Nationwide Trademark Trial and Appeal Board (“TTAB”) Attorney
A U.S. trademark registration is the most comprehensive way to protect your trademark in the United States. However, disputes sometimes arise about eligibility for federal registration, which are often heard before the Trademark Trial and Appeal Board (“TTAB”). The TTAB is the administrative tribunal of the U.S. Patent and Trademark Office and governs Oppositions, Cancellations, and Ex Parte Appeals.
At its core, the TTAB has only one job – to determine the right to register a trademark. That’s it. The TTAB cannot determine a party’s right to use a trademark (i.e. it cannot issue Orders or Injunctions to prevent a party from using a trademark), it cannot decide broader questions like infringement or unfair competition, and it cannot award damages. In essence, the power of the TTAB is very limited.
However, despite having limited power, the TTAB is a very important judicial body that can have serious implications when it comes to your use and enforcement of your trademark. It is also a fairly unique tribunal and differs significantly from traditional litigation in state or federal court. Therefore, it is important to engage a TTAB-focused attorney that has extensive experience in representing trademark owners before the TTAB. Our nationwide Trademark Trial and Appeal Board attorneys have that experience, so give us a call at (858) 220-1166.
Why Choose T-Rex Law?
- At T-Rex Law, we understand the financial and emotional burden that defending or prosecuting an Opposition or Cancellation action can have on a business. An Opposition or Cancellation means your trademark rights are at risk – which not only can have serious consequences, but it can affect you personally and emotionally.
- At T-Rex Law, we are TTAB experts and will take much of that pressure off of you and will handle all filings, deadlines, etc. We stay in constant contact with you so you are never wondering about the status of your matter. In addition, our flat fee structure even applies to TTAB proceedings – no matter how contentious – so you will always know exactly how much you are paying at each step of the proceeding.
General Opposition/Cancellation Information:
Oppositions and Cancellations are proceedings filed by third parties against your U.S. trademark application/registration. Grounds for filing an Opposition/Cancellation are numerous, but the most common grounds are that the third party believes your trademark is likely to be confused with the third party’s prior rights to a prior-used trademark and/or prior-filed U.S. trademark application. Other grounds include claims that your trademark is descriptive or generic for your goods/services, that you did not establish proper use of or intent to use your trademark prior to filing your application, fraud on the U.S. Patent and Trademark Office, etc.
If a third party has filed a Notice of Opposition against or a Petition to Cancel your U.S. trademark application/registration with the TTAB, the TTAB has the right to forcibly abandon your U.S. trademark application or cancel your U.S. trademark registration. Losing your U.S. trademark application/registration will mean you will lose the rights associated with owning a U.S. trademark application/registration, including your nationwide constructive rights to your use of your trademark (among numerous other benefits).
If you believe a third party has filed a U.S. trademark application or has obtained a U.S. trademark registration that violates your trademark rights, the TTAB is a good place to start. If your Notice of Opposition or Petition to Cancel is successful, the application/registration you filed against will be abandoned/cancelled, and your path toward use or enforcement of your trademark will be more clear.
In general, Opposition and Cancellation proceedings are similar to litigation – there are still Motions, Discovery, and a Trial – but everything is filed electronically and there are no in-person appearances (unless you elect to do so). This means that the costs for a TTAB action can be significantly less than fighting a lawsuit in state or federal court.
What is the General Timeline for Oppositions/Cancellations?
An Opposition or Cancellation proceeding generally begins with the filing of a Notice of Opposition or a Petition to Cancel. As soon as either of these documents are filed, the TTAB will issue an Order setting forth all other deadlines in the proceeding, including the next deadline – the deadline to Answer. An Answer essentially admits or denies the allegations contained in the Notice of Opposition or Petition to Cancel. The Answer is required, and failure to file an Answer could result in loss of your U.S. trademark application.
Once an Answer is filed, both parties are required to discuss the claims and defenses asserted, as well as possibility of settlement, at the Discovery Conference. This is often referred to as the initial phase of the proceeding, and can last several months. The majority of cases are settled or dismissed during this phase, whether due to money or time constraints, loss of interest in the case, or other reasons.
The next step is Discovery, where the parties are able to serve Discovery Requests on the other party seeking information relevant to the case. Requests for Production of Documents request documents that are relevant to the proceeding, Requests for Admission ask yes or no questions asking the other party to admit or deny facts, and Interrogatories ask for facts or circumstances surrounding certain relevant questions. A party may also request Depositions of the other party where the other party must testify under oath about facts and circumstances in the case. These facts and circumstances could include discussion about the trademarks involved, how the trademark was chosen, if a Trademark Search was conducted, evidence of sales, etc. Discovery is a very important part of a TTAB proceeding because it allows both parties to collect relevant information for the next phase – trial – whether those facts are helpful or not to the party requesting the information.
Parties also have the option to hire expert witnesses that can testify or clarify issues in the proceeding. Expert witnesses are somewhat uncommon in TTAB proceedings, but are still utilized. Discovery generally takes at least six (6) months, but may last longer in complex cases.
The final step is trial. Unless specifically requested, there is no live hearing before a judge or jury – there is only a tribunal that will read the evidence, testimony, and briefs submitted by the parties and will then issue a decision. This phase takes at least three (3) months, and the TTAB generally takes at least three (3) months to render a decision.
Throughout the proceeding there are numerous deadlines and intricacies that can trip up the unwary – and T-Rex Law can help.
What is an Ex Parte Appeal?
The TTAB also has jurisdiction over Ex Parte Appeals. “Ex Parte” means “one party”, and in Ex Parte Appeals you aren’t litigating against a third party – you are appealing a final refusal issued by an Examining Attorney assigned to your U.S. trademark application.
Examining Attorneys are assigned to all U.S. trademark applications, and they review each application for compliance with federal trademark laws. If the Examining Attorney believes there are any issues with your application, they will issue an initial refusal (called an “Office Action”). Initial Office Actions can be Responded to, but at some point (either after one unsuccessful Response or several), the Examiner may make the refusal final.
Once a refusal is final, your recourse may be to file an Appeal with the TTAB. The TTAB has a fairly limited procedure for the Appeal, which consists of having you file a Brief in support of registration of your trademark. The Examining Attorney is then required to file an Appeal Brief, to which you may file a Reply. At that point, the TTAB takes over, will consider all arguments, and will issue a decision.
Again, the TTAB can only determine the right to register a trademark – so any decision made in an Ex Parte Appeal will only determine if your trademark can be registered or not. There are other courses of action after the TTAB makes a decision in an Ex Parte Appeal, including but not limited to a further Appeal to the Federal Circuit, preparation and filing of a new U.S. trademark application that may avoid the basis for refusal, etc.
What is an Interference and Concurrent Use Proceeding?
Finally, the TTAB has jurisdiction over Interferences and Concurrent Use Proceedings.
Interferences are proceedings with the TTAB where the Board determines which, if any, of the owners of conflicting applications is entitled to registration. Interferences are almost obsolete in the United States, and the more common way to deal with these issues is through a Notice of Opposition or Petition to Cancel.
Concurrent Use Proceedings are proceedings with the TTAB where the TTAB determines whether one or more applicants is entitled to a restricted registration with conditions and limitations fixed by the Board as to the mode or geographic location of use of the Applicant’s trademark and/or goods/services used in association with the trademark. Concurrent Use Proceedings are rare, but still utilized.
Contact our Nationwide Trademark Trial and Appeal Board (“TTAB”) Attorneys
At T-Rex Law, our nationwide Trademark Trial and Appeal Board attorneys have extensive experience representing businesses and individuals and protecting their trademark rights. We are here to walk you through the process. Contact us today at (858) 220-1166 or by filling out our online form.