OPPOSITION & CANCELLATION PROCEEDINGS
These actions are filed with the Trademark Trial and Appeal Board (TTAB). The TTAB is a specialized 'court' within the United States Patent and Trademark Office for resolving certain trademark disputes. Opposition and Cancellation proceedings are similar to court actions, with each side making arguments and TTAB judges making decisions.
Responding: If you already own a trademark registration or have a pending application, you may receive a Petition to Cancel or Notice of Opposition. These actions are initiated by a third party to try to cancel your existing registration or block your pending application. The third party may raise a number of legal claims, including that their prior use or registration of a similar mark creates a substantial likelihood of confusion as to the source of the goods or services. If you fail to respond to an Opposition or Cancellation proceeding, you will likely lose valuable trademark rights.
Petitioning: You may need to initiate a TTAB proceeding against a third party. Our MONITORING SERVICE may alert you to the existence of a conflicting mark or pending application that threatens your registered trademark rights. Or an Examiner may issue an OFFICE ACTION, citing a third party's registration or pending application that blocks your pending APPLICATION FOR REGISTRATION. In these, and other circumstances, it may make sense to challenge a third-party's registration or application to clear the way for your APPLICATION FOR REGISTRATION or to preserve your registration rights.
It is important to note that changes in the law have increased the importance of TTAB proceedings. While TTAB decisions determine registration rights, federal court decisions have held that TTAB findings about non-registration issues carry more weight than in the past. Trademark owners need to pay close attention to proceedings before the TTAB to ensure maximum protection of their trademark rights.
PETITIONS FOR EXPUNGEMENT & RE-EXAMINATION
These recently adopted procedures provide a streamlined way to challenge a registration on the basis of non-use — often faster and less expensive than a full cancellation proceeding. Expungement applies where a registered mark has never been used in commerce for some or all of the listed goods or services; reexamination applies where a mark was not in use as of the relevant filing date. Any third party may petition, and the USPTO reviews the submission and may institute its own proceeding requiring the registrant to come forward with evidence of use to keep the registration.
These petitions can clear away registrations that block your application or expansion. They also cut the other way: an existing registration can be targeted by one — a reason to keep evidence of use organized and your identifications accurate. We evaluate whether a petition is the right tool against a blocking registration, and defend registrations when the USPTO institutes a proceeding.
A Letter of Protest can be used by a third-party trademark owner to attempt to prevent a registration from moving forward before the U.S. Patent & Trademark Office. A Letter of Protest provides evidence to the PTO raising issues or challenging a pending APPLICATION FOR REGISTRATION prior to publication. The grounds raised may include: challenging the mark as being descriptive or generic; a likelihood of confusion with prior U.S. trademark registrations or applications; pending litigation; or that the third party's mark has been included in another applicant's description of goods and services. Letters of Protest are a lower cost way of challenging a pending trademark application and an important tool to assist in trademark enforcement.
LETTERS OF PROTEST
Contact us for more information.
Use the form below to contact us regarding a TTAB proceeding or Letter of Protest. You may also email or call us to make an appointment.