WHAT'S YOUR STORY? EVERY FAMOUS MARK HAS ONE: PERSUASION IN TRADEMARK OPPOSITION BRIEFS.

• Author: Hays, Candace

1. Introduction

   A key contention of legal writing scholarship is that the legal resolution is rooted in storytelling. (1) The law consists of an endless telling and retelling of stories. clients tell stories to their lawyers, who must figure out how to frame their client's narrative into a legal context. Lawyers retell their clients' stories to judges using pleadings, motions, and legal briefs. Judges and administrators retell these stories in the form of an opinion or verdict.

   Storytelling in the legal context is an important element of persuasion. For the purpose of this comment, legal storytelling is defined as the use of fiction-writing techniques and elements to craft a non-fictional account of a client's story. (2) These elements or "basic building blocks" (3) include theme, character, conflict, resolution, organization, plot, and point of view. (4) Current legal writing scholarship generally applies these elements to the practice of law, or specific areas of law such as criminal law, personal injury law, civil rights law, etc. However, this type of scholarship applied to other areas of practice, such as intellectual property law, is limited. In Intellectual Property ("IP") practice, this legal writing scholarship is usually limited to patent litigation due to its inherently technical and complex concepts. (5) Other areas of practice in IP, such as trademark law, are excluded from this literature. Given trademark law's exclusion from legal writing scholarship, this type of scholarship is needed.

   This comment will address common issues in the fact sections of trademark opposition briefs, and discuss how storytelling elements can improve persuasion in these briefs. An opposition is an inter partes proceeding that occurs before the Trademark Trial and Appeal Board ("TTAB"). The process allows any interested party to seek a remedy prior to the registration of a mark; the interested party or "opposer" files an action challenging the application of a mark if the party believes he or she will be harmed by the mark's registration. (6) The trademark opposition process raises the stakes for the registration of a mark for competing forces of both the opposer and applicant. In high-stakes litigation, both parties must employ their skills of persuasion to obtain the desired outcome. In an opposition, the parties get this chance with the trademark opposition trial brief. Trademark practitioners rarely appear in person before the TTAB, so the trial brief often serves as a party's sole opportunity to present its narrative of the facts and the legal principles supporting its position. (7) However, the narrative within the trial briefs misses the mark. The facts are presented as a collection of facts rather than a story that contains facts. As a result, the Introduction and Statement of Facts sections turn into a lackluster compilation of facts about a party's mark. The inclusion of storytelling elements and techniques will improve both persuasion and advocacy in trademark opposition briefs.

   Initially, this comment will discuss the overall importance of legal storytelling and will present common storytelling elements that are often employed in the legal writing discipline. The second section will briefly discuss the challenges of storytelling in IP cases and the importance of expanding legal writing scholarship in IP litigation. The third section will examine the opposition proceeding and its related procedure, the primary types of claims raised in an opposition proceeding, and end with an assessment of opposition briefs.

1. Legal Storytelling Generally

   First, what is a story? Stories are commonly defined as an account of something that happens; and stories usually contain a beginning, middle, and an end. (8) This definition is sufficient, but legal storytelling goes a little further than the common story definition because of the boundaries and limitations placed on legal storytellers. (9) For the purpose of this comment, legal storytelling is defined as the use of fiction-writing techniques and elements to craft a nonfictional account of a client's story. (10) Legal storytelling is important because a legal dispute is a clash of competing stories. Each party presents its narrative hoping to create a reaction in the factfinder that is favorable to its clients' position. (11)

   Legal storytelling has been popular among legal writing scholars for some time. (12) But its popularity is growing within the legal profession. Judges are addressing the importance of telling stories within a brief, regardless of the subject matter. Supreme Court Chief Justice John Roberts stated, "[e]very lawsuit is a story ... [even] if it's about a dry contract interpretation ... no matter how dry it is, something's going on that got you to this point." (13) Empirical data from a limited study also suggest that legal professionals prefer briefs with a storytelling format. (14) Professor Kenneth Chestek conducted a small study with a diverse group of legal professionals--made up of appellate judges, appellate practitioners, law clerks, law professors, and court staff attorneys--to decide which sample briefs were more persuasive: briefs written in a classical logical format or briefs written with more of story format. (15) The results of the study illustrated that professionals collectively found story briefs more persuasive. (16)

   To write a compelling story in a legal brief, scholars recommend that brief writers consider several important elements: setting, theme, character, conflict, plot, and point of view or perspective. (17) This comment will only discuss two of the elements: theme and character.

   1. Traditional Storytelling Elements in Legal Writing

   Theme and character are considered two of the most important storytelling elements. (18) In literature, theme is defined as the moral of the story. (19) In a legal brief, the same idea applies, but the theme is also the "big idea" that brings the story together. (20) Therefore, it should be straightforward and not complex. Without a theme, a story is just a collection of facts. It gives the story its meaning. (21) The theme helps the judge learn and understand who the client is, what the client needs, why the client acted in a particular way, and why the judge should find in the client's favor. In fact, the theme is not a legal issue at all, but "a commonly held belief or universal truth [that] allows [the writer] to tap into the reader's values and experiences." (22)

   A good story not only contains a theme, but also revolves around characters. (23) The characters are usually the people or personalities who appear in the stories. (24) In fiction writing and novels, the characters' goals are what keep a novel alive. However, this idea is not unique to fiction writing and novels. Legal writing scholars believe the same is true in legal storytelling. (25)

2. Storytelling in IP cases

   Despite the rise in popularity of legal storytelling in the legal profession, legal writing scholarship within the practice of IP law regarding legal storytelling is limited. The limited scholarship focuses more on patent litigation because of its technical and complex concepts. It may seem difficult to tell a compelling story about technical concepts like infringing semiconductors using traditional storytelling elements, and in fact, it is difficult. (26) But difficult does not mean impossible.

   Practitioners recommend several techniques in approaching briefs in patent cases. To start off, practitioners first recommend simplifying the content into straightforward terms, cutting the technical jargon. (27) This will avoid the brief writer appearing condescending. (28) Next, practitioners recommend making the story revolve around people. When it comes to technical and complex concepts in patent law, scholars recommend focusing on the technology from the perspectives of the user and inventor, rather than the components of the technology. (29)

   In a blog post about creating narratives in claim constructions briefs, Attorney steve Hansen recommends that brief writers build a narrative based on the intrinsic evidence. (30) "Create a narrative from the intrinsic evidence by using the claim terms in a manner that is consistent with your constructions and inconsistent with your opponent's constructions." (31) Specifically, the patent holder has the advantage of telling the story of the invention.

   Since legal writing literature currently focuses only on patent law within IP practice, this Comment will increase legal writing scholarship in IP litigation practice.

3. Application of Storytelling to Trademark Opposition Briefs

   Stories told in a trademark opposition differ from the average story told in a tort or criminal law case. While an interesting tale involving people drives the story in a tort or criminal case, the mark drives the story in an opposition. At first glance, one would think that a story would not be possible in a trademark opposition proceeding; however, an opposition is much like any other legal dispute. A conflict has erupted because the opposing plaintiff has interfered and stopped a trademark application during the registration process.

   1. Trademark Opposition Proceeding Generally

      A trademark opposition proceeding is one of four types of inter partes proceedings that occur before the TTAB. (32) If the United States Patent and Trademark Office ("USPTO") determines that a mark is entitled to registration, it publishes the mark in the Official Gazette of the USPTO. Within thirty days of the publication date, interested members of the public may file a petition opposing the USPTO's decision to register the mark. (33) Any interested party may file a petition (or opposition) with the TTAB if the party believes he or she would be damaged by registration of the applicant's mark on the Principal Register. (34) The process is intended to be a "backstop" for the examination process and "remedy oversight or error...