I have another article I wrote specifically on Trademark Oppositions you might find helpful.
FULL TRANSCRIPT OF Video
Hi everybody, and welcome to Lawyers Rock.
Today, I am going to talk about a topic that is very specific, but if you’ve gone through one of these before, or if you are going through one right now, you will appreciate the information I have for you.
I’m talking about TTAB proceedings, which are appeal processes that occur during the trademarking process with the United States Patent and Trademark Office (USPTO). They can occur either after the USPTO green-lights your application for registration, during the opposition period, when third parties can challenge registrations, or a third party can discover your registered trademark and they want to have your registration cancelled!
So what do you do if you get notice that one of these proceedings has been filed against you? We’ll go over that in this post, plus I’ll give you a few helpful tips. Lets Rock!
What Exactly Is a TTAB Proceeding?
There are two types of proceedings before the Board, an ex parte (one party) appeal from denial of a trademark application for registration by an examining attorney, and an inter parties (more than one party) proceeding, primarily oppositions and cancellations. This post focuses on the latter.
TTAB Opposition Proceeding
An Opposition proceeding occurs when a third 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 third party filing this notice, they are taking the position that even though the USPTO does not have a problem with your application, they do because approving your mark for registration would cause a conflict with their 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.
For example, if someone wanted to secure a trademark for their fast food restaurant called McDowell’s (where are my Coming To America fans?), or if someone wanted to secure a trademark for their coffee house called Stars and Bucks, guess who would probably file a Notice of Opposition?
You may be alerted beforehand that someone is going to oppose your mark if you receive a Notice of Extension of Time to Oppose. This is pretty much what it sounds like. If someone wants to file an opposition but they need more time to file then they will file 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 opposing party 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.
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 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).
This can be very detrimental since you have likely started to build your brand. Basically, someone is saying…wait USPTO, this mark should not have been approved and we missed our chance during the Opposition Period. There are a few reasons why a company would file a Petition To Cancel an existing mark.
I have seen it used by corporations as a strategy to stop a competitor. Winning the proceeding is not always the goal. These proceedings are expensive so an evil petitioner may try to just bleed a smaller mark owner dry with legal fees. Sad but true.
What Do You Do When You Receive a TTAB Notice or Petition?
The first thing you really need to do is review the pleading (Notice of Opposition or Petition To Cancel) to understand the claims and issues, and see if they are valid. You will need to consider things like:
- Is your mark really similar to the opposing mark?
- Was the opposing party’s mark used in commerce before yours (i.e., were the goods or services related to the opposing party’s mark sold interstate before your good or service?)
- Are the international classes and/or descriptions of services/goods similar or the same?
There are many things that you should analyze to determine whether the opposing party’s claim is valid.
Some companies file these TTAB proceedings to frustrate you or to see if it will go away. This may be more about business strategy then it is about legal rights, such as an attempt to eliminate competition. You can find out if the filing party has a history of doing this by doing some research.
Next, do not miss your deadlines! You have to understand that the filing party really has nothing to lose until you file your answer to the claim. If you fail to file an Answer then the filing party wins by default.
You can either file an Answer on your own, get advice from an attorney who can help you draft it and then you file it on your own name, or you can hire an attorney who files it on your behalf and becomes the attorney on record for the matter. I strongly advise the latter two…secure counsel in some capacity.
Be aware that these proceedings use the Federal Rules of Civil Procedure, Trademark Law, and Trademark Rules and Procedures so these proceedings can get complicated.
There are pleadings, disclosure requirements, discovery (depositions, interrogatories, requests for production of documents and things, and requests for admission), motions, briefs, and a trial.
Also, determine early whether or not to fight a proceeding! I have seen the gamut…people who have chosen to ignore notices of opposition and they forfeit their application, I have seen people try to defend themselves and get buried by discovery (paperwork) from the filing party’s attorney, and I have seen people get stuck in a fight that lasts 6 or 7 years, which is very costly and leaves the business associated with the mark in limbo.
In my opinion, settling these matters is usually the best solution for both parties, regardless of the stage.
How Do You File and Perform Research?
TTAB proceedings are primarily filed, maintained and viewed online. Documents are filed through the ESTTA system and documents are viewed through the TTABVue system. You may also want to look at prior Decisions by the TTAB.
You obviously filed a trademark application to protect your brand so don’t let the TTAB proceeding just automatically derail all your efforts. Sometimes it is worth fighting for your mark…sometimes the fight is not the best solution for your business as a whole. However, you need to do the analysis to determine that answer.
I hope you find this video helpful. If you have any questions, please leave me a comment or contact me.