Trademark Opposition & Cancellation Guide - Trademark Best Practices For In-house Counsel & Brand Owners

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.  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.  For example, for a complaint alleging a likelihood of confusion, it is advisable that the legal elements of proving a likelihood of confusion be generally alleged, including that the parties' marks are similar in sight, sound, and meaning and that the parties' respective goods and/or trade channels are similar such that confusion is likely.

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.

A qualified trademark opposition attorney should always be consulted to discuss options for filing and successfully proceeding with a 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 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. 

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.

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.

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.

As a trademark lawyer that handles trademark opposition and trademark cancellation cases, I have a simple philosophy in dealing with the business and legal challenges that my clients face as a result of being involved in litigation proceedings before the Trademark Trial and Appeal Board.  

1.  Listen to the Client

It is often difficult for people to truly listen to the other person while having a conversation.  This is doubly true when it comes to a trademark attorney listening to his or her client.  What are the client's needs?  What is their preferred outcome?  What are their cost constraints?  These and many other questions need to be answered prior to engaging in the attorney/client relationship.

2.  Be Respectful of Your Client's Money

Many trademark attorneys operate under a scorched-earth policy, where they believe that the best way to service their client's needs is to be highly aggressive, both in dealing with opposing counsel and the amount of paper that they generate as part of the case.  It it my experience that part of this aggression is economic in nature:  if a trademark attorney is charging hourly for his services, then it is in his or her interest to generate as many billable hours as possible as part of the trademark opposition case.  Yes, you heard me right!  Is this the rule?  Certalnly not.  But you should be mindful of hiring attorneys who will not discuss with you a flat-fee option or at the very least, a cap on their fees for the case.

3. Be Respectful of Opposing Counsel

Having a pleasant and respectul working relationship with the attorney for the other side is essential to best serving the needs of your client. Why?  Because by doing so, this often saves the client money in attorney's fees.  If I am able to cooperate with opposing counsel during the case, many potential disputes regarding the discovery process can be avoided, leading to less time (and billable hours) spent on fighting and more time on seeking an amicable resolution that is in the best interests of my client.

There are many fine trademark attorneys who adhere to the above tenets of professional collegiality.  They are the ones who are a pleasure to deal with and who quite often best serve the interests of their clients.

A petition for cancellation of a U.S. trademark registration is available to any party who believes that an already existing federal trademark registration should not be allowed to remain an active registration due to a variety of grounds, including abandonment of the trademark.  What is meant by "abandonment" and how is it proven?

In order to successfully bring a case for trademark abandonment, a plaintiff (petitioner) needs to prove the following elements by a preponderance of the evidence:

1.  non-use of the trademark for at least 3 consecutive years by the trademark owner; and

2.  an intent not to resume use of the trademark by the owner

Section 45 of the Trademark Act goes on to define "abandonment" of a trademark registration as

When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. "Use" of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.

In you or your company have received a petition for cancellation, it is important to quickly act on the complaint and follow Trademark Trial and Appeal Board rules of procedure.  The best way to determine your rights and legal options in a petition for cancellation matter is to speak to a trademark cancellation lawyer.  If you fail to do so, there is the possibility that your registration could be cancelled, thereby exposing your valuable brand to further peril.

If you have any questions regarding your trademark cancellation matter, please feel free to contact me and I will be happy to provide you with a complimentary consultation.

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 a Petition for Cancellation (in the case of a Cancellation).  The TTAB assigns an interlocutory attorney to each opposition or cancellation proceeding.  The interlocutory attorney is responsible for setting the discovery and trial schedule and all deadlines and actions that relate to the case, as well as hearing motions brought by either party.

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 who believes that he, she or it would be damaged by the registration of a mark on the Principal Register may file an opposition addressed to the Trademark Trial and Appeal Board and must serve a copy of the opposition, including any exhibits, on the attorney of record for the applicant or, if there is no attorney, on the applicant or on the applicant’s domestic representative, if one has been appointed, at the correspondence address of record in the Office. The opposer must include with the opposition proof of service pursuant to § 2.119 at the correspondence address of record in the Office. If any service copy of the opposition is returned to the opposer as undeliverable, the opposer must notify the Board within ten days of receipt of the returned copy. The opposition need not be verified, but must be signed by the opposer or the opposer’s attorney. Electronic signatures are permissible and required for oppositions filed through ESTTA.

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 law if federal in nature, is really does not matter if your lawyer’s office is in suburban Des Moines even though your company is located in New Jersey.  This is especially true since the overwhelming majority of cases before the Trademark Trial and Appeal Board are submitted on the papers – meaning that your attorney’s physical presence in the Trademark Office is never required.

“”R” is for Rent.   If your lawyer is a partner in a large firm with offices located in the top floor of an impressive building in a wonderful city, chances are you will help to pay for the luxury of remaining in that location in the form of higher hourly rates.  In fact, a recent survey by Incisive Legal Intelligence on national average hourly billing rates supports this point. 

“E” is for Experience.    When we think of experience, the best lawyers are the ones not only with subject matter knowledge, or even a history of handling the same types of cases.  In fact, these are the minimum requirements of any “good” lawyer.   What makes a great lawyer is one who is able to achieve your desired results in the least amount of time for the least amount of money while exposing you to the least amount of risk.  Sounds simple?  It isn’t.  

“A” is for Aptitude.   The Trademark Board Manual of Procedure is like a big instruction booklet that comes with your child’s toy car – with the big difference being that if your trademark lawyer doesn’t know how to successfully put together a trademark opposition or cancellation, you may find yourself losing more than just a toy.

“T” is for Timing.   To many lawyers, it’s “time” that is everything – as in billable hours.   That is why hourly fee arrangements continue to remain so popular among law firms.    In today’s business environment, what matters are results.  Therefore, always insist that your attorneys agree to a flat-fee arrangement when representing you and your company in a United States Patent and Trademark Office case.   Successful results are often the product of preparation and timing – not the number of hours expended.