Trademark Opposition & Cancellation Guide

Trademark Opposition & Cancellation Guide

U.S. Trademark Trial and Appeal Board Case Strategies

Category Archives: Trademark Opposition

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Opposing a Trademark Application: Getting Started

Posted in Trademark Opposition, U.S. Trademark Enforcement
When a company discovers that a competitor has filed a trademark application for a brand name that may be deemed confusingly similar to its own, it has an effective alternative to expensive U.S. District Court litigation: oppose the trademark application by filing a notice of opposition with the U.S. Trademark Trial and Appeal Board (“TTAB”). … Continue Reading

Trademark Opposition Strategies for In-House Counsel

Posted in International Trademarks, Trademark Opposition
Every in-house counsel knows the importance of protecting his or her client’s trademark portfolio from potentially confusingly similar trademarks.  So how do the best in-house counsel put their limited legal budgets to good use when considering when (or when not) to file a trademark opposition? To quote the knight in Indiana Jones and The Last … Continue Reading

How to Create a U.S. Trademark Enforcement Program

Posted in Trademark Opposition, U.S. Trademark Enforcement
Trademark enforcement programs, also known as trademark monitoring programs, provide an important and proactive means for companies to monitor the commercial marketplace and federal and state trademark registries for possible trademark infringement violations. Companies should consider the following steps to properly protect their valuable trademarks rights in the United States: 1.  Conduct a Trademark Audit … Continue Reading

Trademark Opposition Case Considerations

Posted in Trademark Opposition, Trademark Opposition Decisions
  Trademark owners who are considering whether to bring a trademark opposition should keep in mind the Boy Scouts® motto: be prepared.  Not all trademark opposition cases are alike; therefore in assessing the strength of a particular case, it is wise to consider three elements that could have a significant impact on the likelihood of … Continue Reading

3M Sticks it to Competitor in Trademark Opposition Dispute

Posted in Trademark Opposition, U.S. Trademark Appeal
3M, the originator of the famous POST-IT® brand of adhesive notes, recently prevailed in opposing the trademark application of an applicant that attempted to register the mark “Flag-it” for similar labeling goods. In the case, 3M Company v. Professional Gallery, Inc., the Applicant, had applied to register the mark FLAG-IT! in standard characters for “adhesive-backed … Continue Reading

Beverage Trademark Disputes Keep on Brewing

Posted in Food and Beverage Trademarks, Trademark Opposition
The failure to protect valuable brand names can lead to loss of competitive advantage.  Since most companies intangible assets are valued greater than their physical assets and inventory, the importance of trademark protection is becoming more apparent to corporate leaders. Case in point?  The highly competitive beverage industry. As reported by the good folks at … Continue Reading

Trademark Showdown: It’s Duke vs. The Duke

Posted in Trademark Opposition, Trademark Opposition Decisions, Uncategorized
Take cover, a trademark gunfight is brewing! The First Shot: Duke University John Wayne, our matinee idol, the symbol of the American West, is being tested once again.  No, not on the silver screen, but before the U.S. Trademark Trial and Appeal Board.  His antagonist?  Duke University, best known for stellar academics, bucolic settings, and … Continue Reading

Anheuser-Busch Brews Trademark Opposition

Posted in Food and Beverage Trademarks, Trademark Opposition
Anheuser-Busch is opposing the trademark application of a North Carolina brewer for the trademark Natty Greene’s, relying on several of its “Natty” beer trademarks for the grounds thereof. In Anheuser-Busch v. Natty Greene Brewing Company, LLC, the St. Louis brewing giant alleges that the Applicant’s trademark Natty Greene’s, is confusingly similar to Anheuser-Busch’s family of … Continue Reading

Trademark Opposition Checklist: The Right Lawyer

Posted in Trademark Opposition
Ignorance of the law is no excuse – and trademark owners who do not hire an experienced trademark attorney may end up paying dearly for their mistake. The Perils of Self-Representation When faced with a trademark opposition, many companies or small businesses believe that they can effectively represent themselves.  They quickly find out, however, that … Continue Reading

Florida Gators® Protect Their Trademark Habitat

Posted in Trademark Opposition
WARNING:  Provoke the alligators at your own risk! In a recent decision before the U.S. Trademark Trial and Appeal Board, the University of Florida was successful in defeating a trademark application for the mark GATOR SHOP for online and retail store services. In University Athletic Association v. Incentive Marketing, Inc., the Opposer (the University of … Continue Reading

Opposing a Trademark Application in the U.S.

Posted in Trademark Opposition, U.S. Trademarks
We often receive inquiries from domestic and international companies on how to oppose a U.S. trademark application that is filed with the United States Patent and Trademark Office. There are several components to this question that require a brief explanation. What is an Opposition?   When a party files a trademark application in the United States, … Continue Reading

2013 Trademark Opposition and Cancellation Statistics

Posted in Handling Your TTAB Case, Trademark Cancellation, Trademark Opposition
The Trademark Trial and Appeal Board recently published a summary of Trademark Opposition and Cancellation filing and performance results for the fiscal year 2013. As predicted, the number of trademark litigation proceedings before the board increased as compared to the preceding year. While it could be theorized that the increase was due to more trademark applications … Continue Reading

Trademark Opposition: Filing the Complaint

Posted in Handling Your TTAB Case, Trademark Opposition
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 … Continue Reading

Trademark Opposition: How to Settle

Posted in Handling Your TTAB Case, Trademark Opposition
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 … Continue Reading

Trademark Opposition: The Best Lawyers

Posted in Trademark Cancellation, Trademark Opposition
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 … Continue Reading

Winning a Trademark Opposition Case

Posted in Handling Your TTAB Case, Trademark Cancellation, Trademark Opposition
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, … Continue Reading

Trademark Cancellation and Opposition Rules

Posted in Handling Your TTAB Case, Trademark Cancellation, Trademark Opposition
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 … Continue Reading

Third Edition: Trademark Board Manual of Procedure

Posted in Handling Your TTAB Case, Trademark Cancellation, Trademark Opposition
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 … Continue Reading

Trademark Oppositions: Follow the Rules!

Posted in Handling Your TTAB Case, Trademark Opposition
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 … Continue Reading

Trademark Bullying and Unfair Litigation Tactics

Posted in Trademark Litigation Basics, Trademark Opposition
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 … Continue Reading

Notice of Opposition Basics

Posted in Handling Your TTAB Case, Trademark Opposition
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 … Continue Reading

Trademark Opposition Basics

Posted in Trademark Litigation Basics, Trademark Opposition
In discussing how a trademark opposition works, it is helpful to go over the basics of what a trademark opposition is, and what to expect as the case proceeds. A trademark opposition is when one party elects to oppose the existing trademark application of another party due to one of several grounds, such as the … Continue Reading

How to Select a Trademark Opposition Lawyer

Posted in Connecticut Trademark, Trademark Opposition
Let’s suppose that your business has filed a trademark application, and it has been approved for registration by the United States Patent and Trademark Office.  Does that mean that you now have been awarded a trademark registration?  No! Each and every trademark application that gets approved for registration first must be published in the Official … Continue Reading