Posted by James Hastings on May 12, 2012

Trademark Opposition: 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.

When is the Best Time to Settle a Trademark Opposition?

Generally, there are three (3) opportune times to attempt to settle a trademark dispute with another party:  These include:

  • Prior to the Filing of the Trademark Opposition - once a trademark cease and desist letter is served;
  • Prior to an Answer Being Filed -  the trademark applicant might consider first contacting the Opposer to determine what are their business reasons for filing the trademark opposition and whether some sort of Agreement can be reached without the need for litigation
  • During the Mandatory Settlement Conference- the parties to a trademark opposition proceeding are required to "meet and confer" - almost always by phone, to discuss the facts and allegations of the dispute and to determine whether a settlement may be achieved.  This conference takes place after the filing of the Answer during the early stages of the case

Remember that in trademark opposition cases, timing is everything.  Knowing when and how to approach your opponent to discuss settlement is best left to an experienced trademark opposition attorney.  This could make the difference between a long, protracted litigation and one that gets resolved quickly. 

 

Posted by James Hastings on May 03, 2012

Trademark Opposition: 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.  There are times, however, when an opposing trademark lawyer takes a "win at all costs" mentality.  But just what does "win at all costs" mean, and does such a strategy always serve the best interests of the client?  If the pitbull phiiosophy results in excessive legal fees and protracted litigation, it may not always be in the client's best interest.  

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 strengths and weaknesses of the 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 acccomodation
  • 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 than those who simply are the "win at all costs" types. 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. 

 

 

Posted by James Hastings on April 23, 2012

Winning a Trademark Opposition Case

To trademark opposition attorneys, winning a trademark opposition should mean one thing and one thing only: achieving a favorable outcome for the client.  In this regard, a successful conclusion to a trademark opposition can take one of two main forms: (1) judgment on the merits; or (2) a negotiated settlement.

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

Using the Trademark Board Manual of Procedure as a guide, the trademark opposition attorney can lay the proper legal foundation for a stong and persuasive case.

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.  Factors that may contribute to a favorable settlement before the U.S. Trademark Trial and Appeal Board include:

  • Use of the TTAB Accelerated Case Resolution program;
  • The motiviations of the attorneys in representing their clients
  • The willingness of the parties to seek a negotiated resolution;
  • Weigning the pro and cons of continuing the case, including the cost and expense

Tips to Remember

As a party who has been served with a trademark cancellation or notice of opposition, it is important to immediately discuss with your trademark attorney the likelihood of success of your 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 your business and brand name protection.

For further tips on trademark opposition or trademark cancellation settlement stategies, feel free to email me or call (800) TMLAW-01 or (203) 244-4264.

Posted by James Hastings on April 22, 2012

Trademark Cancellation and Opposition Rules

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 of pertaining to trademark assignments, which may be found in Parts 3 and 7 of 37 CFR; and 
  • 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-partes 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.

The Trademark Office makes copies of Title 37 CFR and other relevant statues and rules available for sale from the U.S. Government Printing Office, or on the United States Patent and Trademark Office website.

By reviewing the trademark statutes and rules related to TTAB proceedings, a U.S. trademark attorney will be better prepared to be deal with the complexities found in opposition and cancellation proceedings before the Board.

Posted by James Hastings on April 21, 2012

Third Edition: Trademark Board Manual of Procedure

As has been discussed in prior postings, the Trademark Trial and Appeal Board's rules for U.S. Trademark Opposition and U.S. Trademark Cancellation proceedings are contained in the Trademark Board Manual of Procedure ("TBMP") an over 1,000 page "how-to" guide of handling inter-partes matters before the Board.

The purpose of the TBMP is to provide trademark attorneys with basic information generally useful for litigating cases before the Trademark Office. The second edition of the TBMP last was revised in 2004.  The current third edition was revised and published by the Trademark Office in May 2011.  The Third Edition highlights several new development practices, including the following changes designed to make the trademark opposition and trademark cancellation process be easier on litigants and to encourage early settlement:

  • Mandatory discovery conferences to discuss settlement and claims and defenses
  • Disclosures of initial witnesses, experts, and other pretrial matters
  • Emphasis on Accelerated Case Resolution (ACR"); and
  • Efficiencies such as a shift from paper to electronic filings

The manual is devoted primarily to opposition and cancellation proceedings, since they are the two most common types of cases before the Trademark Trial and Appeal Board. It also includes additional information on interference proceedings, concurrent use proceedings, and ex parte appeals to the Board.  The third edition also incorporates all statutory changes, including changes to the Trademark Rules of Practice and Federal Rules of Civil Procedure.  In keeping with the Trademark Board's emphasis on and innovations in electronic initiatives, the new third edition is available online on the USPTO website in a searchable format.

The Board welcomes suggestions for improving the content of the Manual and making its understanding and application helpful to all U.S. trademark lawyers.

 

Posted by James Hastings on April 20, 2012

Trademark Oppositions: Follow the Rules!

Many companies facing a trademark opposition are unfamiliar with the ramifications of a notice of opposition and how it could impact their business.  Here are some things to remember when your trademark application is opposed: 

Trademark Oppositions are Civil Litigation

An opposition 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), 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.

Trademark Oppositions are Governed By Specific Rules

The rules governing trademark opposition procedures are found in the Trademark Board Manual of Procedure also known as the "TBMP."  The TBMP comprises 12 chapters that explain in specific detail the procedural and substantive requirements of a trademark opposition rules that must be followed.  Chapters include topics such as Pleadings, Discovery, Stipulations and Motions, and Settlement.

The Failure to Follow the Rules Can Be Fatal to Your Case

The Trademark Trial and Appeal Board requires strict adherence to each and every rule. The failure to follow the rules can result in several unwanted consequences, such as a motion for default, a motion to dismiss, or motion for judgment.  Quite often, these dispositive motions are due to a failure of one party to meet deadlines or other procedural requirements necessary to maintain their case.

The best practice is always to consult with a qualified trademark opposition attorney early in the proceedings to avoid risk to your trademarks or business.

 

 

Posted by James Hastings on April 05, 2012

Trademark Bullying and Unfair Litigation Tactics

As a trademark opposition attorney, I have first-hand knowledge of trademark bullying tactics that are designed to outspend and harass small business trademark applicants into abandoning their trademark application. The practice also spills into federal court actions for trademark infringement, cyberquatting, and other related matters.  This phenonemnon is very real.

As part of the Trademark Technical and Conforming Amendment Act of 2010, Congress instructed the United States Patent and Trademark Office to take the unusual step to address this issue by sending out a trademark bullying survey to trademark attorneys, small business owners, and interested parties to determine whether they had been the victims of trademark bullying. The survey invited respondents to share their experiences with trademark litigation tactics, "especially those that may involve an attempt to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to trademark owners."  Solicited examples of trademark litigation bullying tactics included abuses of:

  • trademark cease and desist letters
  • domain name cease and desist letters
  • trademark opposition proceedings
  • trademark cancellation proceedings

and other trademark-related matters that have adversely impacted the respondents, their clients, and/or business.

The resulting Report to Congress, Trademark Litigation Tactics and Federal Government Services to Protect Trademark and Prevent Counterfeiting, included the following highlights:

  • approximately 60% of respondents viewed trademark bullying as a real problem
  • a majority of respondents opined that Congress has a responsibility to discourage or prevent aggressive trademark litigation tactics
  • many respondents encouraged the Trademark Trial and Appeal Board to amend its rules to create and enforce tough sanctions against such behavior in trademark opposition proceedings

The subject of abusive trademark lawyer and litigation tactics subject is worthy of further discussion and commentary as there exist several strategies to combat such actions by deep-pocketed trademark litigants. If you or your company is involved in a trademark opposition or other trademark dispute, it is recommended that you speak with a qualified trademark attorney to determine how to best approach the case in a cost-effective and vigilant manner.

Posted by James Hastings on April 02, 2012

Domain Name Dispute Basics

Domain name infringement is one of the greatest threats that trademark owners face in protecting their valuable brand names. Why? Because registering a domain name is relatively fast and inexpensive, giving unscrupulous individuals ample opportunity to abuse the legitimate rights of trademark owners. 

Domain name disputes arise from two common types of infringing activities:

  • Cybersquatting- the act of using or registering all or part of another's trademark or brand name in an attempt to profit from such registration
  • Typosquatting- the act of registering variations of another's trademarks or brand names that contain typos or misspellings that are confusingly similar to the protected trademark (an example would be "googel.com" for the well-known search engine company).

Fortunately, the Uniform Dispute Resolution Policy (UDRP), developed by ICANN, the governing body for domain names, is a relatively fast and economical means for a trademark owner to contest disputed domain registrations that result from cybersquatting or typosquatting violations.

According to the World Intellectual Property Organization (WIPO), trademark owners filed 2,696 complaints before the WIPO domain name arbitration forum in 2010 alone.  The National Arbitration Forum, another ICANN approved domain name dispute forum, reported approximately 1,800 complaints filed in the same year. 

To prevail in a domain name arbitration, a complainant must prove by a preponderance of the evidence the following:

  • Respondent's domain name is confusingly similar to the complainant's trademark;
  • Respondent does not have any rights or legitimate interests in the domain name
  • Respondent registered and used the domain name in bad-faith

Each of the above elements of proof rests on sound legal precedent and arguments.  As such, it is always advisable to speak with a domain name lawyer to further discuss your domain name rights and options.

 

Posted by James Hastings on February 19, 2012

Notice of Opposition Basics

Have you been served with a Notice of Opposition to your trademark application?  If so, yours is one of hundreds of trademark opposition proceedings that are filed against trademark applicants every year.  Always consider taking the following steps upon receiving a Notice of Opposition:

1.  Contact a Trademark Opposition Lawyer

Trademark Oppositions are exclusively heard before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office.  The rules that govern trademark opposition proceedings may be found in the Trademark Board Manual of Procedure, a publication of the United States Patent and Trademark Office.  Given the complexity of such proceedings, it is always advisable to speak with a qualified trademark opposition attorney immediately.  The failure to answer a Notice of Opposition within 40 days can result in a default judgment against the trademark owner, with the trademark opposition being sustained and your trademark application being refused registration.

2.  Educate Yourself

Defending a trademark opposition can be costly.  This is because trademark oppositions, like other civil litigation matters, are contested proceedings between a plaintiff and defendant.  You can expect the trademark opposition to have three distinct phases, each with its specific evidentiary rules and requirements: (a) pleadings (b) discovery; and (c) trial.  Each phase involves a great deal of time and expense, and depending on the nature of the proceeding, can also involve the use of expert testimony. Be sure to have full familarity with what may be expected of you as a trademark opposition litigant.

3.  Discuss Your Options

Always have your trademark lawyer discuss the various options that may be available to you at the beginning of the trademark opposition case.  This may include engaging the Opposer in settlement discussions, or submitting the case to Alternative Dispute Resolution arbitration under the auspices of the Trademark Trial and Appeal Board.  In certain instances, neither of the above options may be the right one, and fully litigating the case on the merits may be necessary to protect your vaiuable trademark rights.

To discuss you trademark opposition matter, feel free to contact me at (800) TMLAW-01.

Posted by James Hastings on February 08, 2012

Trademark Registration: Best Practices

As a Connecticut trademark attorney, I often advise clients on the trademark registration process and what legal rights a United States Trademark registration grants.  Since there are many misunderstandings about trademark law, it is worthwhile to briefly discuss some best practices on how to protect trademarks and brand names here:

1.   Begin with a Full Trademark Search

A trademark search generally consists of a search of the United States Patent and Trademark Office records, state trademark office records, and common law listings to determine the availability for registration and use of a proposed trademark in interstate commerce.  The trademark search looks for identical trademarks as well as trademarks that may be "confusingly similar" to the trademark that is being considered for adoption by the searching party. 

2.   Have a Trademark Lawyer Provide a Written Legal Opinion

Analyzing the results of a trademark search requires experience and a detailed knowledge of applicable trademark law.  After the full trademark search is conducted, a qualified trademark lawyer should provide a written opinion as to the availability for registration and use of the trademark on the proposed goods and services.  The opinion should list all of the trademark search results of interest that are relevant to a determination of clearing the desired trademark for registration and use. 

3.  Prepare and File a Trademark Application

Once the trademark lawyer provides a favorable trademark search opinion, he or she should promptly prepare and file a trademark application with the U.S. Patent and Trademark Office.  Trademark applications can either be filed based on (a) existing use in commerce or (b) an intent to use in commerce if the applicant has not yet commenced use of the trademark on its products or services.  Once the trademark application is filed, it is assigned to an examining attorney in the Trademark Office to review the application for procedural and substantive requirements, and to deterimine whether the application will be either accepted or initially refused due to a likelihood of confusion with previously registered trademarks or for other reasons.

By following the above approach to trademark clearance and protection, companies can avoid many of the major risks and pitfalls associated with this nuanced area of trademark law.