Trademark Trial and Appeal Board (TTAB) Proceedings – Oppositions and Cancellations
How do you defend yourself when faced with a Notice of Opposition or Petition for Cancellation?
You basically have three options:
- Do Nothing. Let your trademark protection lapse and likely lose any legal protection for your brand.
- Fight Back On Your Own. To do this effectively you will need to learn how to properly execute the Federal Rules of Civil Procedure.
- Hire An Attorney. You can hire any attorney to either represent you in the proceeding or consult you how to represent yourself (an affordable alternative).
Watch my video below where I break down for you the most useful tactics that I have learned with over 15 years of experience as an attorney defending clients in Trademark Oppositions and Petitions to Cancel.
First here is a quick overview of the most important points in the trademark opposition process in the form of a infographic.
Infograph: The Trademark Opposition Process
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In this quick video I explain step-by-step the process for handling a trademark opposition and getting your trademark back on track.
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Did that give you a little more information on TTAB Proceedings and Trademark Oppositions?
Exciting stuff, huh?
Well, maybe not for you, but it is for trademark attorneys who represent opposers and love to use various strategies and tactics to frustrate you and try to win.
TTAB proceedings are similar to federal litigation lawsuits that follow the Federal Rules of Civil Procedure so you (or your representative) have to know how to comply with these rules to effectively defend yourself.
For the reasons above, I highly recommend that you hire competent legal representation, or at least obtain legal advice so that you can effectively represent yourself.
If you choose not to retain counsel, then you should at least file an answer to the notice or the other side automatically wins.
Below are some more frequently asked questions (FAQ) about TTAB Proceedings.
What Is The Trademark Trial and Appeal Board (TTAB)?
The TTAB is an administrative board that hears and decides adversary proceedings between two parties.
A) Oppositions, which are proceedings where a party opposes your trademark application after it is published for opposition.
B) Cancellations, which are proceedings where a party seeks to cancel your existing trademark registration.
The Board is authorized to determine your right to register a trademark with the federal government.
But they are not authorized to decide whether you have the right to use a trademark, just whether you have the right to register it.
What Is A TTAB Opposition Proceeding?
An TTAB Opposition proceeding occurs when a party files a Notice of Opposition during your application’s Opposition Period, which is when the USPTO publishes your application in its Official Gazette after it gives your application its internal blessing.
In general, by a party filing this notice, they are taking the position that even though the USPTO does not have a problem with your application, that party does because approving your mark for registration would cause a conflict with their existing mark.
The most common claim is that the existence of both marks in public would likely confuse people as to the source of the good or service.
What Is A TTAB Cancellation Proceeding?
A Cancellation proceeding occurs after your mark is registered. Yes, even after your mark is registered there is still a chance that someone can come along and attempt to cancel your registration.
Common claims include likelihood of confusion, an issue with the registrant’s ownership, or the registrant is no longer using the mark (abandonment).
Who Can Oppose My Trademark Application?
Unfortunately, anyone who believes that they may be harmed by your trademark if it is registered can oppose your application.
It’s very hard to disprove an opposer early in a TTAB Proceeding because the initial stages are more about collecting information (i.e., pleadings, disclosures, discovery).
A) Petitioner, The person (or business) filing the Petition to Cancel
B) Registrant, The person (or business) seeking the trademark and being opposed.
Why Would Someone Want To Oppose My Trademark Application?
Some oppositions are legitimate. The opposer believes that the registration of your mark may weaken their current registration.
However, in some cases the opposers are just people or companies who think that they can bully you into giving up your trademark rights because you don’t know any better.
Many times they are just rolling the dice to see if you will fail to formally answer the notice, which means an automatic win for them (whether their allegations were true or not).
Don’t wimp out before you understand your options!
What Are Some Common Reasons My Trademark Can Be Opposed?
The most common reason a party will oppose a trademark filing is they feel the new filing will have a high likelihood of confusion.
Other common reasons are:
The mark is disparging or hurts their reputation.
The mark suggests a false connection with the opposer.
The mark is scandalous in some way.
There are many more but this is just a small list of common reasons.
What is An Extension of Time To Oppose?
This is pretty much what it sounds like. If someone wants to file an opposition but it needs more time to file then it will file with the TTAB a request to extend its time to oppose.
There are guidelines for how many extensions will be granted and how long the extension will be, but as long as the opposer timely files a request TTAB will grant a first extension.
A first request of thirty (30) days will be granted on request (no charge), without a showing of cause. Longer time periods will require showing good cause and paying a fee.
Can I Reach A Trademark Opposition Settlement Agreement?
If you as the trademark applicant lose the trademark opposition then your application will be cancelled and you will not be able to use the trademark.
On the other hand if the opposer loses they will not be able to stop your application from going through and of course they will not be happy with the outcome.
Maybe there is some middle ground to compromise?
Every situation is different so this is not always possible but in some cases you can come to an agreement that both parties can live with.
What Are My Options If I Receive a Notice or Petition?
I’m glad you asked. That must mean you want to fight for your mark! I have put together another post that specifically addresses this question. Just click on this link HERE.
I hope that you found this overview helpful!
If you have general questions about TTAB Proceedings send an email to: email@example.com.
The contents of this page are for informational purposes only and may not be relied on as legal or professional advice.
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