When your company is faced with a trademark opposition, there are many misconceptions of what it is and what it is not. Be sure to have a clear understanding of what to expect to help guide your decision making process.
Governing Rules. Trademark oppositions in the United States are heard before the U.S. Trademark Trial and Appeal Board (TTAB). Proceedings before the Board are governed by various federal statutes and administrative rules, including the Lanham Act, Trademark Rules of Practice, as well as the Federal Rules of Civil Procedure. How the Board may rule in a particular case is largely influenced by decisions in prior cases. These include the holdings of the TTAB as well as the decisions of the Court of Appeals for the Federal Circuit. Litigants should consult the Trademark Board Manual Procedure for all rules applicable to proceedings before the Board.
Phases of Litigation. As a contested civil litigation between two parties, a trademark opposition consists of several distinct phases. These include pleadings, discovery, and trial. Each one is briefly summarized below:
- Pleadings. The complaint is known as a Notice of Opposition (“Notice”). Any party that believes that it will be damaged by the registration of another party’s trademark may file an opposition during the proscribed period for doing so. The Notice of Opposition should include a short and plain statement of the claim showing that the Opposer is entitled to relief and the demand for the relief sought. The most common grounds for a Notice of Opposition are likelihood of confusion, descriptiveness, and lack of a bona fide intention to use the mark in commerce at the time of filing. An Answer to the Notice must be filed after 30 days of service, and may include affirmative defenses and counterclaims if applicable.
- Discovery. The discovery phase is often the most lengthy and protracted phase of litigation. Discovery may include interrogatories, requests for production of documents, requests for admissions, and depositions. The purpose of discovery is to gather relevant information and documents that tend to support one’s own case, or alternatively, discredit the legal position of one’s adversary. The discovery period is set by the Board, and each party has 180 days to conduct relevant discovery.
- Trial. Commencing 60 days after the close of discovery, the trial period begins with the Opposer’s 30 day testimony period, followed by the Applicant’s 30 day testimony period, and the Opposer’s 15 day rebuttal. Interestingly, a trial before the TTAB is unlike other civil proceedings, in that the “trial” is all on the papers — there is no live trial before judges. Instead, the parties submit their evidence in the form of notices of reliance and trial briefs to establish the facts and legal support necessary to prevail. Notices of Reliance generally reference to documents, deposition testimony, and other information gathered in the discovery process, and in certain situations, during the trial phase of the case.
How to Get Started. In evaluating a U.S. trademark opposition, it is important to have knowledge of your own case, as well as that of your adversary. Therefore, it is best to first conduct a search of the other party’s trademarks and common law uses that may be available on the internet or other publicly available sources. Once this is done, it is best to discuss the matter with a qualified trademark opposition attorney who will be able to discuss with you how such proceedings work, the potential attorney’s fees involved, as well as your options moving forward.