TTAB Twofer: Board Denies Modification Of SPO, Rules GDPR Does Not Apply In TTAB Proceedings

• Published date: 24 January 2022
• Subject Matter: Intellectual Property, Privacy, Compliance, Data Protection, Trademark
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Author: Daniel S. Stringer

In consolidated proceedings, the Trademark Trial and Appeal Board ("TTAB") considered two discovery-related motions filed by Chicago Mercantile Exchange Inc. and New York Mercantile Exchange, Inc. (collectively, "CME") in an Opposition filed by Intercontinental Exchange Holdings, Inc. ("ICE") to registration of the mark "NYMEX BRENT."

The first motion concerned CME's request to modify the TTAB's Standard Protective Order ("SPO") to allow two CME in-house attorneys to view ICE's confidential information, while the second motion required the TTAB to determine whether the European Union General Data Protection Regulation ("GDPR") applied in TTAB proceedings. In its precedential order, the TTAB employed two different weighing tests to hold that CME's in-house counsel was not permitted to review material designated confidential and that the GDPR does not apply in TTAB proceedings

With respect to the first motion, under the terms of the TTAB's SPO, confidential information may be classified "Attorneys Eyes Only" ("AEO") such that only outside counsel is permitted to review the materials. The SPO is implemented automatically in the TTAB's inter partes cases but may be modified in one of two ways: by stipulation of the parties and approved by the TTAB, or upon motion granted by the TTAB.

Although CME sought to modify the SPO by motion, it asserted that the parties had agreed to a modification of terms and attached to its motion a proposed order containing a redlined version of the disputed language. The proposed order, however, did not include a redline of other changes made to the SPO. Because the proposed amended order did not contain all the modifications to the SPO, the TTAB found that it had not been properly presented for approval.

Turning to the substance of the motion, the TTAB noted that Federal Rule of Procedure 26(c) permits it to shield "a trade secret or other confidential research, development, or commercial information." Nevertheless, the TTAB has wide latitude to modify a protective order for "good cause." Good cause is a fact specific inquiry that requires the movant to describe with particularity the duties and party relationships of the attorneys who will be granted access to AEO. CME fell short in this area in what the TTAB described as a "minimal showing."

In discussing CME's in-house attorneys, the TTAB highlighted a declaration provided by CME that broadly outlined the duties of the two attorneys, but lacked requisite specificity. The TTAB...