What Is The Trademark Trial and Appeal Board (TTAB)?
The TTAB is an administrative board that hears ex parte appeals and decides adversary proceedings between two parties. The Board is authorized to determine your right to register a trademark with the United States Patent and Trademark Office (USPTO). The Board is not authorized to decide whether you have the right to use a trademark or if an infringement has occurred. It can only rule as to whether you can register your mark.
What Is a TTAB Trademark Opposition Proceeding?
A TTAB Opposition Proceeding occurs when a party files a Notice of Opposition during your trademark application’s Opposition Period. In general, when the opposing party files this notice, it is taking the position that even though the USPTO does not have an issue with your trademark registering, the opposing party believes that registration will cause a problem. The most common claim is that the existence of both trademarks in public will confuse people as to the source of the good or service. Other common reasons are that the opposer may think the new trademark is disparaging or will hurt the opposer's reputation or the trademark is viewed as scandalous.
What Is a TTAB Cancellation Proceeding?
A Cancellation proceeding occurs after your trademark mark is registered. Even after your trademark is registered, there is still a chance that someone can attempt to cancel your registration. Common claims include the likelihood of confusion, an issue with the registrant’s ownership, or the registrant is no longer using the trademark (abandonment).
Who Can Oppose My Trademark Application?
Unfortunately, anyone who believes that your trademark registration may harm their business can oppose your application. It is tough to disprove an opposer early in a TTAB Proceeding because the initial stages are more about collecting information (i.e., pleadings, initial disclosures, discovery).
Why Would Someone Want To Oppose Your Trademark Application?
Some oppositions are legitimate. The opposer believes that the registration of your trademark may weaken their current registration. However, in some cases, the opposers are individuals or companies who think that they can bully you into giving up your trademark rights. Opposers may gamble to see if you will ignore the notice. If you fail to file a timely Answer, then the opposer automatically wins whether or not their claim is valid. Similar to litigation, it is sometimes used as a business strategy.
What is An Extension of Time To Oppose?
If someone discovers a mark that it possibly wants to oppose close to the filing deadline, they can file a request to extend the deadline. There are guidelines for how many extensions the TTAB will grant, but as long as the opposer files a timely request, the TTAB will grant the first extension. The TTAB will grant the first request of thirty (30) days without a showing of cause and no fee. More extended periods require showing good cause and paying a fee.
Can You Settle A Trademark Opposition?
If you, as the trademark applicant, lose the trademark opposition, then your application will be canceled and it will not register. This creates a legal cloud over your business if you continue to use the trademark. The opposer has the right to come after you for trademark infringement in federal court and some of the rulings in the TTAB proceeding will become evidence in the federal lawsuit.
On the other hand, if the opposer loses, it will not be able to stop your application from going through, and this may cause them problems in the market.
TTAB proceedings frequently end in a settlement before trial because of the risks stated above, and the fact that neither side can recover its attorneys' fees or costs even if they prevail.
What Are Your Options If You Receive a TTAB Notice or Petition?
The first thing you need to do is review the pleading (Notice of Opposition or Petition To Cancel) to understand and validate the claims and issues. You will need to consider things like:
- Is your mark similar to the opposing trademark?
- Was the opposing party's trademark used in commerce before you used your trademark? (i.e., were the goods or services related to the opposing party's trademark sold interstate before your product or service?)
- Are international classes or descriptions of services/goods similar or the same?
There are many things to analyze when determining whether the opposing party's claim is valid.
As mentioned above, some companies file TTAB proceedings as a business strategy. You can find out if the opposer has a history of doing this by researching the TTAB records.
Second, do not miss your deadlines! You have to understand that the opposer has nothing to lose until you file your Answer to the pleading. If you fail to file an Answer, then the opposer wins by default. Your options are to either filing an Answer on your own (pro per) or hiring a law firm to file an Answer on your behalf.
Lastly, be aware that these proceedings use the Federal Rules of Civil Procedure, Trademark Law, and Trademark Rules and Procedures so these proceedings can get complicated. There are pleadings, disclosure requirements, discovery (depositions, interrogatories, requests for production of documents and things, and requests for admission), motions, briefs, and a trial.
Contact us if you need would like us to advise or represent you in a TTAB proceeding!
