Trademark Trial and Appeal Board (TTAB) Proceedings – Oppositions and Cancellations, and USPTO Office Actions
Watch my video below where I break down for you the most useful tactics to implement now that I have learned with over 15 years of experience as an attorney working with Trademarks and specifically trademark oppositions.
First, lets talk about Trademark Trial and Appeal Board (TTAB proceedings). Did you receive a Notice of Opposition from the TTAB regarding your Trademark filing?
What is A Trademark Opposition
A trademark opposition is when you file your trademark application and someone opposes or challenges your filing during the application stage that is called the opposition period.
So now what…? Do you just give up? Of course not! You’re an entrepreneur. We don’t go away without a fight.
Some oppositions are legitimate, but 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? HA!
I. Don’t. Think. So.
Don’t wimp out before you understand your options.
Watch this quick video where I explain step-by-step the process for handling a trademark opposition and getting your trademark back on track.
More Questions? CONTACT US
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 representative. 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 is more information about TTAB proceedings that should be helpful.
What is the Trademark Trial and Appeal Board (TTAB)?
The TTAB is an administrative board that hears and decides adversary proceedings between two parties. This includes oppositions, which are proceedings where a party opposes your trademark application after it is published for opposition, and cancellations, which are proceedings where a party seeks to cancel your existing trademark registration.
An opposition proceeding is initiated by an opposer filing a Notice of Opposition against you, and a cancellation proceeding is initiated by a person filing a Petition For Cancellation against you. Here is a video from the USPTO that will give you a good overview.
What is an Extension of Time To Oppose?
This is pretty much what it sounds like. If someone wants to fie 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, without a showing of cause. Alternatively, a first request of ninety (90) days will be granted upon a showing of good cause.
What if you receive an Office Action?
A less contentious, yet sometimes equally frustrating, matter (if you don’t know how to handle it) is receiving an Office Action from an Examining Attorney. The person who is evaluating your application is called an Examining Attorney. Your Examining Attorney may issue a notice to you that there is an issue to resolve with your application. This notice is officially called an Office Action. Here is a video from the USPTO that will give you a good overview.
Most Examining Attorneys are very helpful and interested in helping you get your application through the process. An Office Action will include the reason why registration is being refused or what requirements must be satisfied. In most cases, you must respond to an Office action within 6 months from the date it is issued or your application will be abandoned.
There are two types of Office actions: non-final and final.
A non-final Office action raises an issue for the first time so you want to respond properly!
A final Office action issues when your response to the prior Office action fails to address or overcome all issues.
If you receive a final Office Action, you must either comply with the requirements or appeal to the Trademark Trial and Appeal Board.
I hope that you found this overview helpful!
If you have general questions about TTAB Proceedings, Office Actions or Trademark Opposition send them to email@example.com.
M.E.T.A.L. Law Group, LLP
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