A substantial number of trademark opposition cases before the Trademark Trial and Appeal Board are settled prior to a final determination on the merits.   The Board encourages parties to engage in settlement discussions early in the process, and has made these discussions part of the mandatory discovery conference between the parties.

Do the parties take advantage of the opportunity to discuss trademark opposition settlement?   Quite often, the answer is no.   There are many reasons for this unwillingness to explore an amicable settlement to the dispute, including:

  • Personal animosity between the respective parties
  • Trademark bullying (discussed elsewhere in this Guide)
  • Trademark lawyers who do not wish to see an early resolution of the dispute
  • Legitimate legal and business rationale

When faced with a notice of trademark opposition, the first thing to do is to seek advice from a trademark opposition attorney who can explain the nature of the case, potential merits of the claim, likelihood of success, and options for settlement.  Litigants should realize that a trademark opposition is a civil litigation that can be long and protracted.  Therefore, it is best to understand the options available to the trademark applicant or trademark opposer before proceeding. 

Trademark opposition attorneys are well-versed in the complexity and detail of trademark opposition rules of evidence and procedure.  Most will provide a complimentary consultation with the party to enable it to make an informed decision on how to best proceed with their trademark opposition case.  The trademark opposition lawyer should also discuss its fee options, including either an hourly fee or flat-fee for representation based on the various stages of the case.

Be sure to speak first with an experienced trademark opposition lawyer — you will be glad you did.

When served with a Notice of Opposition or Petition for Cancellation, it is the first inclination of many parties to consider not hiring a trademark lawyer in an effort to save money. Is representing yourself in a trademark opposition or trademark cancellation proceeding a wise investment?  Probably not.

The Trademark Trial and Appeal Board (TTAB) is the administrative body of the United States Patent and Trademark Office that decides ex parte appeals, oppositions, trademark cancellations, and concurrent use proceedings. The Trademark Trial and Appeal Board permits parties to represent themselves, but strongly cautions that being represented by a qualified trademark attorney is advisable given the complexity of trademark opposition and trademark cancellation proceedings. If a party decides to represent itself, it will be expected to adhere by all rules of procedure that govern trademark opposition and trademark cancellation cases before the Trademark Board. These rules may be found in the Trademark Board Manual of Procedure and the Federal Rules of Evidence. The failure to follow the rules can have a detrimental impact and be fatal to a party’s case.

If a party receives a notice of trademark opposition or petition for cancellation, it is required to file an answer within 40 days of commencement of the case. The answer should either admit, deny, or claim that there is insufficient knowledge to either admit or deny the allegations contained in each paragraph of the notice of opposition or petition for cancellation. A party can also receive an extension of time in which to file its answer to a notice of opposition or petition for cancellation by seeking an extension from the opposing party or its attorney, or by filing a request with the Board.

Time limits for filing notices of opposition, petitions for cancellation, and requests for extensions of time are strictly enforced. If a trademark deadline is missed, it is important to file a motion to accept the late filed request with the Board, showing good cause to set aside the missed deadline.

It is always advisable to speak with an experienced trademark opposition lawyer or trademark cancellation lawyer as a first step in proceedings before the Trademark Trial and Appeal Board.  A skilled trademark attorney will be able to discuss the potential strengths and weaknesses of your case, as well as possible alternatives to costly litigation.

Parties to trademark oppositions have tools at their disposal that have the potential to save money on trademark opposition attorneys by bringing about a swift resolution of the dispute. This is the idea behind the Accelerated Case Resolution (ACR) program of the Trademark Trial and Appeal Board.

ACR allows for the parties to receive a prompt determination of their respective claims and defenses, without the delay and uncertainty of a standard trademark opposition case.  ACR is the result of a realization that parties often spent considerable sums of money on the preparation and filing of summary judgment motions. Historically, most summary judgment motions are denied, resulting in costly legal fees that do very little to bring about a final determination of the case.

In an effort to encourage parties to explore settlement options, the Trademark Board instituted rules requiring the parties to discuss claims, defenses, and settlement possibilities at the beginning of the case.  Under ACR, the parties may request that the Interlocutory Attorney act as a settlement mediator.  In order to take advantage of ACR, the parties should make a genuine effort to determine whether a settlement is achievable without the need for costly litigation.  This requires good-faith dealing by both parties and their attorneys.

If you are a party to a trademark opposition, be sure to ask your attorney about whether your case is a good candidate for ACR resolution.

Trademark applicants who are faced with a notice of trademark opposition have many online resources available to them in order to better acquaint themselves with the various statutes and rules that govern trademark opposition proceedings.  

The United States Patent and Trademark Office website is the first and primary resource for learning about trade Mark oppositions. 

Contacting a trademark opposition lawyer for a free initial consultation is another prudent course of action.

Trademark oppositions are heard before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office.  Each and every party, whether an applicant or opposer, must follow specific and detailed trademark rules found in the code of federal regulations (CFR) and set forth in the Trademark Board Manual of Procedure (TBMP). The TBMP contains mutliple chapters and subsections of rules pertaining to trademark opposition disputes. Chapters include some of the following subject areas:

1. General information
2. How to file an extension of time to oppose
3. Pleadings
4. Discovery
5. Stipulations and motions
6. Withdrawal; settlement
7. Trial procedure and evidence
8. Trial briefs and final decision

Each of the above chapters pertain to specific procedural phases of a trademark opposition case. The three major phases consist of pleadings, discovery, and trial. At each level of a trademark opposition case, there are numerous procedural and substantive requirements that must be met. While the Trademark Board permits individuals to represent themselves in a trademark opposition matter, it has very little patience for parties who fail to consistently follow the rules.

When faced with a notice of trademark opposition, it is advisable to immediately contact an experienced trademark opposition lawyer to review your case and discuss your rights and options moving forward. 

Speaking with a trademark notice of opposition attorney is often free for the first conversation. 

During this conversation, be sure to ask about the trademark lawyer fees and whether they will represent you for a flat fee rather than on an hourly basis.

Need advice on trademark opposition rules? Contact us now, and we’ll get back to you soon! We’re always ready to help.

A trademark opposition is the result of a third–party filing a notice of opposition against a trademark owner’s application for registration of their trademark. A notice of opposition must be filed within 30 days after publication of the trademark application the official Gazette of the United States patent and trademark office.

The notice of opposition must include, at a minimum, the following allegations:

1.  the name of the opposer

2.  an allegation that the opposer believes it will be damaged by registration of the trademark

if the opposer is a corporation, a person who is duly authorized must sign the notice of opposition, or, if the opposition is being filed by an attorney, then the attorney will sign on his/her clients behalf.

The applicant has 40 days in which to answer, move, or otherwise plead to the notice of opposition. Note that trademark oppositions are governed by the trademark board manual of procedure (TBMP) which comprises specific and detailed rules that the parties must follow during the course of the trademark opposition proceeding. The failure to follow the trademark board rules can result in your trademark opposition case being dismissed (if the opposer) or judgment in favor of the opposer (if the applicant). Therefore, it is vital to speak with a qualified trademark opposition lawyer as soon as possible.

A skilled trademark opposition attorney can help you assess and review any claims or defenses that you may have as well as discuss possible settlement options that could save you time and money with your trademark opposition dispute.

A trademark opposition proceeding is commenced by timely filing a Notice of opposition with the United States Patent and Trademark Office.  According to USPTO rules, any person who believes that he/she may be damaged may file an opposition against a pending trademark application.  While the term “any person” is construed broadly for purposes of filing a Notice of Opposition, the Trademark Trial and Appeal Board has nonetheless held that the potential opposer must have a real interest or direct and personal stake in the outcome.  In addition, the potential opposer must have a reasonable belief that he will be damaged if the registration issue.  The grounds for filing a notice of opposition against a pending trademark application include:

  • a likelihood of confusion with the opposer’s trademark
  • descriptiveness or genericness of the pending trademark
  • geographic descriptiveness of the pending trademark
  • dilution of the opposer’s trademark
  • fraud in the procurement of the trademark for which registration is sought

The complaint should set forth the basic facts giving rise to the claim.  For example, for a complaint alleging a likelihood of confusion, it is advisable that the legal elements of proving a likelihood of confusion be generally alleged, including that the parties’ marks are similar in sight, sound, and meaning and that the parties’ respective goods and/or trade channels are similar such that confusion is likely.

A properly plead complaint is vitally important in ensuring the success of a trademark opposition case.  Should a notice of opposition be legally or factually deficient, the defendant/trademark applicant can move to dismiss the complaint, leaving the opposer with a major legal challenge to their case and higher legal costs.

A qualified trademark opposition attorney should always be consulted to discuss options for filing and successfully proceeding with a trademark opposition.

 

 

 

To a trademark opposer, the filing of a trademark opposition is a serious matter with an uncertain outcome.  If an opposer loses a trademark opposition case, the trademarks on which it is relying to bring the opposition can be further weakened.  On the other hand, if a trademark applicant loses a trademark opposition then the application will be rejected, further jeopardizing the applicant’s plans to use the trademark on certain products and services.  Therefore, for both opposer and applicant, a trademark opposition poses unwanted risks to their respective trademarks that perhaps could be avoided by settling the case.

When is the Best Time to Settle a Trademark Opposition?

Generally, there are three (3) opportune times to attempt to settle a trademark dispute with another party:  These include:

  • Prior to the Filing of the Trademark Opposition – once a trademark cease and desist letter is served;
  • Prior to an Answer Being Filed –  the trademark applicant might consider first contacting the Opposer to determine what are their business reasons for filing the trademark opposition and whether some sort of Agreement can be reached without the need for litigation
  • During the Mandatory Settlement Conference– the parties to a trademark opposition proceeding are required to “meet and confer” – almost always by phone, to discuss the facts and allegations of the dispute and to determine whether a settlement may be achieved.  This conference takes place after the filing of the Answer during the early stages of the case

Remember that in trademark opposition cases, timing is everything.  Knowing when and how to approach your opponent to discuss settlement is best left to an experienced trademark opposition attorney.  This could make the difference between a long, protracted litigation and one that gets resolved quickly.

 

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. 

 

 

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.

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 trademark cancellation rules 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.

Need advice on trademark cancellation rules? To discuss the possible representation of your company in a Trademark Cancellation matter, contact us now.