Gilead and IBM thank the United States Patent and Trademark Office (“Office”) for the opportunity to comment on the TTAB Standard Protective Order (“SPO”). We appreciate that the current SPO includes a designation for “Attorney’s Eyes Only” that excludes in-house counsel. We think that the outside counsel only designation is especially important in trademark proceedings.
Gilead and IBM believe that “Attorney’s Eyes Only” protection which excludes in-house counsel is necessary to protect a party’s trade secret/confidential information adequately and therefore the SPO should continue to include this category as a matter of course without amendment by the parties or the TTAB. We further suggest a tiered level of confidentiality that includes: (i) a tier for outside counsel eyes only, precluding in-house counsel, particularly with respect to trade secrets and commercially sensitive information, (ii) a tier for attorneys’ eyes only that includes in-house counsel, and (iii) a general confidentiality tier that permits in-house counsel to share with their in-house business clients and external non-legal advisors with a need-to-know in order to advise.
Unlike other administrative proceedings before the Office, trade secret/commercially sensitive information is frequently at issue in trademark disputes. In determining whether two trademarks are likely to be confused, the TTAB will look at whether the goods/services at issue are similar or dissimilar, the similarity or dissimilarity of established, likely-to-continue trade channels and the market interfaces between the applicant and the owner of the prior mark. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Information regarding markets, customers and expansion strategy, all of which are commercially sensitive planning information, are uniquely relevant to a trademark dispute. Since trademark disputes often occur between parties operating in the same industry, the commercially sensitive information/documents may be sought by a competitor or an entity which will benefit from seeing the information. Companies fiercely guard their marketing plans, which are usually closely tied to their secret R&D and product plans, and other commercially sensitive information such as customer lists. It would be an unfair risk to companies to require them to disclose such information to their competitors' in-house counsel, who work closely with and advise competitor marketing departments.
Current federal case law holds that in-house counsel may be appropriately restricted from reviewing trade secret information. Restrictions on allowing in-house counsel to review trade secret information are designed to address the concern that access to that information would put counsel in the "untenable position" of either refusing his employer’s legal advice or revealing the sensitive information. Intel Corp. v. VIA Techs., Inc., 198 F.R.D. 525, 530-31 (N.D. Cal. 2000) (citing Brown Bag, 960 F.2d at 1472). “Because counsel is unable to ‘lock-up trade secrets in [her] mind,’ the terms of a protective order and the good-faith assurances of an ethical counsel are insufficient on their own to safeguard the inadvertent disclosure of trade secrets.” Adobe Sys. v. Davachi, 2011 U.S. Dist. LEXIS 71296 (N.D. Cal. 2011) (denying access to in-house counsel) citing Brown Bag Software v. Symantec Corp., 960 F.2d 1465, 1471 (9th Cir. 1992) (denying access to in-house counsel); Intel Corp. v. VIA Techs., Inc., 198 F.R.D. 525, 530-31 (N.D. Cal. 2000) (denying access to in-house counsel); Pinterest, Inc. v. Pintrips Inc., 2014 U.S. Dist. LEXIS 124337 (N.D. Cal. 2014) (denying access to in-house counsel). “Regardless of an occasional statement of some courts to the contrary, in house counsel are subject to pressures different from those which outside counsel face, if only that their own economic well-being is inextricably bound up with their employer’s.” Autotech Techs. Ltd. P’ship v. Automationdirect.com, Inc., 237 F.R.D. 405, 408 (N.D. Ill. 2006) citing In re PPG Industries, Inc., 944 F.2d 912 (Fed.Cir.1991).
The most recent TTAB case law also confirms that in-house counsel may properly be prevented from accessing trade secret/commercially sensitive information. In Georgia-Pacific Corp. v. Solo Cup Co., 80 U.S.P.Q.2d 1950 (Trademark Trial & App. Bd. Aug. 24, 2006), the Board refused to allow in-house counsel to access Attorneys’ Eyes Only information, even though: (1) the company had over 55,000 employees; (2) counsel was a member of a 100-person legal department; (3) counsel had “key knowledge of the industry and the nature of the products;” (4) counsel promised to keep the information on secure floors; (5) counsel promised to store digital copies of the information on a separate, secure server; and (6) outside counsel submitted a letter stating that in-house counsel did not participate in business strategy. Ultimately, because legal advice in an in-house setting involves so many different considerations, the Board was not convinced that counsel would be able to put up a mental wall to ensure that no trade secret information would factor into the analysis.
The current SPO provides a party with appropriate protection for trade secret/commercially sensitive information without need for an amendment. Currently, the SPO permits the designation of material as for outside attorneys’ eyes only without need for amendment of the protective order. Designation of information as confidential is up to a particular party, and is not required by the SPO. The parties must use reasonable, good-faith confidentiality designations, and they must be prepared to demonstrate that those designations were justified. See TBMP § 412.01(a); 37 C.F.R. § 2.116(g). Therefore, a party who must produce trade secret/commercially sensitive information in response to a discovery request or in prosecuting its case has adequate protection without recourse to a motion to the TTAB.
A protective order that includes a tier which precludes in-house counsel does not unduly impede cooperation between a party's legal team or settlement discussions. To the extent that the parties agree, they are free to stipulate to modifications of the SPO. Parties may also work together concerning re-designation of the confidential status of a particular document.
The burden of demonstrating a need for protection of trade secret/commercially sensitive information should not change. To the extent that the parties disagree about the use of the “Attorney’s Eyes Only” designation in the existing SPO, it is the party seeking access to confidential information who must make the motion and bears the burden of demonstrating either that the information is not trade secret or commercially sensitive or that in-house counsel is not involved in relevant commercial decision-making. To adequately protect trade secret/ commercially sensitive information, this burden should not change, and this designation should be available to a party as a matter of course.
Practice in contested administrative trademark proceedings in the U.S. is already unique in that discovery is vastly more expansive (and nearly equivalent to full litigation discovery) than in other jurisdictions around the world. We are concerned that providing attorneys - in-house and outside counsel - an all access pass to the trade secrets and commercially sensitive information of their competitors would only encourage trademark proceedings (possibly frivolous) before the TTAB for the fishing expedition that such administrative litigation would enable.
Gilead and IBM thank the Office for providing an opportunity to submit comments on the TTAB Standard Protective Order. IBM and Gilead support the SPO which advances an intellectual property protection mechanism particularly important for the type of evidence relevant in trademark disputes. Trade secret/commercially sensitive information is frequently at issue in trademark disputes before the TTAB. In house trademark counsel work closely with and advise their corporate marketing departments. Corporations are careful to prevent competitor marketing departments from accessing their trade secret/commercially sensitive information. Therefore, we appreciate that the SPO includes a designation for “Attorney’s Eyes Only” that excludes in-house counsel. Under the SPO, the burden of demonstrating either that information is not trade secret or commercially sensitive or that in-house counsel is not involved in relevant commercial decision-making appropriately remains with the party seeking access to the confidential information.
Head of Trademarks
Associate General Counsel
Intellectual Property Law
Gilead Sciences, Inc.
Chief Trademark Counsel
Associate General Counsel
Intellectual Property Law