This is a second-part of an article regarding U.S. Trademark Opposition strategies.
U.S. trademark opposition proceedings need not be expensive or protracted. This is one of the surprising conclusions for global trademark owners who seek to protect their rights in the United States.
Commencement of action. Under U.S. law, trademark applications that have been approved by the Examining Attorney are published in the Official Gazette of the USPTO. During the publication period, any third-party has 30 days to oppose the trademark application on a wide variety of grounds. Alternatively, the potential Opposer can request extensions of time to file the opposition of up to 90 days.
Phases of Proceeding. United States trademark oppositions are primarily heard before the U.S. Trademark Trial and Appeal Board (TTAB), the adjudicative body of the USPTO. The proceeding has three distinct phases:
- Pleadings. The complaint is called a Notice of Opposition, in which the Opposer sets forth a short and plain statement of its legal standing and grounds for opposing the subject application.The Notice of Opposition should set forth in short detail, the grounds for the opposition. Typical grounds include: (a) likelihood of confusion with a preexisting trademark registration or common law rights of the Opposer; (b) the Applicant’s mark, when used in association with the goods, is merely descriptive and thus not capable of registration on the Principal Register; and (c) the Applicant had a lack of bona-fide intent to use its mark on some or all of the goods at the time of the filing of its application. Once the Notice of Opposition is filed, the Applicant will file its Answer, together with any affirmative defenses that it wishes to plead. In some cases, the Applicant may, if warranted, file a petition to cancel the Opposer’s U.S. trademark registrations that form the basis of the notice of opposition.
- Discovery. This is the phase of the case where the parties are permitted to seek relevant information or documents from the other party that support its claims and defenses. These may include interrogatories, requests for production of documents, and requests for admissions. Either party is also entitled to take discovery depositions of relevant witnesses, including third-parties. A party can object to any discovery request that it deems to be harassing or outside the scope of relevant issues of the proceeding. This being said, parties are obligated to respond in good-faith to any and all proper discovery requests, and should not interpose objections on any meritless grounds or for the purpose to delay proceedings.
- Trial. In the TTAB, trial testimony is submitted via written declarations and by Notice of Reliance, together with any documentary exhibits. The Federal Rules of Evidence govern the proper way to introduce evidence and what is required to do so. In addition, TTAB trial testimony procedure that is specific to opposition and cancellation proceedings may be found in the Trademark Board Manual of Procedure (TBMP).
Helpful hint: Consider an early settlement. The discovery conference provides a good opportunity for the parties’ counsel to freely discuss the merits of their clients’ respective positions and likelihood of success. During this time, they will also discuss any possible settlement options. In over 94% of cases, the contested proceeding settles before a full trial on the merits. Accordingly, it is vitally important for trademark practitioners to be familiar with U.S. Trademark Trial and Appeal Board practice and procedure. By doing so, trademark counsel can assist its clients in creating opportunities for an early settlement that furthers their legal and business goals.