ACC Member Weighs In On Use Of ACR

On November 29, 2012, the Trademark Trial and Appeal Board hosted an invitation-only roundtable discussion on Accelerated Case Resolution (ACR).  The goals of the roundtable were to glean learnings from those using ACR and to discuss how ACR might be refined as a tool for reducing cost and improving efficiency.

The Chair of ACC’s Intellectual Property Committee, Monica Winghart, participated in the roundtable and shared the views of mark owners and applicants.  This roundtable marks the second year that ACC Advocacy has worked with Chief Judge Rodgers of the TTAB to facilitate member participation.

What ACR Is

“Although there are many variations of ACR, one basic goal is to give parties a vehicle to shorten discovery and the time to resolution by agreeing on an abridged discovery plan and focusing on the dispositive questions of the dispute,” shared Ms. Winghart.

Growing in use, ACR is an alternative to the traditional TTAB inter partes proceeding that involves full discovery, trial and briefing.  It often takes the form of a summary bench trial or cross motions for summary judgment with evidentiary submissions.

The Tension in Using ACR 

The roundtable discussion made clear that in-house attorneys, in particular, appreciate being able to navigate legal disputes faster, more cheaply, and with greater certainty.  However, in-house attorneys and their outside counsel are also interested in using pendency time and the costs of TTAB proceedings as potential leverage points.  And therein lies the tension:  to make ACR work and have universal appeal, one has to commit to engage in ACR even without fully knowing the particular facts of a situation.

This tension and the fact-dependency of determining whether to use ACR have contributed to a proliferation of ACR models and ACR-style efficiencies.  Curiously, the helpfulness of these variations may hinge on one’s vantage point as in-house or outside counsel.

Possible Improvements to ACR

For some in-house counsel, fewer ACR variations are better.  They would prefer a limited universe of choices, with a fast-track option.  From their vantage point, quicker resolution can be more important than lots of process options.  “There are business ramifications to waiting for a decision.  As in-house counsel, we need to be able to guide our clients and quickly advise whether they can use or extend a particular mark,” explained Ms. Winghart.

By contrast, some outside counsel prefer to have many choices to customize an ACR proceeding so that they can advise their clients according to the facts of each particular matter.  “Outside counsel may be less willing to leave anything on the table by agreeing to structured ACR variations.  They prefer to have a full arsenal of strategies to help them position their clients for a win,” stated Ms. Winghart.

All roundtable participants agreed, however, that if parties using ACR or ACR-style efficiencies still engage in full discovery, there is less likely to be the cost savings that ACR is intended to achieve.  “Currently there is not sufficient data to answer the skepticism that some have about using ACR,” said Ms. Winghart.

The challenge is determining how to limit discovery under ACR.  Because the parties can customize their ACR proceeding to a great degree, there is much variability in what ACR can look like and what attorneys think it should look like. The roundtable participants all agreed that additional clarity and guidance could be helpful.

As for whether ACR could become an automatic opt-in, where parties must show a cause to opt-out, that does not seem likely for now.  Roundtable participants raised a number of questions about automatic opt-in, including concerns related to due process and the discretion that an administrative law judge would apply in granting an opt-out.

Recommendations for ACR

The roundtable concluded with the TTAB agreeing to take under advisement the following discussion points on ACR:

  1. Have companies sign a pledge to use ACR, as this might mitigate concerns that even positioning ACR as a solution would be viewed as gamesmanship.
  2. Have the TTAB offer more interaction and intervention with parties considering ACR by setting structure and giving more definition to the process.
  3. Allow increased interlocutory weigh-in at the outset, midpoint, and conclusion of discovery, as well as at the time of any dispositive motions.
  4. Use ACR on bifurcated issues or on dispositive issues first before opening discovery on remaining issues.
  5. Create a playbook and provide templates for the top few ACR variations.
  6. Make available more facts on ACR, including more templates of discovery stipulations and statistics regarding time to resolution, cost of proceedings and ultimate outcomes.

ACC Advocacy thanks Monica Winghart for her participation at the roundtable and Kilpatrick, Townsend & Stockton for providing information on ACR use and practice.  Other participants included the American Bar Association Intellectual Property Section, the American Intellectual Property Law Association, the International Trademark Association, the Intellectual Property Owners Association, and the Trademark Public Advisory Committee.