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 August 30, 2011

Petition for Cancellation Grounds: Trademark Abandonment

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.

 


Posted by James Hastings on March 07, 2011

What is the Trademark Trial and Appeal Board?

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.

Posted by James Hastings on March 04, 2011

How to Choose a Trademark Law Firm

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 USPTO?
  • Do they charge a flat-fee for their trademark lawyer services or is it hourly-based?
  • Does the trademark lawyer  place a limit on what he or she will charge for their trademark services?
  • What is their litigation experience?
  • Do they place an emphasis on conflict resolution?
  • Are they willing to discuss alternative fee arrangements?\
  • Do they have litigation experience before the Trademark Trial and Appeal Board?
  • Have they ever represented a client  in bringing or defending a Notice of Opposition?
  • Have they ever represented a client in bringing or defending a Petition for Cancellation?

 

 

Posted by James Hastings on January 11, 2011

Trademark Rules of Practice Section 2.101- Commencing an 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 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.

 

Posted by James Hastings on January 11, 2011

What is the Trademark Trial and Appeal Board?

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 interference and concurrent use proceedings, as well as appeals of final refusals issued by USPTO examining attorneys within the course of the prosecution of applications.   The Trademark Trial and Appeal Board is located in the offices of the United States Patent and Trademark Office in Alexandria, Virginia.

A useful guide to TTAB practice is the Trademark Board Manual Procedure (TBMP), which provides practitioners and brand owners with basic information generally useful for litigating cases before the TTAB. The manual does not modify, amend, or serve as a substitute for any existing statutes, rules, or decisional law and is not binding upon the TTAB, its reviewing tribunals, the Director, or the USPTO. Rather, the TBMP describes current practice and procedure under the applicable authority, as of the manual’s issue date.

For complete information about TTAB Rules of Practice, the Trademark Board Manual of Procedure must be read in conjunction with the August 1, 2007 Federal Register notice detailing significant changes to the TBMP.

If you or your company are a party to a trademark opposition or trademark cancellation proceeding in familarity with trademark law, and the TTAB Rules of Practice are essential. 

Posted by James Hastings on January 11, 2011

How To Choose A Trademark Lawyer: By The Letters

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.