TTAB Trademark

TTAB Ex Parte Appeal to Review Final Decision by an Examining Attorney Refusing to Register a Trademark

enrico1999 — Thu, 22 Mar 2012 13:53:52 +0000

The Trademark Trial and Appeal Board (TTAB) not only handles inter partes proceedings, such as trademark oppositions and trademark cancellations, it also is responsible for handling an appeal of a final refusal to register a trademark. An appeal is typically based upon a substantive finding of a likelihood of confusion (Section 2(f)) or mere descriptiveness (Section 2(e)(1)) refusal by the examining attorney. A Notice of Appeal must be filed within six (6) months after the mailing date of the final refusal. The applicant must also pay the filing fee, which is currently $100 per international class.

Once an appeal is filed, the applicant must argue, based upon the record, why the USPTO examining attorney was wrong and why the applied for trademark or service mark should be registered. This is typically done in a brief, but an oral argument at a hearing may also be requested.

A recent precedential decision from the TTAB, and one involving the Michigan-based Grand Hotel, located in Mackinac Island, provides a good example of the kinds of issues raised on appeal and how the TTAB may decide. In the appeal, In re Hartz Hotel Services, Inc., Serial No. 76692673 (March 19, 2012) [precedential], the TTAB reversed a Section 2(d) refusal that was based upon a likelihood of confusion between the registered mark GRAND HOTEL and the applied for mark GRAND HOTEL NYC. In doing so, the TTAB recognized that the GRAND HOTEL mark could not be attacked as being merely descriptive since it was entitled to a presumption of validity as a registered, incontestable mark, but ultimately concluded that the term “Grand” was relatively weak. Based upon this determination, coupled with the fact that the term “Hotel” was disclaimed, the TTAB found that the addition of the geographic indicator of NYC was enough to distinguish the marks from one another and avoid a likelihood of consumer confusion. The applicant relied upon third party registrations and third party use of the term “Grand” in successfully overcoming the refusal.

The important lessons to be gleaned from this TTAB appeal decision are as follows:

1. Just because one owns a registered trademark, and that registered trademark forms the basis for a likelihood of confusion refusal from the USPTO examining attorney, an applicant may be able to establish the relative weakness of the mark en route to successfully registering its own mark.

2. Third party trademark registrations and third party trademark uses are strong evidence in a TTAB appeal when attempting to show the relative weakness of a mark, which is the most important factor in the likelihood of confusion test and analysis.

3. It is important to police third party usage of your trademark or service mark in an effort to minimize the number of other uses and registrations that could ultimately weaken your own mark.

TTAB trademark matters like this one reinforce many important principles underlying both the trademark application process as well as the trademark maintenance best practices. While the GRAND HOTEL mark is still a registered trademark and subject to both protection and enforcement, this decision highlights its weaknesses and jeopardizes the registrant’s ability to successfully maintain its exclusive right to use the GRAND HOTEL mark in connection with hotel services, especially where there are minor differences between it and other marks. A trademark attorney can help you maintain the strength of your mark and, alternatively, help your application proceed to registration, even if via a TTAB appeal.

Trademark Opposition Threat Letter

enrico1999 — Fri, 18 Mar 2011 13:44:20 +0000

Sometimes it is called a threat letter, other times called a cease and desist letter, and sometimes even referred to as a notice letter. Name aside, a letter claiming trademark infringement and threatening to file a Notice of Opposition to a pending trademark application with the United States Patent and Trademark Office (USPTO) can not be overlooked. The threat of a trademark opposition may be short-lived, since the trademark opposition period is only 30 days (unless an opposition extension is secured), but if acted upon, it can derail any hope of securing a trademark registration. In fact, a successful trademark opposition will cause the Trademark Trial and Appeal Board (TTAB) to prevent your trademark application from being registered. This means no registered R symbol, no presumptions, and none of the benefits inherent in an trademark registration. If you received a trademark opposition threat letter, you need to consult with a trademark opposition attorney who can assess your defenses and analyze your chances of success. If you believe a trademark application infringes your trademark, you should also consult with a trademark opposition attorney in order to understand both the procedural and strategic steps necessary to successfully file and prevail in a trademark opposition.

What to do after losing a Trademark Opposition

enrico1999 — Tue, 08 Mar 2011 19:30:05 +0000

Just because you lose a trademark opposition proceeding does not mean you are out of options. In fact, The U.S. Trademark Act, namely 15 U.S.C. 1071, governs appeals from a trademark opposition decision to a court of law. In particular, 15 U.S.C. 1071(a) states, in relevant part, that any “party to an opposition proceeding . . . who is dissatisfied with the decision of the Director or Trademark Trial and Appeal Board (TTAB), may appeal to the United States Court of Appeals for the Federal Circuit.” Any such party unhappy with the results of the opposition proceeding must recognize that proceeding under 15 U.S.C. 1071(a) means she is waiving her right to proceed under 15 U.S.C. 1071(b). It does allow the United States Court of Appeals for the Federal Circuit to review the decision of the opposition proceeding and issue a mandate and opinion.

Proceeding under subsection (a) is not without risk. The adverse party to the proceeding under subsection (a) has twenty (20) days to elect to have the matter proceed under subsection (b). 15 U.S.C. 1071(b) allows for a remedy by a civil action. Thus, while subsection (a) is typically an ex parte proceeding, subsection (b) is the more traditional plaintiff versus defendant civil litigation.

Regardless, the lesson here is that if you lose a trademark opposition proceeding, you still may use the courts to successfully oppose a trademark or successfully overcome a previously sustained opposition to your trademark application. A trademark opposition attorney should explain these options and allow you to make an educated decision as to whether to take the trademark opposition beyond the TTAB into the United States Court of Appeal for the Federal Circuit.

TTAB Trademark Attorneys Learn From Other TTAB Decisions

enrico1999 — Tue, 01 Feb 2011 14:58:11 +0000

Each year the TTAB decides trademark opposition and trademark cancellation proceedings. These TTAB decisions are all readily available, although not all of them are precedential. Regardless, they offer insight into how the TTAB views particular issues. As such, it is critical for TTAB attorneys to understanding the latest decisions as it pertains to trademark oppositions and trademark cancellations.

One of the best resources for doing so has been, and continues to be, The TTABlog®. Recently, this resource has posted “The Top Ten TTAB decisions of 2010.” These TTAB decisions cover various topics that become important when trying to determine whether a trademark will be successfully registered or maintained. In the event that you are subject to a trademark opposition or a trademark cancellation, it will be critical for your TTAB attorney to understand these decisions. Alternatively, should you wish to file a trademark opposition or a trademark cancellation, understanding prior TTAB decisions will help you determine your best strategic approach and the likelihood of success.

A Trademark Opposition May Be Your Only Choice

enrico1999 — Mon, 31 Jan 2011 14:04:40 +0000

Usually one who believes a pending trademark application or registered trademark infringes her trademark rights has the option to seek relief via either a United States Federal District Court or through the Trademark Trial and Appeal Board (TTAB). In these scenarios, the TTAB may be more appealing because it generally is less costly, is less time intensive, allows for an easier dismissal by the plaintiff should negotiations resolve the issue. On the other hand, a District Court can issue an order to enjoin any further use of the trademark, award financial relief including payment of costs and expenses, and allows a jury.

Unfortunately, trademark application that is filed based upon a bona fide intent to use it, commonly referred to as an intent to use trademark, is typically not subject to a lawsuit in a District Court. This is true where no use in interstate commerce has occurred. Therefore, your only course or relief at the time would likely be a trademark opposition proceeding in front of the TTAB. This limited option also holds true in the event that a trademark applicant seeks to expand its previously established trademark rights in a foreign country via the USPTO, despite not having made a use in the United States. Therefore, while a plaintiff seeking to protect her trademark rights typically has options as to how to redress the alleged infringement, a trademark opposition proceeding may be the only immediate option in the situations identified above.

You should contact a trademark opposition attorney and seek advice before deciding whether to pursue your claim in District Court or in the TTAB.

Trademark Opposition Versus Trademark Cancellation: How to Know Which Applies

enrico1999 — Mon, 31 Jan 2011 13:58:23 +0000

The Trademark Trial and Appeal Board (TTAB) is the administrative body that decides trademark oppositions and trademark cancellations. A trademark opposition is appropriate when a third party wishes to oppose the registration of the a pending trademark application. A trademark cancellation is appropriate when a third party wishes to petition to cancel a registered trademark. Thus, one must first determine whether the trademark is simply a pending application or a registered trademark.

To determine whether a trademark is pending or registered, you can access the trademark record via the Trademark Electronic Search System (TESS) of the United States Patent and Trademark Office (USPTO). A pending trademark application will only have a Serial Number. A registered trademark will have both a Serial Number and a Registration Number. Moreover, a registered trademark will have a Registration Date.

Thus, once you have determined that you need to do something about this other trademark, it will be imperative for you to be able to identify whether you can file an opposition or a cancellation proceeding. A trademark attorney can help you navigate both a trademark opposition and a trademark cancellation.

Trademark Opposition, Cancellation Proceedings at the TTAB

enrico1999 — Mon, 14 Sep 2009 15:25:48 +0000

Trademark Trial & Appeal Board Attorneys: The Trademark Trial and Appeal Board (TTAB) is an administrative body that handles proceedings to decide United States Patent and Trademark Office trademark matters. Specifically, the TTAB handles proceedings that may include appeals from the USPTO, denials of trademark registration, to current use proceedings, opposition proceedings, and trademark cancellations. TTAB decisions can be appealed to a United States District Court or directly to the United States Court of Appeals for the Federal circuit.

Play Show: Traverse Legal Radio – Brian Hall discusses Trademark Opposition, Cancellation, and the TTAB

Traverse Legal, PLC

ANNOUNCER: Today’s program is brought to you by Traverse Legal. A law firm specializing in internet law, domain disputes, and technology company representation. That’s Traverse Legal www.traverselegal.com. Welcome to the Traverse Legal Radio tech spotlight. Now here’s your host Damien Allen.

DAMIEN ALLEN: Good afternoon and welcome to Traverse Legal Radio. My name is Damien Allen in the studio and today we’re speaking with Brian Hall. Brian Hall’s an attorney with Traverse Legal PLC. Brian’s practice focuses on trademark matters including trademark clearances and registrations, opposition and cancellation proceedings in front of the TTAB, licensing issues and federal court litigation. Brian also regularly handles domain dispute resolutions, internet law matters, and related business representation matters. Good afternoon Brian. How are you doing?

BRIAN HALL: Doing great. Glad to be here Damien.

DAMIEN: Well today we’re talking about trademark oppositions, trademark cancellations in front of the TTAB. Well, I guess the first question should be, what’s the TTAB?

BRIAN: Well, the TTAB is what is known as the Trademark Trial and Appeal Board. Which is an administrative body that handles proceedings to decide United States Patent and Trademark Office trademark matters. Specifically, the TTAB handles proceedings that may include appeals from the USPTO, denials of trademark registration, to current use proceedings, opposition proceedings, and trademark cancellations, like you mention at the outset. TTAB decisions do not necessarily have to be final, but those TTAB decisions can be appealed to a United States District Court or directly to the United States Court of Appeals for the Federal circuit.

DAMIEN: So, when else would I encounter dealings with the TTAB?

BRIAN: There’s really four different instances where someone would run into the TTAB. The first is if you’re the applicant of a USPTO trademark and the examining attorney denies registration. In that certain situation you can appeal that denial of registration to the TTAB. These matters usually concern where the mark qualifies as a distinctive trademark or whether indeed the mark creates a likelihood of confusion with a pending or registered USPTO mark. The second instance a concurrent use proceeding occurs when two parties agree that their respective marks can only be used in a certain geographic location in such a way that no consumer confusion will result by allowing for that limited coexistence of the trademarks themselves. The final two instances are really what I want to talk about here today and that’s trademark opposition and trademark cancellation. Just to give a factual situation either you have applied for a trademark with the USPTO, or actually own one, and the trademark application or registration becomes subject to a TTAB proceeding. In that case you are essentially the respondent which is much like a defendant in a lawsuit. In the alternative you take issue with another entities USPTO trademark application or registration itself and you want to ensure that the trademark is not registered. These last two situations are really what you would find yourself either looking to file an opposition or cancellation proceeding or having to respond to one.

DAMIEN: Well, let’s talk about trademark opposition from the TTAB. What is trademark opposition?

BRIAN: Let me set the stage with some information about the lifecycle of a trademark and a trademark filing with the USPTO. Once a trademark is filed it’s assigned to an examining attorney who then reviews the application and if everything looks good to go the mark is then published for opposition for a 30 day period. It’s during this 30 day period that anybody who has an interest can institute a trademark opposition by filing what is known as a Notice of Opposition with the TTAB within that 30 day period. It’s important to note that you can file for an extension of time to oppose a particular trademark and then file the actual Notice of Opposition within that time period which can be anywhere between 60 and 90 days thereafter, but regardless the action must be taken within that initial 30 day opposition period. And when you look at filing a trademark opposition in front of the TTAB there’s several different bases for which you can oppose that particular mark. For example, if you’re a prior user of that mark, or something confusingly similar, that you believe will create a likelihood of consumer confusion you can oppose the mark. If you believe the impending mark is generic or descriptive or fails to function as a trademark you can file an opposition, fraud etc. Other ways that provide a basis for filing an opposition. And ultimately it’s just important to keep in mind that a trademark opposition in front of the TTAB is much like litigation. Once that Notice of Opposition is filed a scheduling order will detail when such items as: discovery, briefs, hearings, and other things are to occur.

DAMIEN: How is a trademark opposition different from a trademark cancellation when you’re going in front of the TTAB?

BRIAN: A trademark opposition pertains to a pending application for a USPTO trademark. So, like I said before the trademark is filed and it’s assigned a serial number, but it’s not registered until it goes through that opposition period. If you look at a trademark cancellation proceeding that pertains to a registered United Stated Patent and Trademark Office trademark. The main difference is really the time period during which a Petition to Cancel, which is the document that pertains to a trademark cancellation would be filed. While an opposition must be filed once again within that 30 day time period. A trademark cancellation proceeding can be instituted any time after registration, but the important thing to keep in mind there is that in a cancellation proceeding a trademark owner, since they do have a registered trademark, registered USPTO trademark, they get presumptions that an applicant with a pending trademark does not. Namely because they have the registered trademark. So, it is this reason really that I always stress to my clients the importance of monitoring trademark applications and being able to oppose within that 30 day opposition period, rather than having to file a petition to cancel a trademark.

DAMIEN: How long does it take a trademark opposition or trademark cancellation proceeding to take?

BRIAN: Once the Notice of Opposition or Petition to Cancel is actually filed with the TTAB, which I will note costs $300 plus whatever attorneys fees are involved, the timelines really can vary. The process is much like trademark litigation and can take up to 18 months or sometimes longer. Recently, the TTAB has instituted what they call ACR which stands for Accelerated Case Resolution and really what this is it’s an alternative route for a shorter time period during which the proceeding will last and ultimately a decision will be issued. For example, if the parties agree to the ACR a decision can be made usually within 50 days of filing the briefs that pertain to that TTAB proceeding.

DAMIEN: Well, I think the most important question at this point then is: is this something I can do on my own? Or do I need a trademark attorney?

BRIAN: A TTAB trademark proceeding requires acute knowledge of trademark procedure and rules. Including, for example: Federal Rules of Civil Procedure. A trademark attorney who has handled TTAB opposition proceedings or TTAB cancellation proceedings will know these procedures and rules and help the individual or entity not make a mistake based off of them. I always recommend that someone consults with a trademark attorney prior to instituting any TTAB action and I definitely recommend that person, or entity, speak with a trademark attorney should it receive notification that a TTAB proceeding has been issued against them or they’re pending a registered USPTO trademark.

DAMIEN: Indeed. Thank you very much for joining us today Brian and sharing all of this information with us.

BRIAN: Definitely, Damien. I appreciate it.

DAMIEN: We’ve been speaking with Brian Hall of Traverse Legal PLC, discussing trademark oppositions and trademark cancellations from the TTAB. You can find Brian Hall and the entire team of Traverse Legal on the web at www.traverselegal.com. Thank you very much for joining us today. I’m Damien Allen in the studio. Everyone have a great afternoon.

ANNOUNCER: This net cast is powered by Vertio.net. Vertio.net optimizing your brain and web presence worldwide. Vertio.net be heard, be seen, be found.

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Trademark Trial & Appeal Board (TTAB) Attorneys: Speak with an experienced trademark attorney: Contact a Traverse Legal attorney today or call (866) 936.7447.

Trademark Attorneys Handling Trademark Oppositions and Trademark Cancellations in Front of the TTAB

enrico1999 — Fri, 04 Sep 2009 18:13:10 +0000

TTAB Attorneys

The United States Patent and Trademark Office (USPTO) is responsible for the registration and prosecution of trademarks. The Trademark Trial and Appeal Board (TTAB) is responsible for proceedings to decide matters related to trademarks. These proceedings include appeals from USPTO Examining Attorneys’ denial of registration of a mark, opposition proceedings filed against trademark applications, trademark cancellation proceedings, and concurrent use proceedings. TTAB administrative proceedings are similar to court proceedings in that a judge presides over the proceeding. In addition, particular rules govern the practices and procedures in front of the TTAB. These rules are captured in the Trademark Trial and Appeal Board Manual or Procedure, also known as the TBMP.

Traverse Legal can serve as your trademark attorney for all TTAB matters. We have experience with trademark registrations, trademark litigation, and TTAB proceedings and can offer flat fee alternatives to suit your particular goals. Contact a TTAB attorney today to discuss TTAB needs or call us toll free at 866.936.7447.