Case management procedures report

All information provided by the Courts & Tribunals Subcommittee of the International Trademark Association in this document is provided to the public as a source of general information on trademark and related intellectual property issues. In legal matters, no publication, whether in written or electronic form, can take the place of professional advice given with full knowledge of the specific circumstances of each case and proficiency in the laws of the relevant countries. While efforts have been made to ensure the accuracy of the information in this document, it should not be treated as the basis for formulating business decisions without professional advice. We emphasize that trademark and related intellectual property laws vary from country to country, and between jurisdictions within some countries. The information included in this document will not be relevant or accurate for all countries or states.

The Subcommittee would like to recognize the contributions of the following individuals who led this project during the 2008-9 term (asterisks denote individuals who originated this project during the 2006-2007 committee term) Beth Alquist, Peter Chalk*, Gerard Delile, Todd Deveau*, Tom Donovan, Jim Gumina, Mike Hurst*, Sam Ibrahim, Greg Kaihoi, David Kane*, Ludwig Kouker, Fabrizio Miazzetto, Avi Ordo* and Anthony Trenton*. In addition, the team would like to recognize the contributions of Lloyd Sarginson and Lou Ederer who participated in the early stages of this project during the prior term.

The Subcommittee would like to thank the following individuals who also contributed to parts of this report.

The Model Case Management Procedures project spans approximately three years and represents the end product of a task first identified by the Courts & Tribunals Subcommittee’s first report sent to the Board in 2007. The Subcommittee embarked on this project in order to address several key perceived areas requiring improvement in trademark enforcement matters in courts and tribunals worldwide, namely: 1) reducing litigation costs and other significant litigation burdens for brand owners, 2) reducing the length of time cases remain pending before courts and tribunals, and 3) increasing certainty for brand owners in the enforcement context. Expediting trademark cases, as well as other cases where the injury is continuing, provides important benefits because it tolls the continuing injury at a much earlier date. Expediting also advances important public interests and benefits the consumer in general by more quickly eliminating or reducing confusion in the marketplace that generally results from trademark infringement.

Much consideration and discussion was directed, at the early stages, to the proper calibration of these Model Procedures. On the one hand, proposing specific timelines at each interval of the case was seen as directly addressing the most frequently voiced complaint regarding trademark enforcement matters – the length of time it takes to bring a case to resolution once it is filed. However, as a number of variables may contribute to these extended time periods, depending on the jurisdiction and the tribunal, strict adherence to very prescriptive timelines was seen as outside the realm of what INTA could support in the context of a resolution. On the other hand, proposing more general or idealistic procedures was seen as something that INTA could support as more applicable to a global viewpoint. However, as this path was explored further, it became clear that the procedures being discussed were so general as to have little or no impact in all but the least-developed jurisdictions. Finally, while any set of Model Case Management Procedures can obviously be applied to cases of any type, the Subcommittee was challenged by how specifically to tailor these procedures for trademark cases such that a resolution in this regard could be embraced by INTA. In the end, a compromise approach was taken where the model procedures on which the Subcommittee settled are not so prescriptive as to be fundamentally unattainable in the majority of jurisdictions but still recognize that the desired state – from the brand owner’s perspective – requires that courts and tribunals take a much more active role than perhaps is taken currently. To that end, some “aspirational” time tables were included in the Model Procedures, but only those that the Subcommittee felt were most critical to maintaining forward progress in a given trademark enforcement matter. In addition, the elements of trademark infringement are addressed at various points in an effort to give the parties “mile markers” by which they can gauge the relative merits of their respective cases.

Every case will have its own unique issues and therefore overly restrictive guidelines are disfavored. The goal is to provide guidelines that allow for the effective conduct of trial and at the same time provide the parties with a full opportunity to present their case. The parties are encouraged to do what they can to resolve their disputes without engaging the courts or other tribunals, whenever possible. The Model Procedures present the parties opportunities to enter into voluntary dispute resolution, and they allow the parties flexibility in choosing an ADR mechanism and in its scheduling. Where early neutral evaluation (ENE) is involved it further provides feedback to the parties on the issues and the strengths and weaknesses of their case prior to the trial phase of the trademark dispute.

It has been reported that as many as 95% of all civil cases filed in some courts are resolved without going to trial. Many alternative processes to trial have developed and continue to be developed as alternatives to trial. These alternative processes are typically less formal and less adversarial than trial. The potential advantages of using ADR include savings in time, savings in money, and increased control over the process and the outcome, and increased satisfaction (or at least decreased dissatisfaction) on both sides of the dispute. Further, since ADR can be a less adversarial and hostile way to resolve a dispute, it has the potential for better preserving the relationships between the parties.

The most commonly used ADR processes are mediation, arbitration, neutral evaluation (sometimes referred to as early neutral evaluation), and settlement conferences.

Mediation is a flexible, non-binding dispute resolution procedure in which a neutral third party (the mediator) facilitates negotiations between the parties to help facilitate settlement of their dispute. The mediation process allows the parties to expand traditional settlement discussions and broaden resolution options, often by going beyond the legal issues and dispute. Mediation sessions typically are confidential and structured to help the parties communicate as, for example, in clarifying their understanding of underlying interests and concerns, probing the strengths and weaknesses of legal positions, exploring the consequences of not settling, and generating settlement options. The mediator typically serves as a facilitator and does not issue a decision. Mediation may be particularly useful when parties have a relationship they want to preserve. Mediation can also be effective when emotions may be getting in the way of resolution of the parties’ dispute. Mediation may not be effective if one of the parties is unwilling to cooperate or compromise. Mediation also may not be effective if one of the parties has a significant advantage or leverage over the other.

Arbitration is typically an adjudicatory process in which one or more arbitrators issue a judgment or decision on the merits of the dispute after an expedited, adversarial hearing in which representatives for each party present their cases. The decision is typically non-binding on the parties, though it can be binding. The decision addresses only the disputed issues and attempts to apply legal standards. Either party may reject a non-binding decision and proceed to trial. Arbitration is less formal than a trial, and rules of evidence are often relaxed. Arbitration is often best for cases where the parties want another person to decide the outcome of their dispute for them but would like to avoid the formality, time and expense of a trial, or for purposes of confidentiality. It may also be appropriate for complex matters where the parties want a decision-maker who has training or experience in the subject matter of the dispute. Arbitration may not be appropriate, however, if the parties want to retain control over how their dispute is resolved.

Early neutral evaluation (ENE) is a non-binding ADR process designed to improve case planning and settlement prospects by providing litigants with an early advisory evaluation of the likely court outcome. Case planning and settlement assistance may also be offered during the session, which is typically held before much discovery has been taken. In ENE, a neutral evaluator usually holds a confidential session with the parties and their representatives or counsel early in the litigation to hear both sides of the case. The evaluator typically helps the parties clarify arguments and evidence, identifies strengths and weaknesses of the parties’ positions, and gives the parties a non-binding assessment of the merits of the dispute. The neutral evaluator is often an expert on the subject matter of the dispute. As a result, early neutral evaluation (ENE) may be most appropriate in cases in which there are technical or legal issues which require special expertise to resolve or the only significant issue in the case is the amount of damages. ENE is thought to be widely applicable to many types of civil cases, including complex disputes. ENE may not be appropriate when there are significant personal or emotional barriers to solving the dispute.

Settlement conferences may be either mandatory or voluntary. Typically the parties and their representatives or attorneys meet with a judge or a neutral person to discuss possible settlement of their dispute. The judge or neutral person does not make a decision in the case but assists the parties in evaluating the strengths and weakness of the case and in negotiating a settlement.

For more information on ADR, see generally “ADR and Settlement in the Federal District Courts (A Sourcebook for Judges & Lawyers)”, by Elizabeth Plapinger and Donna Stienstra, a joint project of the Federal Judicial Center and the CPR Institute for Dispute Resolution (1996); see also, “Alternative Dispute Resolution, Options for Resolving Your Dispute”, www.courtinfo.ca.gov/selfhelp/lowcost/documents/adr.pdf. Additional information on meditation can be located on INTA’s website at http://www.inta.org/Mediation/Pages/Mediation.aspx.

The conduct of trials, including trials of trademark cases, will vary greatly in different jurisdictions. Many different factors affect the conduct of trial, including the laws of the jurisdiction (both substantive and evidentiary), the nature of the finder of fact (judge or jury), and the nature of the local practice. Even with that background, steps can be taken to improve the efficiency of trademark trials. These guidelines do not attempt to address pre-trial procedures that may limit issues needed to be addressed at trial, but encourage such procedures to improve the costs, time and effort associated with a trial.

Many cases involving a trademark dispute are not primarily driven by monetary damages; rather, the trademark owner’s goals are to enjoin the infringing activities quickly. An efficient way to proceed, therefore, may be to condense the proceedings as much as possible. For example, the trademark owner in a United States District Court might consider bringing a verified complaint and a motion for preliminary injunction (or equivalent procedure in the jurisdiction), and then seek to have a short discovery period (where applicable), and agree to convert the motion to a permanent injunction hearing. This will have the effect of condensing the pre-trial and trial period—obtaining a judgment quickly—and will avoid having to hold two proceedings—a preliminary injunction hearing and then, later, a trial.

In many cases, it is efficient to separate the trial of the damages case from the liability case. Such a bifurcation may reduce the need for the court to ever hear evidence associated with damages. It is acknowledged that there will be times where it is advantageous for the trademark owner not to seek a bifurcated trial, but it is important that courts and tribunals have the discretion to bifurcate where the efficiencies in doing so and interests of justice would be advanced.

These proposed Model Procedures, in Section I, will be rather uncontroversial in well-developed jurisdictions such as the United States, European Union and Australia (with Australia deserving special recognition, according to our research, for already having enacted a number of progressive case management procedures that both simplify and speed up the litigation and enforcement process) as they tend to acknowledge a lower bar than has already been set. From that standpoint, the Subcommittee perceives no issue with a jurisdiction that elects to legislate beyond the threshold that the Model Procedures seek to establish. Rather, the overall goal of these Model Procedures is to urge those jurisdictions that may fall significantly below the threshold to examine critically their existing case management procedures to determine whether brand owners are really being adequately served in their attempts to protect and enforce their valuable trademark rights.

The subcommittee gathered information on the current procedures and practices in various locations around the globe, which is in Section II: Background Information, infra. The intention was to provide a representative sampling of procedures in certain jurisdictions, but in no way is it intended to be an exhaustive listing of important jurisdictions. We invite supplemental submissions for jurisdictions not covered herein for the benefit of INTA members and interested parties.

The court shall have broad authority to take the necessary steps to effectively manage the case and the parties to move them toward a swift resolution of the matter, either via trial or through settlement.

A court shall set a timetable during which a case must proceed, beginning with the time period immediately after a response to a complaint is filed and running through the beginning of the trial on the merits. Ideally, each case should find a resolution within twenty four (24) months measured from the time a complaint is served until judgment on liability is rendered by the court. The court, in its discretion, may grant the parties’ petition for an extension of any item in the timetable upon a showing of good cause. The aforementioned time table does not apply to cases where preliminary relief is sought, as those cases may proceed more quickly.

Within thirty (30) days after the filing of a response to a complaint (or the filing of a response to any counterclaims, whichever occurs later), unless the parties agree to an extension of time for the purpose of discussing settlement, the parties will convene before the court for a scheduling and case management conference for the purpose of:

(a) allowing the court to expedite the disposition of the action,

(b) establishing early and continuing control over the management of the case,

(c) discouraging wasteful pre-trial activities,

(d) encouraging appropriate preparation of the case for trial, and

(e) facilitating settlement of the case and discussing the parties’ conclusions concerning the use of Alternative Dispute Resolution (see Section C, below).

At the scheduling and case management conference, and taking into consideration the complexity of the matter, the court shall enter a scheduling order or make directions that:

(a) limit the time to join other parties to the proceeding, and file motions,

(b) limit the time and scope of whatever discovery may be permitted under local rule,

(c) propose a plan for dealing with discovery of electronic materials,

(d) set the dates for status conferences between the parties, the final pre-trial conference, and the date of trial

Such a schedule shall not be modified except for good cause.

Ten (10) days prior to the scheduling and case management conference, the parties shall be required to submit:

(a) a short and plain summary of the issues in the case,

(b) their respective, preliminary positions on each issue, specifically, and at minimum:

i. ownership / validity of the plaintiff’s mark,

ii. priority of registration and/or use,

iii. channels of trade in which the goods/services move, and

iv. sophistication of the purchasers

v. significance of concurrent use, if any,

vi. similarity of the marks,

vii. similarity of the goods and/or services,

viii. strength of the plaintiff’s mark,

ix. evidence of actual confusion,

x. defendant’s intent,

xi. plaintiff’s damages, if any

(c) the proof that is required on each issue,

(d) the discovery that will be needed on each issue,

(e) the witnesses that may be called with respect to each issue, and

(f) any potential problems or obstacles foreseen by the parties with respect to any of the foregoing with which the parties may require the court’s assistance or direction.

The submission contemplated herein is not intended to be an exhaustive treatment of the issues in the case. Rather, the submission, not to exceed ten (10) pages, should merely briefly outline each party’s case so that the other party understands the issues to be determined at trial and the other party’s general position of the same. One of the goals of this exercise is to facilitate settlement.

The court is encouraged to designate a magistrate, registrar or similar officer of the court who shall be responsible for:

(a) dealing with procedural issues,

(b) hearing and ruling on procedural and pre-trial motions, and

(c) taking an active role in managing the case

To facilitate the orderly presentation of evidence, the Court should order the parties, no later than thirty (30) days prior to trial, to exchange appropriate information, including:

(a) exhibit lists (with objections),

(b) witness lists (with objections, and including the order in which witnesses are expected to be called),

(c) pretrial papers addressing the anticipated merits of their arguments, and

(d) any other information the court may deem appropriate.

B. Trial Management

Where it is permissible and efficient to do so, a court should bifurcate the liability and damages phases of the trial, with liability being determined first, followed by a hearing on damages.

In cases tried to a jury, the court should employ special verdicts directed to trademark issues in the case, namely:

(a) ownership / validity of the plaintiff’s mark,

(b) priority of registration and/or use,

(c) significance of concurrent use, if any,

(d) defendant’s intent,

(e) likelihood of confusion (considering factors such as the similarity of the marks, similarity of the goods, strength of the plaintiff’s mark, evidence of actual confusion, channels of trade in which the goods/services move, and sophistication of the purchasers)

In cases tried by a judge alone (or a finder of fact who is entitled to question the witness) without a jury, where local rules permit, the court should consider whether it is appropriate to have direct testimony, including expert testimony, presented in written form such as a declaration or affidavit, with the only live testimony being cross examination and rebuttal testimony.

In jury cases, issues relating to the conduct of surveys and the admissibility of the results should be handled by motion prior to trial (i.e., in limine). In cases tried by a judge alone, the court may consider accepting expert reports in lieu of live testimony where appropriate, such as upon agreement of the parties.

In all cases, but especially in cases tried to a jury, courts should encourage the parties to resolve all disputes, or rule on them where possible, in limine, in order to have a more efficient presentation of the evidence.

In cases tried by a judge alone, the court should allow the parties to submit post trial briefing in lieu of closing arguments that put the evidence presented at trial into context and fully explains the relative positions. The timing and extent of the briefing is within the discretion of the court, but such briefing shall, at most, be filed within thirty (30) days of the conclusion of the trial.

Either through motion of the party or on its own accord, consistent with local practice and rules of evidence, the court shall have substantial discretion to limit inappropriate testimony of a witness, e.g., where such testimony is not relevant or otherwise wasteful of the court’s time and resources, in order to allow for the orderly presentation of evidence and to increase the efficiency of the trial.

Consistent with local practice and rules of evidence (including whether such practice is permitted in jury trials or in cases tried by a judge alone), the court shall have the power, during trial, to directly examine and cross examine witnesses on any of the issues identified by the parties at the case management conference or subsequently identified by the parties at a status conference.

The court shall have the authority to rule on interlocutory or preliminary matters to simplify the trial on the merits.

The court shall be entitled, upon motion of the parties, to grant preliminary relief and/or summary judgment.

The parties to a trademark dispute proceeding shall be presented with an opportunity to enter into voluntary dispute resolution as early in the dispute as possible.

Within thirty (30) days of the defendant filing an answer to the complaint, and preferably ten (10) days prior to a scheduling and case management conference with the court under Section A. above, the parties are encouraged to discuss use of alternative dispute resolution (ADR) procedures, such as mediation, arbitration, and early neutral evaluation, and to discuss when they believe ADR would be beneficial to potentially resolving the dispute, e.g.:

(a) prior to or after the discovery phase if one is involved,

(b) after deposition of the plaintiff and the defendant if depositions are to be taken,

(c) at some other time during the dispute proceeding but before the trial phase

If the parties are not able to resolve the dispute early in the dispute proceeding, the parties should be encouraged to attempt ADR later, and potentially at more than one time during the dispute proceeding.

Where lack of information is considered to be an impediment to resolution of the dispute, the parties should be encouraged to discuss the information believed necessary for candid and fruitful ADR discussion and how and when such information can be exchanged.

Where the parties are unable to agree on either the timing of an ADR procedure or the information to be exchanged for such procedure or both, they should submit a report to the Court explaining why they have not been able to reach agreement.

Where the lack of exchange of information is an impediment to an ADR procedure, the Court shall have the discretion to order an exchange of information for the ADR procedure, provided:

(a) the information exchanged is considered confidential to the parties, and

(b) the ADR procedure cannot be used in the trial phase of the trademark dispute (unless the parties agree or the Court otherwise orders).

Where early neutral evaluation (ENE) is desired, the parties are encouraged to further discuss the nature and extent of the evaluation to be provided and whether the evaluation would include the third-party evaluator providing his/her views on the relative merits of the parties’ positions on the following:

1. 
   ownership / validity of the plaintiff’s mark,
   
2. 
   similarity of the marks,
   
3. 
   similarity of the goods/services,
   
4. 
   the extent to which concurrent use, if any, has any bearing on the
   

5. 
   priority of registration and/or use,
   
6. 
   strength of the plaintiff’s mark,
   
7. 
   evidence of actual confusion,
   
8. 
   defendant’s intent,
   
9. 
   channels of trade in which the goods/services move,
   
10. 
    sophistication of the purchasers,
    
11. 
    the need for survey evidence to be introduced,
    
12. 
    the need for expert testimony to be introduced,
    
13. 
    whether a damage award will be sought/necessary,
    
14. 
    how costs of the proceeding could be allocated between the parties
    

1. 
   whether the plaintiff wishes to maintain its case,
   
2. 
   whether the defendant wishes to concede the case,
   
3. 
   whether the parties can agree on any of the items/issues discussed in ENE, and
   
4. 
   whether settlement is possible
   

Inspiration for some of the pre-trial procedures set forth in the resolution comes from the Federal Rules of Civil Procedure in the United States, specifically Rule 16. While at first blush this may strike the Board as requiring it to take a position that is too U.S.-centric, the subcommittee nevertheless felt that culling some general principles from Rule 16 was appropriate. We arrived at this decision bearing in mind the goals of the Model Case Management Procedures, namely, to reduce litigation costs, create efficiencies and cost savings for court and tribunals, and increase certainty for brand owners in the enforcement context. Given that the U.S. legal system is inarguably the legal system most heavily burdened with litigation matters before the courts, we felt it made sense to examine the methods that U.S. practice has implemented in order to address the backlog in its courts. In addition, with respect to time tables recommended, ITC proceedings were acknowledged as setting perhaps the upper limit of speed, as these cases are generally regarded by U.S. practitioners as extremely fast, with cases targeted for completion in 12 to 15 months from the time an investigation is instituted.

The Subcommittee surveyed the various individual rules of the district court judges for the Southern District of New York (“SDNY”) with an eye towards identifying any trends or developments that relate to case management (i.e., the scheduling of the events that will take a case from inception through trial). As discussed below, it would appear that the more recently appointed judges and the recently appointed Chief Judge are advocating more active case management with stricter and more explicit deadlines.

Unlike other district courts (e.g., the Northern District of California with its Standing Order for case management conferences), there are no prescribed court-wide standards for addressing case management issues in the SDNY. Instead, case management issues are left to the individual judges who, if they address the issue at all, will do so in their individual rules (available in .pdf format on the SDNY website at http://www1.nysd.uscourts.gov).

Notably, the majority of judges in the SDNY do not specifically address case management in their individual rules. Rather, the individual rules for a district court judges in the SDNY typically address the following issues:

1. 
   Communications with chambers (i.e., approved methods for contacting the Court);
   
2. 
   Motion practice issues (i.e., the procedures for filing motions with the Court); and
   
3. 
   Pre-trial procedures (i.e., the procedures for preparing and filing of joint pre-trial orders).
   

Some judges, however, do specifically address case management issues in their individual rules. The manner in which these issues are addressed range from noting the various deadlines that counsel are expected to agree upon (see, e.g., Judge Holwell) to templates for proposed scheduling orders that note the various deadlines (see, e.g., Judge Scheindlin) to templates for proposed orders that not only note the various deadlines but also provide outside time limits for the setting of such deadlines (see, e.g., Judge Wood, Judge Castel, and Judge Crotty).

Notably, some of the most aggressive case management requirements are set forth by Judge Wood, who was appointed Chief Judge for the SDNY in 2006. Judge Wood’s proposed scheduling order states that the Court expects that all discovery shall be completed within 90 days of the first scheduling conference. While the proposed order also states that the parties may request additional time by joint letter, such extensions shall not exceed 60 days and any further extensions will be granted only after a showing of good cause that additional time is needed. In addition, Judge Wood is the only judge in the SDNY to set forth a separate template for a discovery plan. The discovery plan template sets forth additional deadlines for 26(a)(1) disclosures, the exchange of document requests, deposition notices, third-party subpoenas, and expert reports, and also requires the parties to indicate who they anticipate deposing.

Further, it does appear that some of the more newly appointed judges are paying greater attention to managing cases with more strict and explicit deadlines. Judge Castel (appointed in 2003) and Judge Crotty (appointed in 2005), for example, have both set forth very similar templates for their case management orders. These templates are unique because the deadlines set forth in them are tied to the date of the initial scheduling conference. For example, while the parties may agree upon a deadline for amendments to the pleadings, the templates for Judge Castel and Judge Crotty provide that “absent exceptional circumstances” such deadline may not exceed 30 days from the date of the case management plan and scheduling order. Similarly, the templates provide that all fact discovery should be completed within 120 days of the scheduling order “unless the Court finds that the case presents unique complexities or other exceptional circumstances.” Thus, the parties are given far less leeway (and far less opportunity for disagreement) in discussing their case management plan.

While strict in setting these outside deadlines, however, the Judge Castel and Judge Crotty templates also allow the parties some flexibility with respect to the interim dates for the exchange of discovery requests. Specifically, while the templates require that the parties set forth deadlines for serving document requests, interrogatories, etc., the parties can agree without application to the Court to extend such deadlines provided that all discovery is completed by the outside deadline for the completion of fact discovery.

With respect to possibility of settlement, the Judge Castel and Judge Crotty templates require counsel to meet face-to-face for at least one hour to discuss settlement within 14 days of the close of fact discovery and also require counsel to discuss an informal exchange of information in aid of early settlement and discuss. Further, counsel must discuss and propose a method for alternate dispute resolution and also recommend a point in time (e.g., within 60 days, after the deposition of plaintiff, after discovery, etc.) for the alternate dispute resolution mechanism to be employed.

It is notable that 3 of the 5 judges appointed to the SDNY in the past six years (Judge Holwell, Judge Castel and Judge Crotty) pay particular attention to case management issues in their individual rules. Given Judge Wood’s similar perspective on active case management, and her role as Chief Judge, it appears likely that active case management will play an increasingly important role for cases in the SDNY.

2. Trademark Trial and Appeal Board (TTAB)

The TTAB has recently instituted its Accelerated Case Resolution (“ACR”) procedure. Parties seeking a final determination of their opposition or cancellation proceeding quickly and without the time and expense are invited to consider ACR. The following is excerpted, in pertinent part, from the TTAB’s ACR notice rule from the Official Gazette.

ACR is a procedure akin to summary judgment in which parties can receive a determination of the claims and defenses in their case promptly, but without the uncertainty of result and delay typically presented by standard summary judgment practice. Parties often file motions for summary judgment in the hope of avoiding a costly trial, but these motions often must be denied because there is at least one material fact in dispute. As a result, these parties spend considerable time and expense on a motion that frequently does not in any way advance the prosecution of the case. Apart from not obtaining a final, appealable decision, they also have not created a record that will save time at trial, because evidence submitted in connection with unsuccessful motions for summary judgment is of record only for consideration of those motions. To be considered at final hearing, any such evidence must be properly introduced in evidence during the appropriate trial period. See, American Meat Institute v. Horace W. Longacre, Inc., 211 USPQ 712, 716 n.2 (TTAB 1981).

In order to take advantage of ACR, the parties must stipulate that, in lieu of trial, the Board can resolve any issues of material fact. If the parties have already filed cross-motions for summary judgment, they may also stipulate that the Board may resolve any issues of material fact and consider the parties’ cross-motions as the parties’ final briefs in the case in lieu of a full trial. Further, where the Board finds a case a good candidate for ACR, it will so inform the parties and seek their agreement to use ACR procedures.

A typical ACR case is anticipated to be one in which the parties are able to stipulate to many facts, or in which each party expects to rely on the testimony of only one or two witnesses and the overall record is not extensive. If the interlocutory attorney agrees that the case is appropriate for ACR, the parties will be given a period of time to complete discovery, if necessary, and to file briefs. If agreement is signaled in the settlement and discovery planning conference, the interlocutory attorney may then tailor the disclosure and discovery schedule to facilitate ACR. If agreement is provided later, i.e., early in discovery, the interlocutory attorney may then issue an order delineating limits on any remaining discovery activities and the schedule for submitting briefs. The parties may include evidence with their briefs, including written disclosures and disclosed documents, and stipulate to facts for the Board to consider. After the briefs are filed, the Board will issue a decision on the merits within 50 days, which will be judicially reviewable as set out in 37 CFR § 2.145.

Under changes to the Trademark Rules for inter partes Board proceedings effective November 1, 2007, parties to such proceedings must conference to discuss claims, defenses, settlement possibilities, and alternatives for disclosures, discovery and trial. When either party to a Board case concludes that resolution of the opposition or cancellation proceeding without extensive discovery or trial periods may be desired, the party should notify the interlocutory attorney. Preferably such notice would be provided during the required settlement and discovery conference to be held within 30 days of the close of pleadings. Then, the possible use of ACR can be discussed during the conference. However, even if the ACR option is not chosen during the conference, the parties may agree to pursue ACR after some disclosures and discovery. In such cases, the interlocutory attorney should be notified no later than two months from the opening of the original discovery period. The further the parties proceed into discovery, the less likely it is that resort to ACR will realize savings of time and resources.

Section 337 of the Tariff Act of 1930 (19 U.S.C. § 1337) declares infringement of certain statutory intellectual property rights and other forms of unfair competition in import trade to be unlawful trade practices. The U.S. International Trade Commission hears cases brought under Section 337. Most Section 337 investigations concern patent and trademark rights.

After a complaint is filed with the Commission, the Office of Unfair Import Investigations (OUII) examines the complaint for sufficiency and recommends to the Commission whether the investigation should proceed. The Commission normally determines whether to institute an investigation within 30 calendar days from filing. If the complaint is accompanied by a motion for temporary relief, the Commission makes its determination on both matters within 35 calendar days from filing.

Investigations are conducted pursuant to the Administrative Procedure Act and the Commission Rules (similar to the Federal Rules of Civil Procedure). An administrative law judge is appointed to handle the case, and the judge issues a set of Ground Rules that provide detailed instructions on, e.g., the time for responding to motions, the method for asserting privilege, the number of copies of exhibits, the use of translators, the procedures for arranging telephone conferences with the judge, etc.

Target dates for completion of the investigation are set by the presiding judge within 45 days of the commencement of an investigation. The judge may set target dates for completion of 15 months or less by his own order. If the Judge seeks to set a longer target date, his Initial Determination in this regard is subject to review by the Commission.

Commission Rules provide that an investigation can be terminated through the parties’ agreement either to settle the case or to submit to alternative dispute resolution.

If the case is not to be settled, a formal evidentiary hearing on the merits is conducted by the administrative law judge, typically 6 to 7 months following the institution of an investigation. Following the hearing, and at least 3 months prior to the target date (4 months prior for investigations going beyond a 15 month target date), the judge issues an Initial Determination that is certified to the Commission along with the evidentiary record.

If preliminary relief is requested with the complaint, the Commission must determine whether to grant the request no later than the 90^th day after the investigation is instituted, or if a case is deemed “complex”, no later than the 150^th day after the investigation is instituted.

The Commission may review and adopt, modify or reverse the Initial Determination or opt not to review it at all. If not reviewed, the Initial Determination becomes the final determination of the Commission. If the Commission determines that § 337 has been violated, it may issue an exclusion order barring entry of the products at issue from the United States. The Commission’s orders become effective within 60 days of issuance and are enforced by the U.S. Customs Service.

B. CANADA

1. Existing Litigation Procedures within the Canadian Federal

Court System

Litigation pertaining to trade-marks is typically a very costly and time-consuming process. The Canadian courts have recently implemented procedures and programs in an attempt to streamline litigation in general, which in effect, has changed the procedures related to trade-mark litigation. The goal has been to make litigation cheaper, quicker, and generally more effective such that it is more accessible to the public, on a practical level. The following explores some of the general procedures and recent streamlining initiatives that are currently in place at the Federal Court level.

The civil procedures for the Federal Court of Canada and the Federal Court of Appeal are governed by the Federal Court Rules. Unless otherwise indicated, all rules referred to below are Federal Court Rules.

The main procedural steps associated with an application at the Federal Court level are summarized within Table 1.

Table 2 provides a summary of the initial procedural stages associated with an action at the Federal Court level.