New Decision Analyzes GDPR Obligations In TTAB Discovery Proceedings

• Published date: 21 December 2021
• Subject Matter: Intellectual Property, Privacy, Data Protection, Trademark
• Law Firm: Taft Stettinius & Hollister
• Author: Elizabeth Baumhart

The US Trademark Trial and Appeal Board has issued a precedential decision regarding the applicability of the board's standard protective order, as well as the applicability of the EU General Data Protection Regulations (GDPR) on board proceedings generally (Intercontinental Exchange Holdings, Inc. v New York Mercantile Exchange, Inc. and Chicago Mercantile Exchange, Inc. v Intercontinental Exchange Holdings, Inc., 2021 USPQ2d 988 (TTAB 2021) [precedential]).

Modification of Standard Protective Order

Pursuant to Section 2.116(g), Chapter 37 of the code of Federal Regulations, the board's standard protective order applies in all inter partes review proceedings unless the parties stipulate to alterations, which must then be approved by the board. Under the standard order, parties may designate sensitive information and documents as "confidential" or "confidential - for attorneys' eyes only" (AEO). The latter category requires parties to restrict access to AEO information to outside counsel only, not in-house counsel or individuals within the businesses themselves.

In this consolidated proceeding, opposer Chicago Mercantile Exchange (CME) moved the board to grant access to information and documents marked as AEO to CME's in-house counsel. In its motion, CME claimed that in-house counsel handled legal issues relating to IP matters only, did not sit in on CME board meetings and did not have any "competitive decision-making authority". Applicant Intercontinental Exchange Holdings, Inc. (ICE) opposed the motion by arguing that CME's in-house counsel had "decision-making authority" and the attorneys oversaw the drafting and negotiating of trademark licensing agreements. ICE alleged that the disclosure of AEO information could benefit CME's counsel in its trademark licensing efforts as it is a known competitor of ICE.

In its order, the board reiterated Federal Circuit court precedent that the "inappropriate release of confidential information can never be fully remedied" and applied the three-element test, which balances whether AEO information may be accessed by in-house counsel.

• Consideration of a party's need for the confidential information in order to adequately prepare its case.
• The harm that disclosure would cause the party submitting the confidential Information.
• The forum's interest in maintaining the confidentiality of the information sought. (Akzo NV v US Int'l Trade Comm'n, 808 F.2d 1471, 1483-84, 1 USPQ2d 1241, 1249 (Federal Circuit 1986).)

The board...