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. Continue reading Trademark Opposition Threat Letter »
Archive for the ‘TTAB Oppositions’ Category
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.
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.
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 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? Continue reading Trademark Opposition, Cancellation Proceedings at the TTAB »
Traverse Legal, PLC is a private, independent law firm. Neither the law firm nor its attorneys and staff are endorsed by, affiliated with, connected to, sponsored by, approved by, or associated with the United States Patent and Trademark Office (USPTO), Trademark Trials and Appeal Board (TTAB), or any other governmental entity. While Traverse Legal, PLC and its attorneys appear before and argue trademark matters handled by the TTAB, we are not the TTAB.
The United States Patent and Trademark Office 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.