[gnso-rpm-wg] URS "Loser Pays" proposal vs. TTAB Manual of Procedure

Wed Oct 3 15:14:03 UTC 2018

Susan,

Can you please name those fora that do so?

I believe that George was referencing the PTO as an example in which even in a much more "due processs" oriented proceeding no such cost sharing is permitted.

I agree with him.

Paul

On 10/3/18, 4:55 PM, "gnso-rpm-wg on behalf of Susan Payne" <gnso-rpm-wg-bounces at icann.org on behalf of susan.payne at valideus.com> wrote:

    It's unclear to me what possible relevance the practice of the US trademark office has to this.  Plenty of fora utilise a mechanism whereby the losing party makes a contribution to the costs of the proceedings.

    Susan Payne
    Head of Legal Policy 

    Valideus 
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    -----Original Message-----
    From: gnso-rpm-wg [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of George Kirikos
    Sent: 02 October 2018 15:32
    To: gnso-rpm-wg <gnso-rpm-wg at icann.org>
    Subject: [gnso-rpm-wg] URS "Loser Pays" proposal vs. TTAB Manual of Procedure

    Hi folks,

    In addition to the past concerns expressed re: identity theft, and how it can lead to a denial of service attack if a loser pays policy was adopted for the URS:

    https://mm.icann.org/pipermail/gnso-rpm-wg/2018-September/003291.html

    I did some additional research today on the United States TTAB procedures, and found this:

    https://tmep.uspto.gov/RDMS/TBMP/current#/current/sec-6f6dfee8-51e8-40b5-bc26-3068dffd4dcf.html

    "Trademark Trial and Appeal Board Manual of Procedure
    2018-06

    502.05    Attorneys’ Fees, etc., on Motions

    The Board will not hold any person in contempt, or award attorneys’
    fees, other expenses, or damages to any party. [ Note 1.]

    NOTES:

     1.   37 C.F.R. § 2.127(f); NSM Resources Corp. v. Microsoft Corp.,
    113 USPQ2d 1029, 1035 n.10 (TTAB 2014) (Board cannot assess monetary damage awards); General Mills Inc. v. Fage Dairy Processing Industries SA, 100 USPQ2d 1584, 1591 (TTAB 2011) (no authority to determine damages), judgment set aside on other grounds, 110 USPQ2d 1679 (TTAB
    2014) (non-precedential); Kairos Institute of Sound Healing, LLC v.
    Doolittle Gardens, LLC, 88 USPQ2d 1541, 1544 n.6 (2008); Central Manufacturing Inc. v. Third Millennium Technology Inc., 61 USPQ2d 1210, 1213 (TTAB 2001) ("although the Board does not impose monetary sanctions or award attorneys’ fees or other expenses, the Board has the authority to enter other appropriate sanctions"); Duke University v. Haggar Clothing Co., 54 USPQ2d 1443, 1445 n.3 (TTAB 2000). See also
    37 C.F.R. § 2.120(g)  and 37 C.F.R. § 2.120(h)(1). Note, however, that conduct in violation of the Disciplinary Rules set forth in 37 C.F.R.
    Part 11 may be referred to the Office of Enrollment and Discipline
    (OED) for appropriate action. See 37 C.F.R. § 11.19  et seq."

    So, what is being proposed in regards to "loser pays" doesn't appear to exist in the US TTAB procedures.

    Sincerely,

    George Kirikos
    416-588-0269
    http://www.leap.com/
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