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 being filed, another explanation could be that trademark owners are making the protection of their valuable trademarks and brand names a priority. Filing a trademark opposition in the United States Patent and Trademark Office can be a valuable use of a company’s legal budget when compared to a trademark infringement action in the United States district courts. In a federal court action, not only can the risks be greater and the legal expenses higher, but quite often litigants in trademark infringement cases are less likely to settle if they have invested considerable product development and marketing dollars into a new trademark.
2013- Summary of TTAB New and Pending Matters
Trademark opposition and trademark cancellation figures for 2013 include the following (increases over the preceding year are indicated in parentheses):
- Extensions of time to oppose: 16,939 (negligible change)
- Trademark Oppositions filed: 5,278 (+2.3%)
- Trademark Cancellations filed: 1,513 (+3.4%)
Most interestingly, the TTAB’s productivity increased in number of cases decided (+26.3%) while decreasing in the amount of average total pendency of trial cases (-6.8%). That being said, while the average total pendency of cases that proceeded to trial was 189.5 weeks (hardly a “rocket docket”), it may be explained in part by cases being stayed pending decisions on discovery motions and/or stays due to on-going settlement discussions. For brand owners considering opposing a trademark application, there are several key takeaways:
- Extensions of Time are Popular. Filing an extension of time of an additional month to consider whether to file a file a notice of opposition makes sense. The extension permits trademark owners to discuss the matter with their trademark attorney, and gather additional facts to determine whether a filing a trademark opposition is a prudent course of action.
- More Oppositions are Being Filed. Trademark owners are finding inter-partes proceedings before the U.S. Trademark Trial and Appeal Board to be a viable trademark protection alternative to U.S. District Court litigation.
- Trademark Cancellations are on the Rise. A petition to cancel a trademark registration is often filed as the result of a trademark application being initially refused by the U.S. Patent and Trademark Office based on the existence of a preexisting registration deemed to be confusingly similar. The applicant will then file a Petition to cancel the cited registration so that its application can mature to registration.
Opposing a trademark application or seeking to cancel a trademark registration are important components of an effective United States trademark protection and portfolio management strategy. Brand owners and companies that are serious about protecting their valuable brand assets in the United States should consult with their U.S. trademark attorneys on how to best formulate a trademark portfolio protection plan.