The Trademark Trial and Appeal Board recently released its TTAB filing statistics for fiscal year 2018.   These updated figures include year-to-year changes in the filing of appeals, notices of oppositions, and petitions for cancellations.  It also provides useful information on the disposition of cases.

Highlights include the following:  (percentage in parentheses signifies change over 2017)

I.   Filings

  • Appeals: 3,223; (+2%)
  • Extensions of time to oppose: 19,208;  (+3.9%)
  • Oppositions: 6,496 (+5.5%)
  • Cancellations: 2,253 (+7.2%)

II.   Contested Motions

  • # of decisions issued:  1,082  (+9.2%)
  • # of motions resolved by decision: 1318  (+6.5%)
  • Average pendency:  9.4 weeks  (+20.5%)
  • # of cases with motions awaiting decision:  165 (+12.2%)

III.    Trial Cases and Appeals Pendency

  • Appeals:  35.8 weeks (-7.8%)
  • Trial Cases: 140.3 weeks (-10.8%)
  • ACR Trial Cases:  106.3 weeks (-11%)
  • # of ACR Cases decided:  19 cases
  • Awaiting decision at end of period:  130 cases (+39.8%)

Conclusions

These most recent TTAB statistics yield some interesting observations:

  1.   TTAB litigation is increasing.   Opposition and cancellation proceedings are up on average approximately 6% combined.  This could be due in part to greater brand enforcement efforts being undertaken as a result of a stronger economy.  With regard to cancellations, the USPTO has made it quite clear that “deadwood” registrations that contain goods or services that are no longer used are subject to cancellation either in whole, or in part.  Therefore, the increase in both opposition and cancellation filings could be for offensive as well as defensive purposes.
  2.  There is increased motion practice.   Although both the Board and the Federal Rules encourage the just and speedy resolution of contested proceedings, and for both parties to cooperate fully, this sadly is not always the case.  While it cannot be proven, the failure to cooperate often results in protracted proceedings, including greater motion practice and higher attorney’s fees.
  3.  TTAB is focused on speedier resolution of cases.   The TTAB has made a commitment to several things that will help shorten the inter-partes cases lifecycle, including encouraging the parties to stipulate to Accelerated Case Resolution (ACR) procedures, engage in mandatory discovery conferences where settlement options are explored, and further mandate the cooperation between counsel.

Editor’s Note:   Parties are encouraged to protect their trademark rights at all times.   This is best done through proper monitoring and enforcement.  Should a trademark opposition or trademark cancellation proceeding be necessary to enforce a brand owner’s rights, it is recommended to speak with a qualified trademark attorney experienced in TTAB proceedings.

 

Over 5,000 U.S. trademark oppositions are filed against trademark applications every year.  Often, the opposer is a competitor of the applicant or a company that believes that it would be damaged if the U.S. trademark application were to proceed to registration.

Here are considerations to take into account when determining whether to file a U.S. trademark opposition:

1.   Jurisdiction.   The Trademark Trial and Appeal Board (“TTAB”) is the adjudicative body of the U.S. Patent and Trademark Office that is responsible for, among other things, trademark opposition and trademark cancellation disputes.  The TTAB’s jurisdiction is limited to registration rights only; it cannot enjoin a party’s use of a trademark, nor can it award attorney’s fees.   Nonetheless, it has proven to be the preferred jurisdiction for trademark registration disputes in the United States.

2.  How to Commence.   A trademark opposition is commenced by filing a Notice of Opposition.  The Notice must set forth a brief explanation of the Opposer’s standing as well as the grounds for the notice of opposition.   The Applicant then has 40 days to file an answer to the Notice, or to otherwise seek an extension or file other pleadings, such as a motion to dismiss.

3.  Grounds.   There are several grounds on which a party may bring an opposition.  These include that the applicant’s mark is:

  • likely to cause confusion with the Opposer’s prior trademark registration or common law rights
  • merely descriptive of the goods or services for which the mark is being applied
  • generic of the goods or services
  • not entitled to registration due to fraud
  • primarily merely a surname
  • geographically misdescriptive
  • applicant lacked a bona-fide intention to use the mark (in the case applications based on intent to use)

A full list of the available grounds for filing a Notice of Opposition, including opposition to an International rights application based on Section 66a of the Trademark Act, may be found here.

4.  Procedure.   U.S. trademark opposition proceedings before the TTAB are governed by relevant U.S. statutes; the Code of Federal Regulations (“CFR”); the Federal Rules of Civil Procedure (“FRCP”); and Federal Rules of Evidence (“FRE”).    A complete explanation of TTAB rules and processes may be found in the Trademark Board Manual of Procedure (“TBMP”).

5.  Process.   A trademark opposition is a civil litigation heard before the TTAB.  Like other civil matters, trademark oppositions follow three, distinct phases:  pleadings, discovery, and trial.   The discovery phase is often the longest and well as most costly.  Discovery may include written interrogatories, requests for production of documents, admissions, depositions, and various motion practice.

6.  Settlement Alternatives.  Prior to filing a U.S. trademark opposition, it is advisable to assess the full merits of your company’s potential case and what steps can be taken to achieve your brand protection goals without the need for a full trial on the merits.  Settlement discussions with the applicant are encouraged and often undertaken with varying degrees of success.  This can can occur either before filing the notice of opposition, or at any time during the trademark opposition proceeding.

Note:  The author represents global corporations in U.S. trademark oppositions and is a member of the INTA Panel of Trademark Mediators.

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A recent trademark cancellation action by Major League Baseball against an individual who had a registration for sports apparel is another victory for well-established brand names.

In Major League Baseball Properties, Inc. v. Christopher Webb, MLB petitioned to cancel U.S Reg. No.  4472701 for the mark MAJOR LEAGUE ZOMBIE HUNTER and design, for “clothing, namely, short and long sleeve t-shirts, sweatshirts, jackets, baseball hats, and beanies,” in Class 25, registered on the Supplemental Register.   The grounds were a likelihood of confusion under Section 2d of the Trademark Act, as well as dilution.  MLB also asserted that Respondent’s registration was void ab initio since Respondent never had a bona fide intent to use its mark in commerce as well as fraud on the Trademark Office.  In support of its standing and likelihood of confusion and dilution claims, MLB introduced four of its trademark registrations for MAJOR LEAGUE BASEBALL, including the MAJOR LEAGUE BASEBALL word mark, MAJOR LEAGUE BASEBALL and Design mark and two design marks of its iconic baseball player with bat and ball logo.  Three of MLB’s registrations were for apparel goods in International Class 25.

In a preliminary ruling on MLB’s motion for summary judgment on Respondent’s lack of bona fide intent to use its own mark in commerce and fraud, the TTAB granted  summary judgment on MLB’s standing and no bona fide use of Respondent’s mark on sweatshirts, jackets, baseball hats, and beanies. The TTAB denied Petitioner’s motion for summary judgment on no bona fide use of Respondent’s mark on t-shirts and fraud.

MLB claimed that its trademarks are strong, which would entitle it to a wide latitude of protection for likelihood of confusion purposes.  Based on its evidence of extensive sales, advertising, and wide spread recognition of the MLB brand, the Board agreed.  It went to to  conclude that the parties’ goods (at least some of them) were legally identical, which would presume that the channels of trade and classes of purchasers are the same.    Finally, it observed that the parties’ design marks gave a confusingly similar commercial impression. Based on a totality of the circumstances, the Board found the Respondent’s mark to be confusingly similar to MLB’s marks and accordingly ordered Respondent’s registration be cancelled.

Trademark cancellation tip for large brands  Well-established brands are often successful in trademark cancellation proceedings based on the strength of their trademarks and supporting evidence.  Therefore, it is important for brand owners to create a repository of historical sales and advertising figures, as well as marketing and advertising specimens and trade channels that shows widespread use and consumer recognition of its marks.

The United States Patent and Trademark Office recently released its TTAB filing and performance statistics for the fiscal year 2015.

While there have not been any substantial deviations from 2014 filing statistics, the recent Supreme Court decision in B & B Hardware, Inc. v. Hargis Industries, Inc. will most likely result in an increase in the number of trademark opposition proceedings instituted in the U.S. Trademark Trial and Appeal Board.  This is due to the fact that trademark opposers may now perceive the TTAB to be a superior forum in which to contest a trademark applicant’s right to register, and ultimately use, a trademark in commerce.

Trademark Trial and Appeal Board Filings – FY 2015

The following is a breakdown of relevant TTAB filings for the fiscal year 2015, with percent changes over FY 2014 filing figures indicated in parentheses:

  • Trademark oppositions: 5,290 (-4%)
  • Trademark Cancellations:  1,763 (+2.3%)
  • Extensions of time to oppose:    17,132   (-1%)
  • Appeals:  2,992 (+7%)

As one can see, with the exception of the number of appeals filed, there has been little change in year over-year filing volume between FY 2015 and FY 2014.  The number of trials for the year was 123 compared to 132 in FY 2014.

Of particular note is the low number of cases decided under the TTAB’s accelerated case resolution program (ACR).  Once touted as a less costly and more streamlined alternative to traditional proceedings, there were only 10 cases decided under ACR procedures in FY 2015. Even more surprising in the negligible difference between the pendency of normal cases vs. ACR proceedings, with the average total pendency of trial cases being 161.2 weeks versus 138.6 weeks for ACR cases.

The volume of trademark opposition case filings will be watched closely in FY 2016 to see if predictions come true as to whether there will be an increase in notice of trademark oppositions filed by brand owners seeking to take advantage of the strategic ramifications of the B & B Hardware decision.

Let’s suppose that your business has filed a trademark application, and it has been approved for registration by the United States Patent and Trademark Office.  Does that mean that you now have been awarded a trademark registration?  No!

Each and every trademark application that gets approved for registration first must be published in the Official Gazette of the Trademark Office to permit any third-party that believes that your trademark is confusingly similar to their own to oppose your trademark application. This is what is known as a trademark opposition.

In selecting a trademark opposition lawyer, you should keep in mind the following tips:

  • Experience – has this attorney represented clients in other trademark opposition cases before the Trademark Trial and Appeal Board?
  • Fees – does the trademark opposition attorney represent clients on a flat-fee basis, rather than an hourly rate?  
  • Philosophy – is the attorney open to listening to your needs and preferred outcomes both in time and expense to your business?

Since trademark opposition cases before the Trademark Trial and Appeal Board (TTAB) fall within the exlusive jurisdiction of the United States Patent and Trademark Office, you may hire a trademark opposition lawyer in any state in the United States to represent your interests before the TTAB.  By doing a little homework and asking the right questions, you will better protect your trademark rights and interests.

 

 

 

The Trademark Trial and Appeal Board (“TTAB”) of the United States Patent and Trademark Office (“USPTO”) is the administrative forum that adjudicates all trademark opposition and cancellation proceedings that are filed in the United States Patent and Trademark Office.   A case is commenced by the filing of a Notice of Opposition (in the case of an Opposition) or a Petition for Cancellation (in the case of a Cancellation).  The TTAB assigns an interlocutory attorney to each opposition or cancellation proceeding.  The interlocutory attorney is responsible for setting the discovery and trial schedule and all deadlines and actions that relate to the case, as well as hearing motions brought by either party.