Trademark Opposition, Cancellation Proceedings at the TTAB

September 14th, 2009

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.


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.

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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.