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 »
Posts Tagged ‘trademark opposition’
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.
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 »