions (although he or she could still presumably be pressured to disclose it to key decision makers).
The TTAB recently completed consideration of comments on whether to amend the standard order to remove the exclusion of in-house counsel or keep it in place. This week, they announced a new standard rule which does not change the distinction between AEO and other protected information. We agree that the distinction is a necessary step to protect a party’s trade secrets adequately.