Trademark Trial and Appeal Board (“TTAB”) Proceedings
Trademark Trial and Appeal Board (“TTAB”) Proceedings is consists of :
Trademark Opposition Proceedings: the Basics
In the event a mark that is published for opposition is of concern to an owner of an already registered mark, the USPTO (the United States Patent and Trademark Office) offers trademark opposition proceeding as a tool to pause the registration process This process is designed to protect the interests of businesses and consumers alike. In this post, we’ll go over the basics of trademark opposition proceedings.
It’s a “tale as old as time.” You start a business, apply for trademark registration for the name, logo, and slogan, and eventually, develop brand recognition. If you’re successful, you are going to start seeing some competitors do similar things. Imitation can be the highest form of flattery, but it can also expose your brand to manipulation.
A tool that often utilizes trademark enforcement: Trademark Opposition Proceedings
The basics of the trademark opposition proceedings are pretty simple. Trademark owners have many ways of protecting their brand ranging from cease and desist letters to federal litigation. But if you have a competent portfolio management strategy, then you have a trademark attorney or someone in-house, constantly monitoring your brand’s exposure to possible infringement.
When you apply for a trademark, the USPTO will check to make sure that there are no similarities to other trademarks. Sometimes, though, things slip through and are published in the official trademark gazette. This is where the burden shifts, usually on the trademark owner, to enforce their trademark rights against a possible infringement. The mechanism to oppose is limited to applications for registration in the principal register.
How is Trademark Opposition different from Trademark Cancellation?
There are two types of proceedings when it comes to trademarks: opposition and cancellation. Cancellation proceedings can only happen after a trademark is registered, while opposition proceedings usually happen before a trademark is registered.
More specifically within 30 days of the applied-for mark being published in the official trademark gazette. As a trademark owner, you have 30 days to file a notice of opposition after you discover a trademark infringement. . An initial extension through the filing of a notice of opposition is usually for 30 days and costs no extra fees.
Basis (scenarios) for filing an opposition
The most common ground for opposition is the likelihood of confusion. The confusion does not need to be possible, actual, or inevitable. The only thing the board at the trademark trial and appeal board (TTAB) will be looking at is if the conflicting mark would confuse a considerable amount of consumers.
Other grounds for opposition:
Dilution – a fancy way of saying: “This applied-for mark weakens my registered mark”
No bonafide or intent to use the mark in commerce
Good old fraudA complete list of grounds of opposition and the proceeding procedure can be found in this link.
Difference between a TM Opposition vs TM Infringement proceedings
You might think both of them kind of sound like lawsuits. Are they different?
A relief granted by the TTAB is limited to rejecting the applicant’s mark from being registered. However, a TTAB decision is often a deterrent for the applicant and can have a preclusive effect in civil proceedings to receive injunctive relief. Opposition hearings are usually less expensive than a trademark infringement lawsuit.
When the TTAB looks at the conflicting marks, they often use a test that is favorable to the person who opposes the mark. The board looks at the mark as it is applied, instead of how it will be used in the marketplace. This is a narrower assessment than the one the federal court applies.
This is not to say an opposition hearing won’t last long. It can. It can also leave your brand vulnerable to third-party actions and lead to future lawsuits.
Before filing a notice of opposition, it is always important to note the opposer’s realistic expectations with specific desired outcomes. The likelihood of success should dictate the opposer’s strategy and any possible settlement alternatives should be reviewed. Common settlement options include coexistence agreements, amendments to goods or service descriptions, geographical restrictions, etc.
Ways to Defend an Opposition Proceeding (Common Defenses)
There are many ways to defend an opposition proceeding, but the opposer’s best case scenario is for the applicant to abandon the application after the filing of the notice of opposition. However, a good strategy includes the expectation of a response, narrowed down to the applicant’s best arguments against the grounds listed in the notice of opposition.
The applicant’s most common defenses include
Rebuttal of the asserted grounds: Each ground requires a methodical approach for rebuttal. For example, a likelihood of confusion rebuttal must include:
Evidence of first use.
An argument stating the opposer’s mark is weak and entitled to none or limited protection.
An argument stating the opposer’s mark is similar to others in a crowded marketplace.
Evidence, if available, that the parties have coexisted for a long period without any evidence of confusion.
Evidence on how the marks are dissimilar in appearance/sound/connotation and how the goods/services are unrelated.
Acquired distinctiveness / Secondary meaning: This is specifically a defense to the grounds of descriptiveness, deceptively misdescriptiveness, geographical descriptiveness, and surname. The applicant will have to prove the applied-for mark has acquired secondary meaning through evidence.
If an applicant owns a registered trademark that is the same or essentially the same mark as the applied-for mark and also has the same goods and service description, they can use the Morehouse defense.
The applicant also has the option to file a counterclaim action in the way of a cancellation proceeding. If the basis for standing for an opposer comes from the ownership of a prior registered trademark, the applicant can then challenge the validity of the opposer’s registration by filing a cancellation proceeding.
It all begins with a competent portfolio management strategy. This is the foundation of any successful investment plan and without it, you are more likely to fail than succeed. However, with a sound strategy in place, you can maximize your chances for success.
As an applicant, you can save time by conducting a proper search and clearance through a trademark attorney. As an opposer, you can implement an enforcement strategy that includes monitoring and swift action when needed.
As you can see, trademark opposition proceedings are a powerful tool that businesses can use to enforce their trademarks and protect their brands. However, these proceedings can be complex and it is important to have a strong understanding of the process before moving forward. If you would like more information or want to discuss your specific situation, please don’t hesitate to contact us. We would be happy to schedule a discovery call with you and help you determine the best course of action for protecting your brand. Thanks for reading!
If you have any questions about Trademark Opposition Proceedings and would like help getting a better understanding of it, we’d be happy to schedule a discovery call with you.
Can a trademark be canceled? – Common Grounds For Cancellation & Defenses
To protect their brands (and the hard work that goes into creating them), businesses must register trademarks with the United States Patent and Trademark Office (USPTO). However, there are several reasons why a trademark may be canceled – here we’ll outline the most common ones, along with some possible defenses. Keep in mind that every case is unique, so if you’re facing cancellation or believe your trademark is at risk, it’s best to speak with an experienced attorney.
Petition to Cancel
To begin a trademark cancellation proceeding, a petition to cancel must be filed. Take note that a petition to cancel must be filed after registration is issued. If a petition is filed before the registration, it will be rejected.
A petition to cancel complaint must plead standing, which is any person, corporation, or other entity who believes they might be damaged by the registration of the mark. There’s no need to prove that you’ve suffered actual damages, just potential ones based on the possible registration.
The petition to cancel must also plead grounds for cancellation. A petitioner must plead one or more valid grounds listed in the Latin act that allows the USPTO to cancel a registered trademark. Registrations on the supplemental register can be canceled at any time and any ground may be asserted except mere descriptiveness.
For marks registered on the principal register, the grounds depend on if the mark is registered for less than, or more than five years. For a mark registered less than five years, any ground listed in the Lanham Act may be asserted. But for a trademark that has been registered for more than five years, the grounds are limited to only a specific view. The most important factor is whether or not there is a likelihood of confusion, and if it is just descriptive.
The phrase “trademark cancellation proceedings” is distressing for any brand owner. But there are effective defensive strategies available.
One of the most common grounds to file a petition to cancel is descriptiveness. Acquired distinctiveness is another way to assert the registered mark. The trademark is not very unique at first, but it becomes more distinctive over time because people have started to use it in their businesses. Now it qualifies for trademark protection.
Disputing or disproving the petition’s argument
Effective defensive strategies can mean the difference between a successful outcome and an unfavorable one. When responding to allegations, the defendant has two main options: making general denials or specific denials. General denials are just what they sound like – a blanket statement that refutes all of the petitioner’s allegations. Specific denials, on the other hand, are tailored responses to each allegation.
By carefully considering the allegations and evidence, the defendant can choose the best approach for their case. In some situations, a combination of both general and specific denials may be used. Ultimately, the goal is to create a strong defense that gives the defendant the best chance at a favorable outcome.
A Cancellation Counterclaim
A cancellation counterclaim can be brought against the petitioner when the standing to bring the original proceeding stems from ownership of federal trademark registration. This is where a defendant can challenge the petitioner’s trademark. They can do this by using any of the grounds allowed in the cancellation proceeding.
Trademark registration is the first step in your brand-building journey. You must protect the rights associated with your trademark. A sound policing and monitoring policy allows a trademark owner to effectively file and defend a petition to cancel.
Trademark cancellation can be a daunting process. However, by understanding the grounds for cancellation and the potential defenses, you can make an informed decision about whether to fight a petition or simply let it go. If you’re feeling overwhelmed, don’t worry! Our team is here to help. Schedule a discovery call today and we’ll walk you through the process step-by-step.
If you need assistance in a trademark cancellation proceeding or any other trademark matters, we’d be happy to schedule a discovery call with you.