INTA MODEL CASE MANAGEMENT PROCEDURES
Courts & Oppositions Subcommittee
Enforcement Committee
International Trademark Association
I.SCHEDULING/GENERAL MANAGEMENT
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.
II.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.
III.Alternative Dispute Resolution
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:
(a)ownership / validity of the plaintiff’s mark,
(b)similarity of the marks,
(c)similarity of the goods/services,
(d)the extent to which concurrent use, if any, has any bearing on the
case,
(e)priority of registration and/or use,
(f)strength of the plaintiff’s mark,
(g)evidence of actual confusion,
(h)defendant’s intent,
(i)channels of trade in which the goods/services move,
(j)sophistication of the purchasers,
(k)the need for survey evidence to be introduced,
(l)the need for expert testimony to be introduced,
(m)whether a damage award will be sought/necessary,
(n)how costs of the proceeding could be allocated between the parties
Within thirty (30) days of an early neutral evaluation, the parties are encouraged to report the following to the Court:
(a)whether the plaintiff wishes to maintain its case,
(b)whether the defendant wishes to concede the case,
(c)whether the parties can agree on any of the items/issues discussed in ENE, and
(d)whether settlement is possible