U.S. trademark opposition proceedings can be done within a reasonable time and budget
TTAB proceedings have a reputation for being extremely costly and time consuming. Yet, this is not necessarily true. Depending on your goals, it is possible to favorably resolve a TTAB contested proceeding in a relatively short amount of time and within a reasonable budget. Here’s just one important fact to consider:
While the cost of a fully-litigated trial on the merits before the U.S. Trademark Trial and Appeal Board can be $75,000 or more, less than 5% of trademark cancellation and opposition proceedings before the TTAB reach a decision on the merits.
Below are some additional facts to keep in mind if you have a contested proceeding before the Board:
1. Jurisdiction. The U.S. Trademark Trial and Appeal Board (TTAB) is limited to deciding issues of registration only. Accordingly, it only has the authority to either cancel an existing trademark registration or refuse a trademark application from maturing to registration. The TTAB cannot order a party to cease using its trademark in commerce. Nor does it have the authority to award attorney’s fees or damages.
2. Duration of proceeding. While it is not uncommon for TTAB proceedings to last one to two years, this is generally true in the following limited circumstances:
- one or more parties file a potentially dispositive motion that suspends proceedings
- the parties agree to suspend proceedings to engage in settlement discussions
- the parties consent to extend all applicable discovery and trial dates for various scheduling reasons
- the TTAB administrative backlog to rule on motions further delays the proceedings
3. Costs. The costs of opposition proceedings vary depending on how far into the process the case proceeds and whether it can be resolved prior to trial. Since approximately 95% of all Board proceedings settle before trial, costs can be greatly reduced the earlier the parties are able to negotiate an amicable settlement. Quite often, it is possible for parties to settle the matter between the initial discovery conference and the opening of the discovery period. In such cases, costs can be as little as US US$5,000-US$7,500. If the full discovery period is undertaken without settlement, discovery can range between US$25,000 on the low side to US$60,000 on average. The trial phase, including witness declarations, exhibits and briefing has an average range of approximately US$20,000-US$35,000.
4. Discovery period. Discovery is often the most expensive phase of an Opposition proceeding. Discovery is where the parties gather evidence from the other party that supports or refutes its claims. Typical discovery tools include:
- Requests for production of documents
- Requests for admissions
The discovery period usually lasts seven to eight months, and includes the opportunity to designate expert witnesses, which is rare in Board proceedings. The discovery period can be extended by consent of the parties, or suspended in instances where there is a motion pending before the Board. If discovery is suspended for the Board to rule on a motion, the current backlog for the Board to issue a ruling is approximately 4-5 months. Discovery can also be extended by consent of the parties to engage in settlement discussions. At the end of the discovery period, or any time prior, either party may file a motion for summary judgment on any or all issues. This is an expedited process wherein the moving party asks the Board to make a final and early ruling based on the fact there exist no genuine issues of material fact and that the Board should rule on the merits as a matter of law.
5. Settlement. Oppositions and trademark cancellation proceedings can be withdrawn with the consent of the other party. This usually occurs in cases where a settlement is achieved. Examples of settlement terns include:
- the applicant agrees to withdraw its application;
- restricts the goods in its identification; and/or
- consents to use-based restrictions
If an Opposer unilaterally withdraws an opposition without the consent of the Applicant, then judgment will enter against the Opposer in favor of the Applicant and the application will proceed to registration. This could hurt the Opposer’s attempts to enforce the same mark against third-parties in the future. The Board has no authority to award attorney’s fees or damages so that would not be an issue of concern.
Editor’s Note: if you are an international company or foreign trademark associate that has questions about TTAB proceedings, please contact us.