Best Practices for USPTO
Opposition & Cancellation
Any trademark owner will have the right to protect his/her exclusive right in his/her US trademark registration by bringing an action before the US Patent and Trademark Office (USPTO)’s Trademark Trial Appeal Board (TTAB), which is similar to a civil action (trial) in a federal district court. An inter parties proceeding involves filing pleadings, a range of possible motions, discovery (a party’s use of discovery depositions, interrogatories, requests for production of documents and things, and requests for admission to ascertain the facts underlying its adversary’s case), a trial period, and briefs, followed by a decision on the merits of the proceeding.
Filing the Complaint
A trademark opposition proceeding is commenced by timely filing a Notice of opposition with the United States Patent and Trademark Office. According to USPTO rules, any person who believes that he/she may be damaged may file an opposition against a pending trademark application. While the term “any person” is construed broadly for purposes of filing a Notice of Opposition, the Trademark Trial and Appeal Board has nonetheless held that the potential opposer must have a real interest or direct and personal stake in the outcome.
In addition, the potential opposer must have a reasonable belief that he will be damaged if the registration issue.
Grounds for Opposition
The grounds for filing a notice of opposition against a pending trademark application include:
- a likelihood of confusion with the opposer’s trademark
- descriptiveness or genericness of the pending trademark
- geographic descriptiveness of the pending trademark
- dilution of the opposer’s trademark
- fraud in the procurement of the trademark for which registration is sought
The complaint should set forth the basic facts giving rise to the claim. A properly plead complaint is vitally important in ensuring the success of a trademark opposition case. Should a notice of opposition be legally or factually deficient, the defendant/trademark applicant can move to dismiss the complaint, leaving the opposer with a major legal challenge to their case and higher legal costs.
How to Settle
To a trademark opposer, the filing of a trademark opposition is a serious matter with an uncertain outcome. If an opposer loses a trademark opposition case, the trademarks on which it is relying to bring the opposition can be further weakened. On the other hand, if a trademark applicant loses a trademark opposition then the application will be rejected, further jeopardizing the applicant’s plans to use the trademark on certain products and services. Therefore, for both opposer and applicant, a trademark opposition poses unwanted risks to their respective trademarks that perhaps could be avoided by settling the case.
The Best Lawyers
As any trademark opposition attorney knows, you do not always get to choose your opponents. Some opposing counsel are cooperative, professional, and seek common ground between the trademark opposer and trademark applicant. This approach often results in a favorable result for both parties.
Great trademark opposition lawyers generally have the following traits in common:
- Professionalism: maintaining coridal and respectful relations with opposing counsel;
- Vision: being aware of the strength and weaskness of client’s trademark opposition case;
- Knowledge: mastery of trademark opposition law and Trademark Trial and Appeal Board procedure;
- Timing: knowing when and how to dial-up the pressure, or alternatively, to seek accommodation
- Understanding: of any and all potential outcomes, and the risks and rewards of each option
Trademark attorneys who possess three or more of the above characteristics are likely to be more successful in achieving favorable outcomes for their clients. By carefully choosing the right attorney for your trademark cancellation or trademark opposition proceeding, chances are that you will be in a better position to achieve the results that you desire. A successful conclusion to a trademark opposition can take one of two main forms: (1) judgment on the merits; or (2) a negotiated settlement.
(1) Judgment on the Merits
Generally, the best trademark litigation lawyers help achieve a judgment on the merits by having a full working knowledge of the various statutes, rules, and case precedent that are applied by the Trademark Trial and Appeal Board in deciding a trademark cancellation or trademark opposition case. These include a mastery of:
- Federal trademark statutes
- The Trademark Rules of Practice
- Trademark Manual of Examining Procedure (“TMEP”)
- Federal Rules of Civil Procedure;
- Federal trademark case law and TTAB citations; and
- Federal Rules of Evidence
(2) Negotiated Settlement
Obtaining a negotiated settlement in a trademark opposition matter is dependent on several factors, each of which are fact-specific to each individual case. Like many other types of litigation, the motivation of the trademark opposer in filing the notice of opposition must be weighed and gauged against the willingness of the parties to enter into a reasonable settlement.
Trademark Cancellation and Opposition Rules
Trademark Opposition and Cancellation are Civil Litigation
An opposition or cancellation proceeding is a form of civil litigation that is heard before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office. It has a complaint (in the form of Notice of Opposition or Petition to Cancel), discovery phase (allowing the parties to file discovery items such as interrogatories, request for production of documents and to take depositions), and a trial phase, assuming the case is not settled. There is also the opportunity to prepare and file motions and legal briefs in support of your position.
It’s quite often been said that “ignorance of the law” is no excuse. This is particularly true in the case of U.S. trademark opposition attorneys and trademark cancellation lawyers who practice before the U.S. Trademark Trial and Appeal Board.
Under U.S. law and federal regulations, all U.S. trademark opposition and petition to cancel proceedings are governed by several federal statutes and federal regulations, as well as relevant case law. These include the following:
- the Lanham Act of 1946, otherwise known as the Trademark Act, 15 U.S.C. Section 1501 et seq.;
- the Trademark Rules of Practice, which rules can be found in Parts 2 and 7 of Title 37 of the Code of Federal Regulations (“CFR’);
- the rules relating to the conduct of U.S. trademark attorneys and the representation of clients before the United States Patent and Trademark Office, found in Parts 10 and 11 of 37 CFR
It is important to note that USPTO rules regarding trademark opposition and trademark cancellation cases before the Trademark Trial and Appeal Board take their inspiration from, and align with, the Federal Rules of Civil Procedure. Therefore, U.S. trademark opposition lawyers should pay careful attention to the interaction of all relevant statutes and rules related to inter-parties proceedings.
Knowledge of both Trademark Office rules and Federal Rules of Civil Procedure are important in vigilantly representing a client in an action where their trademark has been opposed or a party is seeking to cancel their U.S. trademark registration.
Tips to Remember!
A party who has been served with a trademark cancellation or notice of opposition must immediately discuss with a seasoned trademark attorney the likelihood of success on the case, including all factors that may contribute to an early and favorable settlement so as to achieve an outcome that is in the best interest of the business and brand name protection. As is the case with any civil litigation, time is of the essence so don’t delay.