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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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

What is the Trademark Trial and Appeal Board?

Posted in Handling Your TTAB Case, Trademark Cancellation, Trademark FAQ, Trademark Opposition
The Trademark Trial and Appeal Board (“TTAB”) of the United States Patent and Trademark Office (“USPTO”) is the administrative forum that adjudicates all trademark opposition and cancellation proceedings that are filed in the United States Patent and Trademark Office.   A case is commenced by the filing of a Notice of Opposition (in the case of an Opposition) or … Continue Reading

How to Choose a Trademark Law Firm

Posted in Connecticut Trademark, Handling Your TTAB Case, Trademark Cancellation, Trademark FAQ, Trademark Legal Costs, Trademark Litigation Basics, Trademark Opposition
In the market for a trademark law firm?  Keep it simple by thinking like a consumer and try to find the best quality lawyer or trademark law firm at the most competitive price.  In choosing a trademark lawyer, be mindful to take into account the following factors: What is their trademark clearance and prosecution experience before the … Continue Reading

Trademark Rules of Practice Section 2.101- Commencing an Opposition

Posted in Handling Your TTAB Case, Trademark Cancellation, Trademark Litigation Basics, Trademark Opposition
An opposition proceeding is commenced by filing in the Office a timely notice of opposition with the required fee. The notice must include proof of service on the applicant, or its attorney or domestic representative of record, at the correspondence address of record in the Office, as detailed in §§ 2.101(b) and 2.119. Any person … Continue Reading

What is the Trademark Trial and Appeal Board?

Posted in Handling Your TTAB Case, Trademark Cancellation, Trademark Opposition
The Trademark Trial and Appeal Board (TTAB) is an administrative board of the United States Patent and Trademark Office.  The TTAB hears and decides adversary proceedings between two parties, namely, oppositions (party opposes a mark after publication in the Official Gazette ) and cancellations (party seeks to cancel an existing registration). The TTAB also handles … Continue Reading

How To Choose A Trademark Lawyer: By The Letters

Posted in Connecticut Trademark, Handling Your TTAB Case, Trademark Cancellation, Trademark FAQ, Trademark Legal Costs, Trademark Litigation Basics, Trademark Opposition
Many of us learn best through the use of memory devices known as mnemonics. So in honor of all you Scrabble ® fans out there, here is a “G-R-E-A-T” way to interview and select a trademark lawyer to represent your legal interests before the Trademark Trial and Appeal Board:  “G” is for Geography.   Since trademark … Continue Reading