Insight on Opposition & Cancellation Proceedings
In a recent decision under Section 2(d) of the Trademark Act, the United States Trademark Trial and Appeal Board analyzed what factors make a trademark arbitrary and strong for purposes of a likelihood of confusion analysis. Indigo Star, Inc. and H2d Properties, Inc. v. Patti’s Enterprises, L.L.C.
Applicant filed two applications for the trademark THE…
The U.S. Trademark Trial and Appeal Board has ruled in favor of Pepsi-Cola in a trademark opposition case filed by the New York beverage giant against a pro se applicant in the matter of Pepsico, Inc. v. Jay Pirincci.
The Applicant had sought registration of the mark CAN DEW for nutritional drink mixes to…
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…
A U.S. trademark cancellation proceeding is a legal case, similar to a civil lawsuit (although it is by contrast processed in the Trademark Trial and Appeal Board).
Trademark owners often have situations where their trademark application has been refused by the U.S. Patent and Trademark Office due to a preexisting trademark registration.
If the refusal…
Companies often wonder what recourse that may have when another party is infringing on their valuable trademark rights. In proceedings before the United States Patent and Trademark Office, two causes of action generally come to mind: opposing a trademark application and canceling a trademark registration. It is helpful to briefly distinguish the elements of…
The resolution of trademark opposition and trademark cancellation motions by telephone conference is discretionary with the Trademark Trial and Appeal Board. Generally, the Board may schedule a conference at the request of one or more parties, or on the Board’s own initiative.
Contacting the Trademark Board attorney. If a party believes that a matter may…
In an effort to facilitate case management and to reduce litigation expenses, the Trademark Trial and Appeal Board permits certain motions to be hear via telephone conference. These include motions in the pleading phase, discovery phase, and/or the trial phase of a trademark opposition or trademark cancellation proceeding.
Examples of motions that the board may…
Once a trademark opposition proceeding has been commenced, there are several procedural and substantive means by which the parties may bring about an amicable resolution of their dispute. Knowing how to effectively negotiate a favorable outcome is essential.
Substantive strategies to settle a trademark opposition proceeding include:
1. By Amendment: by narrowing the identification…
The Trademark Trial and Appeal Board offers a helpful frequently asked questions section that provides basic information regarding the trademark opposition and trademark cancellation process. Various Trademark Trial and Appeal Board subjects are summarized, including:
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The term “trademarking” is one often used by businesses and almost never used by trademark lawyers. The reason? Because the phrase “trademarking” does not accurately reflect how US trademark law and protection works.
Under US trademark law, trademark rights are based on use of the trademark or brand name in commerce. Therefore, strictly speaking, registration…
