TTAB Standard Protective Order/Agreement
A copy of the new TTAB Board’s Standard Protective Order, effective June 24, 2016, is available below or in pdf or as a text file, and at the USPTO web site (http://www.uspto.gov/sites/default/files/documents/TTAB%20Standard%20Protective%20Order%20-
TBMP 402.02 For proceedings pending or commenced on or after August 31, 2007, the Board’s standard protective order automatically applies to all cases, absent agreement to, and Board approval of, a substitute. 37 CFR § 2.116(g).
Several sections of the TTAB manual cover Standard Protective Orders. Two of the sections, TBMP 120.02 (shown below) and TBMP 412 (browseable text), are included here.
TBMP 120.02 Confidential Materials
Materials filed with the Board under seal pursuant to the Board’s standard protective order, or a
protective agreement signed by the parties, or a protective order entered by the Board or any
court and filed in compliance with TBMP § 412.04, will be kept confidential and will not be
made available for public inspection or copying unless otherwise ordered by the court or the
Board, or unless the party protected by the order voluntarily discloses the matter subject thereto.
[Note 1.] These materials may be inspected only by those individuals who are entitled, under the
terms of the protective order, to have access to the protected information. [Note 2.] See TBMP
§ 412. (Protective Orders), TBMP § 526 (Motion for Protective Order), TBMP § 703.01(p)
(Confidential or Trade Secret Material). To be handled as confidential, and kept out of the
public record, confidential materials must be so designated at the time of filing. Paper or
electronic submissions in Board proceedings which are not properly designated as confidential
will be placed in the Board’s public records, available on the Internet.
Electronic filing using ESTTA is preferred for submissions containing confidential material.
When using ESTTA, the filer should select “CONFIDENTIAL Opposition, Cancellation or
Concurrent Use” under “File Documents in a Board Proceeding.” [Note 3.] Filings made using
this option will not be made available for public viewing, although an entry will be made on the
If a paper submission contains confidential material, it must be submitted under separate cover.
Both the submission and its cover must be marked confidential and must identify the case
number and the parties.
The parties are strongly discouraged from submitting materials which contain the personally
identifiable information of an individual (e.g., account numbers, social security number, home
addresses, and home phone numbers). The parties are also discouraged from submitting
unnecessary information (e.g., payroll) that may lead to identity theft or other fraudulent use of
such information, even where such information concerns a business but may not be addressed in
either the Board's standard protective order or a stipulated protective agreement between the
parties. If such information is embedded in the materials being submitted, such privacy
information is to be redacted.
Except for materials filed under seal pursuant to a protective order or agreement, all Board
proceeding files and exhibits thereto are available for public inspection and copying. Therefore,
only the particular discovery responses, exhibits, deposition transcript pages, or those portions of
a brief, pleading or motion that disclose confidential information should be filed under seal
pursuant to a protective order. [Note 4.] A good practice would be to clearly mark as
“confidential” each page of a submission that contains such matter.
However filed, if a party submits any brief, pleading, motion or other such filing containing
confidential information under seal, the party must also submit for the public record a redacted
version of said papers. [Note 5.]
1. See 37 CFR § 2.116(g) (“The Trademark Trial and Appeal Board’s standard protective order
is applicable during disclosure, discovery and at trial in all opposition, cancellation, interference
and concurrent use registration proceedings, unless the parties, by stipulation approved by the
Board, agree to an alternative order, or a motion by a party to use an alternative order is granted
by the Board. The standard protective order is available at the Office’s Web site, or upon request, a copy will be provided.”).
2. See 37 CFR § 2.27(e); 37 CFR § 2.120(f); 37 CFR § 2.125(e).
3. See http://estta.uspto.gov/filing-
an existing opposition, cancellation, or concurrent use proceeding. Since a notice of opposition
or petition for cancellation provides only notice of a claim and general facts in support of it, there
should rarely, if ever, be occasion to file confidential material with a notice or petition. The
existence of the proceeding itself will not be treated as confidential.
4. See 37 CFR § 2.126(c); Duke University v. Haggar Clothing Co., 54 USPQ2d 1443, 1445 (TTAB 2000).
5. See 37 CFR § 2.126(c).
Opposition/Cancellation/Concurrent Use No.____________________
Plaintiff [insert name]
Defendant [insert name]
TRADEMARK TRIAL AND APPEAL BOARD
STANDARD PROTECTIVE ORDER
Pursuant to Trademark Rule 2.116(g), this standard protective order (“Order”) is automatically imposed on this Board proceeding. It is not necessary for the parties and/or their attorneys to sign copies of the Order for it to take effect or for the parties to be bound by its terms during the course of the proceeding. However, it may be desirable to obtain such signatures to assure the parties that they have created a contract which will survive this Board proceeding and that they may have a remedy for breach of that contract which occurs after the conclusion of this Board case. Notwithstanding, any determination of whether the Order establishes contractual rights or is enforceable outside of this Board proceeding is for the appropriate judicial forum to decide should such matter come before it.
Information disclosed by any party or non-
Parties may use this Order as the entirety of their agreement or may use it as a template from which they may fashion a modified agreement, subject to Board approval.
This Order shall govern any information produced in this Board proceeding and designated pursuant to this Order, including all designated discovery depositions, all designated testimony depositions and declarations and affidavits, all designated deposition exhibits and testimony exhibits, interrogatory answers, admissions, documents and other discovery and testimony materials, whether produced informally, as part of mandatory disclosures, or in response to interrogatories, requests for admissions, requests for production of documents or other methods of discovery.
This Order shall also govern any designated information produced or provided in this Board proceeding pursuant to required disclosures under any applicable federal procedural rule or Board rule and any supplementary disclosures thereto.
This Order shall apply to the parties and to any nonparty from whom discovery or testimony may be sought in connection with this proceeding and who desires the protection of this Order.
TERMS OF ORDER
1) Classes of Protected Information.
The Rules of Practice in Trademark Cases provide that all inter partes proceeding files, as well as the involved registration and application files, are open to public inspection. The terms of this Order are not to be used to undermine public access to such files. When appropriate, however, a party or witness, on its own or through its attorney, may seek to protect the confidentiality of information by employing one of the following designations.
Confidential – Attorneys’ Eyes Only (Trade Secret/Commercially Sensitive) -
2) Information Not to Be Designated as Protected.
Information may not be designated as subject to any form of protection if it (a) is, or becomes, public knowledge, as shown by publicly available writings, other than through violation of the terms of this Order; (b) is acquired by a non-
3) Access to Protected Information.
The provisions of this Order regarding access to protected information are subject to modification by written agreement of the parties or their attorneys and approved by the Board.
Administrative Trademark Judges, Board attorneys, and other employees of the Board are bound to honor the parties' designations of information as protected, except as otherwise required by law, but are not required to sign forms acknowledging the terms and existence of this Order. Court reporters, stenographers, video technicians or others who may be employed by the parties or their attorneys to perform services incidental to this proceeding will be bound only to the extent that the parties or their attorneys make it a condition of employment or obtain agreements from such individuals, in accordance with the provisions of paragraph 4.
• Parties are defined as including individuals, officers of corporations, partners of partnerships, members of limited liability companies/corporations, and management employees of any type of business organization.
• Attorneys for parties are defined as including in-
• Independent experts or consultants include individuals retained by a party for purposes related to prosecution or defense of the proceeding but who are not current or former employees, officers, members, directors, or partners of any party, affiliates of any party, or the attorneys of any party or its affiliates, or competitors to any party, or employees or consultants of such competitors with respect to the subject matter of the proceeding.
Parties and their attorneys shall have access to information designated as confidential, subject to any agreed exceptions.
Outside counsel, but not in-
Independent experts or consultants, non-
4) Disclosure to Any Individual.
Prior to disclosure of protected information by any party or its attorney to any individual not already provided access to such information by the terms of this Order, the individual shall be informed of the existence of this Order and provided with a copy to read. The individual will then be required to certify in writing that the order has been read and understood and that the terms shall be binding on the individual. No individual shall receive any protected information until the party or attorney proposing to disclose the information has received the signed certification from the individual. A form for such certification is attached to this Order. See Exhibit A. The party or attorney receiving the completed form shall retain the original.
5) Disclosure to Independent Experts or Consultants.
In addition to meeting the requirements of paragraph 4, any party or attorney proposing to share disclosed information with an independent expert or consultant must also notify the party who designated the information as protected. Notification must be personally served or forwarded by certified mail, return receipt requested, or by email, and shall provide notice of the name, address, occupation and professional background of the expert or independent consultant.
The party or its attorney receiving the notice shall have ten (10) business days to object to disclosure to the expert or independent consultant. If objection is made, then the parties must negotiate the issue in good faith before raising the issue before the Board. If the parties are unable to settle their dispute, then it shall be the obligation of the party or attorney proposing disclosure to bring the matter before the Board with an explanation of the need for disclosure and a report on the efforts the parties have made to settle their dispute. The party objecting to disclosure will be expected to respond with its arguments against disclosure or its objections will be deemed waived.
6) Responses to Written Discovery.
Responses to interrogatories under Federal Rule 33 and requests for admissions under Federal Rule 36 (whether in a paper or electronic form) and which the responding party reasonably believes to contain protected information shall be prominently stamped or marked with the appropriate designation from paragraph 1. Any inadvertent disclosure without appropriate designation shall be remedied as soon as the disclosing party learns of its error, by informing all adverse parties, in writing, of the error. The parties should inform the Board only if necessary because of the filing of protected information not in accordance with the provisions of paragraph 12.
7) Production of Documents.
If a party responds to requests for production under Federal Rule 34 by making copies and forwarding the copies to the inquiring party, including ESI, then the copies shall be prominently stamped or marked, as necessary, with the appropriate designation from paragraph 1. If the responding party makes documents available for inspection and copying by the inquiring party, all documents shall be considered protected during the course of inspection. After the inquiring party informs the responding party what documents are to be copied, the responding party will be responsible for prominently stamping or marking the copies with the appropriate designation from paragraph 1.
Protected documents produced during an oral discovery deposition or a discovery deposition upon written questions, or offered into evidence during an oral testimony deposition, a testimony deposition upon written questions, or testimony submitted by affidavit or declaration, shall be noted appropriately as such by the producing or offering party at the outset of any discussion of the document or information contained in the document. In addition, the documents must be prominently stamped or marked with the appropriate designation.
During discussion of any non-
The transcript of any deposition (whether for discovery or testimony purposes) and all exhibits or attachments shall be considered protected for 30 days following the date of service of the transcript by the party that took the deposition. During that 30-
9) Filing Notices of Reliance.
When a party or its attorney files a notice of reliance during the party's testimony period, the party or attorney is bound to honor designations made by the adverse party or attorney, or non-
When filing briefs, memoranda, affidavits and/or declarations in support of a motion, or briefs at final hearing, the portions of these filings that discuss protected information, whether information of the filing party, or any adverse party, or any non-
11) Handling of Protected Information.
Disclosure of information protected under the terms of this Order is intended only to facilitate the prosecution or defense of this Board proceeding. The recipient of any protected information disclosed in accordance with the terms of this Order is obligated to maintain the confidentiality of the information and shall exercise reasonable care in handling, storing, using, disseminating, retaining, returning, and destroying the information.
12) Redaction; Filing Material with the Board.
When a party or attorney must file protected information with the Board, or a motion or final brief that discusses such information, the protected information or portion of the motion/brief discussing the same should be redacted from the remainder. A rule of reasonableness should dictate how redaction is effected.
Redaction can entail merely covering or omitting a portion of a page of material when it is copied or printed in anticipation of filing but can also entail the more extreme measure of simply filing the entire page under seal as one that contains primarily confidential material. If only a sentence or short paragraph of a page of material is confidential, covering that material when the page is copied, or omitting the material, would be appropriate.
In contrast, if most of the material on the page is confidential, then filing the entire page under seal would be more reasonable, even if some small quantity of non-
Protected information, and pleadings, briefs or memoranda that reproduce, discuss or paraphrase such information, shall be filed with the Board under seal. If filed by mail, the envelopes or containers shall be prominently stamped or marked with a legend in substantially the following form:
This envelope contains documents or information that are subject to a protective order or agreement. The confidentiality of the material is to be maintained and the envelope is not to be opened, or the contents revealed to any individual, except by order of the Board.
If filed electronically by employing the Board’s Electronic System for Trademark Trial and Appeals (“ESTTA”), the filing party should comply with the redaction guidelines set forth above and click the “confidential filing” option prior to transmitting the documents electronically. In all situations, a redacted copy must also be filed for public view.
13) Acceptance of Information; Inadvertent Disclosure.
Acceptance by a party or its attorney of information disclosed under designation as protected shall not constitute an admission that the information is, in fact, entitled to protection. Inadvertent disclosure of information which the disclosing party intended to designate as protected shall not constitute waiver of any right to claim the information as protected upon discovery of the error. In the event a party inadvertently files a document containing protected information, such party should immediately inform the Board and the Board will mark such document as confidential and will require the party to resubmit a redacted, publicly available copy of such document.
If, through inadvertence, a producing party provides any “CONFIDENTIAL” or “CONFIDENTIAL -
If a disclosing party through inadvertence produces or provides discovery material that it believes is subject to a claim of attorney-
14) Challenges to Designations of Information as Protected.
If the parties or their attorneys disagree as to whether certain information should be protected, they are obligated to negotiate in good faith regarding the designation by the disclosing party. If the parties are unable to resolve their differences, the party challenging the designation may make a motion before the Board seeking a determination of the status of the information.
A challenge to the designation of information as protected must be made substantially contemporaneous with the designation, or as soon as practicable after the basis for challenge is known. When a challenge is made long after a designation of information as protected, the challenging party will be expected to show why it could not have made the challenge at an earlier time. The party designating information as protected will, when its designation is timely challenged, bear the ultimate burden of proving that the information should be protected.
15) Consequences of Unchallenged Overdesignations.
In the event the Board determines that a party has improperly overdesignated information as protected, and a party has not contested the overdesignation, the Board, on its own initiative, may (1) disregard the overdesignation for those matters which are improperly designated; (2) issue an order to show cause why the submission should not be made open to public view; (3) require a party to reduce redactions by redesignating as non-
16) Board's Jurisdiction; Handling of Materials after Termination.
The Board's jurisdiction over the parties and their attorneys ends when this proceeding is terminated. A proceeding is terminated only after a final order is entered and either all appellate proceedings have been resolved or the time for filing an appeal has passed without filing of any appeal.
The parties may agree that archival copies of evidence, memoranda, discovery deposition transcripts, testimony deposition transcripts, affidavits, declarations, and briefs may be retained solely by outside counsel, subject to compliance with agreed safeguards. Otherwise, within 30 days after the final termination of this proceeding, each party and their attorneys, as well as any other persons subject to the terms of this agreement, shall return to each disclosing party (1) all materials and documents, including ESI, containing protected information, (2) all copies, summaries, and abstracts thereof, and (3) all other materials, memoranda or documents embodying data concerning said material, including all copies provided pursuant to paragraphs 4 and 5 of this Order. In the alternative, the disclosing party or its attorney may make a written request that such materials be destroyed rather than returned. Additionally, parties to this agreement are precluded from disclosing orally or in writing any protected information provided during the course of a Board proceeding once this Board proceeding is terminated.
17) Other Rights of the Parties and Attorneys.
This Order shall not preclude the parties or their attorneys from making any applicable claims of privilege during discovery or at trial. Nor shall this Order preclude the filing of any motion with the Board for relief from a particular provision of this Order or for additional protections not provided by this Order.
By Agreement of the Following:
[insert signature date]
[print or type name and title of individual signing for defendant]
[print or type name and law firm of attorney for defendant]
[print or type name and title of individual signing for plaintiff]
[print or type name and law firm of attorney for plaintiff]
CERTIFICATE OF COMPLIANCE
Protected information, in whole or in part, and the information contained therein which has been produced by the parties to this Board proceeding pursuant to the attached Standard Protective Order has been disclosed to me, and by signing this Certificate of Compliance, I acknowledge and agree that I have read, understand, and am subject to the provisions of the Protective Order and will not disclose such protected information in whole or in part or in any form or the information contained therein to any person, corporation, partnership, firm, governmental agency or association other than those persons who are authorized under the Standard Protective Order to have access to such information.
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