Posts Tagged ‘trademark opposition proceeding’

What to do after losing a Trademark Opposition

Tuesday, March 8th, 2011

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.

A Trademark Opposition May Be Your Only Choice

Monday, January 31st, 2011

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.