Trademark Oppositions & Cancellations
Statute and Rules of Practice.
All proceedings before the Trademark Trial and Appeal Board ("TTAB" or "Board") are governed by the Lanham Trademark Act of 1946, as amended, ("Act of 1946"
or "Act"), 15 U.S.C. § 1051 et seq.; the rules of practice in trademark cases (commonly known as the Trademark Rules of Practice), which may be found in Parts 2 and
7 of Title 37 of the Code of Federal Regulations ("CFR"); the rules pertaining to assignments in trademark cases, which may be found in Parts 3 and 7 of 37 CFR; and
the rules relating to representation of others before the United States Patent and Trademark Office which may be found in Part 10 of 37 CFR. The United States Patent
and Trademark Office (“USPTO” or “Office”) rules governing procedure in inter partes proceedings before the Board are adapted, in large part, from the Federal Rules
of Civil Procedure, with modifications due primarily to the administrative nature of Board proceedings.
Inter partes proceedings before the Board are also governed by the Federal Rules of Civil Procedure ("Fed. R. Civ. P."), except as otherwise provided in the
Trademark Rules of Practice, and "wherever applicable and appropriate"; and by the Federal Rules of Evidence ("Fed. R. Evid.").
The Board is located at 2900 Crystal Drive, Ninth Floor, Arlington, Virginia 22202-3514.
The mailing address of the Board is:
Commissioner for Trademarks
2900 Crystal Drive
Arlington, Virginia 22202-3514
Decisional Law.
Proceedings before the Board are also governed, to a large extent, by precedential decisions in prior cases. These decisions include those of the Board itself, as well
as the decisions of the Court of Appeals for the Federal Circuit (which determines appeals from decisions of the Board); the Court of Customs and Patent Appeals
(predecessor of the Court of Appeals for the Federal Circuit); and the Director of The United States Patent and Trademark Office (formerly the
Commissioner of Patents and Trademarks), who determines petitions seeking review of Board actions on procedural matters. Decisions of the Board, the Director, and
the Court of Appeals for the Federal Circuit appear in the United States Patent Quarterly ("USPQ"), a periodical publication of The Bureau of National Affairs, Inc.,
Washington, D.C., and may also be found in Reed Elsevier, Inc.'s "LEXIS" legal database, and in the Intellectual Property Library of West Publishing Company's
WESTLAW database. Decisions that are designated by the Board "citable as precedent" or "for publication in full" are citable as precedent. Decisions which are not so
designated, or which are designated for publication only in digest form, are not citable authority. A nonprecedential or digest decision will, however, be considered in
determining issues of claim preclusion, issue preclusion, judicial estoppel, law of the case, or the like, provided that (1) a party to the pending Board proceeding, or its
privy, was also a party to the prior proceeding, and (2) a complete copy of the decision is submitted.
Jurisdiction of Board.
The Trademark Trial and Appeal Board is an administrative tribunal of the United States Patent and Trademark Office within the Office of General Counsel. The Board
is empowered to determine only the right to register. The Board is not authorized to determine the right to use, nor may it decide broader questions of infringement or
unfair competition.
Types of Board Proceedings.
The Board has jurisdiction over four types of inter partes proceedings, namely, oppositions, cancellations, interferences, and concurrent use proceeding:
The Board also has jurisdiction over ex parte appeals, that is, appeals from an examining attorney's final refusal to register a mark in an application.
General Description of Board Proceedings.
An inter partes proceeding before the Board is similar to a civil action in a Federal district court. There are pleadings (at least in an opposition or cancellation
proceeding); a wide range of possible motions; discovery; and briefs, followed by a decision on the case. However, because the Board is an administrative tribunal, its
rules and procedures necessarily differ in some respects from those prevailing in the Federal district courts. The principal difference is that proceedings before the
Board are conducted in writing, and the Board's actions in a particular case are based upon the written record therein. For example, the Board does not preside at the
taking of testimony. Rather, all testimony is taken out of the presence of the Board during the assigned testimony periods, and the written transcripts thereof, together
with any exhibits thereto, are then filed with the Board. Indeed, a party to a proceeding before the Board need never come to the offices of the Board at all, unless the
Board requests that the parties meet with the Board at its offices for a pre-trial conference pursuant to 37 CFR § 2.120(i)(2), or unless the party wishes to argue its case
at oral hearing (an oral hearing is held only if requested by a party to the proceeding).
An ex parte appeal, being appellate in nature, is a much simpler and shorter procedure, involving only the filing of briefs by the applicant and examining attorney, and, if
requested by the applicant, an oral hearing. The appeal to the TTAB is for the review of a Final Refusal to Register issued by an Examining Attorney. The appeal must
be filed within six months of the mailing date of the final refusal to register.
The Board includes both interlocutory attorneys and administrative trademark judges (known also as Board members). Interlocutory motions, requests, and other
matters not actually or potentially dispositive of a proceeding may be acted upon by a single Board judge or by a single interlocutory attorney to whom such authority has
been delegated. Decisions on the case, and on complex or contested motions that are potentially dispositive of the case, are rendered by a panel of at least three
Board judges. Stipulations or consented (or uncontested) motions to dispose of the proceeding in a certain manner may be decided per curiam by the Board.
Oppositions:
An opposition is a proceeding in which the plaintiff seeks to prevent the issuance of a registration of a mark on the Principal Register. "Any person who believes that he
would be damaged by the registration of a mark" may file an opposition thereto, but the opposition may be filed only as a timely response to the publication of the mark,
under Section 12(a) of the Act, 15 U.S.C. § 1062(a), in the Official Gazette of the USPTO.
An opposition proceeding is commenced by filing a timely Notice of Opposition, together with the required fee, in the Office. The opposition or the petition for
cancellation and the answer correspond to the complaint and answer in a court proceeding.
An opposition to the registration of a mark on the Principal Register must be filed prior to the expiration of the thirty-day period after publication of the mark in the Official
Gazette for opposition, or within an extension of time to oppose granted to the opposer or its privy. The filing date of an opposition is the date of receipt in the Office of
the opposition together with the required fee.
The Board notification allows the defendant 40 days from the mailing date of the notification in which to file an answer to the complaint.
Cancellations:
A cancellation proceeding is a proceeding in which the plaintiff seeks to cancel an existing registration of a trademark. The proceeding may only be filed after the
issuance of the registration. A petition for cancellation may be filed by "any person who believes that he is or will be damaged by the registration" of the mark.
A cancellation proceeding is commenced by the filing of a timely Petition for Cancellation, together with the required fee, in the Office. The opposition or the petition for
cancellation and the answer correspond to the complaint and answer in a court proceeding.
A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any person who believes
that he is or will be damaged, including as a result of dilution under section 43(a), by the registration of a mark on the principal register :
The Board notification allows the defendant 40 days from the mailing date of the notification in which to file an answer to the complaint.
Protective Order:
Under the new 2007 rule changes for Trademark Trial and Appeal Board proceedings, parties are required to abide by the Standardized Protective Agreement in
reference to confidential information disclosed during a cancellation or opposition proceeding. The Board's Standard Agreement can be found at the TTAB website.
New 2007 Rules.
The United States Patent and Trademark Office has amended the Trademark Rules of Practice (trademark rules) as follows:
All proceedings before the Trademark Trial and Appeal Board ("TTAB" or "Board") are governed by the Lanham Trademark Act of 1946, as amended, ("Act of 1946"
or "Act"), 15 U.S.C. § 1051 et seq.; the rules of practice in trademark cases (commonly known as the Trademark Rules of Practice), which may be found in Parts 2 and
7 of Title 37 of the Code of Federal Regulations ("CFR"); the rules pertaining to assignments in trademark cases, which may be found in Parts 3 and 7 of 37 CFR; and
the rules relating to representation of others before the United States Patent and Trademark Office which may be found in Part 10 of 37 CFR. The United States Patent
and Trademark Office (“USPTO” or “Office”) rules governing procedure in inter partes proceedings before the Board are adapted, in large part, from the Federal Rules
of Civil Procedure, with modifications due primarily to the administrative nature of Board proceedings.
Inter partes proceedings before the Board are also governed by the Federal Rules of Civil Procedure ("Fed. R. Civ. P."), except as otherwise provided in the
Trademark Rules of Practice, and "wherever applicable and appropriate"; and by the Federal Rules of Evidence ("Fed. R. Evid.").
The Board is located at 2900 Crystal Drive, Ninth Floor, Arlington, Virginia 22202-3514.
The mailing address of the Board is:
Commissioner for Trademarks
2900 Crystal Drive
Arlington, Virginia 22202-3514
Decisional Law.
Proceedings before the Board are also governed, to a large extent, by precedential decisions in prior cases. These decisions include those of the Board itself, as well
as the decisions of the Court of Appeals for the Federal Circuit (which determines appeals from decisions of the Board); the Court of Customs and Patent Appeals
(predecessor of the Court of Appeals for the Federal Circuit); and the Director of The United States Patent and Trademark Office (formerly the
Commissioner of Patents and Trademarks), who determines petitions seeking review of Board actions on procedural matters. Decisions of the Board, the Director, and
the Court of Appeals for the Federal Circuit appear in the United States Patent Quarterly ("USPQ"), a periodical publication of The Bureau of National Affairs, Inc.,
Washington, D.C., and may also be found in Reed Elsevier, Inc.'s "LEXIS" legal database, and in the Intellectual Property Library of West Publishing Company's
WESTLAW database. Decisions that are designated by the Board "citable as precedent" or "for publication in full" are citable as precedent. Decisions which are not so
designated, or which are designated for publication only in digest form, are not citable authority. A nonprecedential or digest decision will, however, be considered in
determining issues of claim preclusion, issue preclusion, judicial estoppel, law of the case, or the like, provided that (1) a party to the pending Board proceeding, or its
privy, was also a party to the prior proceeding, and (2) a complete copy of the decision is submitted.
Jurisdiction of Board.
The Trademark Trial and Appeal Board is an administrative tribunal of the United States Patent and Trademark Office within the Office of General Counsel. The Board
is empowered to determine only the right to register. The Board is not authorized to determine the right to use, nor may it decide broader questions of infringement or
unfair competition.
Types of Board Proceedings.
The Board has jurisdiction over four types of inter partes proceedings, namely, oppositions, cancellations, interferences, and concurrent use proceeding:
- An opposition is a proceeding in which the plaintiff seeks to prevent the issuance of a registration of a mark on the Principal Register. "Any person who believes
that he would be damaged by the registration of a mark" may file an opposition thereto, but the opposition may be filed only as a timely response to the publication
of the mark, under Section 12(a) of the Act, 15 U.S.C. § 1062(a), in the Official Gazette of the United States Patent and Trademark Office.
- A cancellation proceeding is a proceeding in which the plaintiff seeks to cancel an existing registration of a trademark. A petition for cancellation may only be filed
after the issuance of the registration. A petition for cancellation may be filed by "any person who believes that he is or will be damaged by the registration" of the
mark.
- An interference is a proceeding in which the Board determines which, if any, of the owners of conflicting applications (or of one or more applications and one or
more registrations which are in conflict), is entitled to registration. The proceeding is declared by the Office only upon petition to the Director showing extraordinary
circumstances therefor, that is, that the party who filed the petition would be unduly prejudiced without an interference. Ordinarily, the availability of an opposition or
cancellation proceeding is deemed to prevent any undue prejudice from the unavailability of an interference proceeding. An interference that has been declared by
the Director is not instituted by the Board until after all of the marks that are to be involved in the proceeding have been published in the Official Gazette for
opposition.
- A concurrent use proceeding is a proceeding in which the Board determines whether one or more applicants is entitled to a concurrent registration, that is, a
registration with conditions and limitations, fixed by the Board, as to the mode or place of use of the applicant's mark or the goods and/or services on or in
connection with which the mark is used (usually, a concurrent registration is restricted as to the territory which it covers). The proceeding may be generated only
through the filing of an application for registration as a lawful concurrent user, and is instituted by the Board only after each of the one or more involved applications
has been published for opposition in the Official Gazette, and all oppositions thereto (if any) have been withdrawn or dismissed.
The Board also has jurisdiction over ex parte appeals, that is, appeals from an examining attorney's final refusal to register a mark in an application.
General Description of Board Proceedings.
An inter partes proceeding before the Board is similar to a civil action in a Federal district court. There are pleadings (at least in an opposition or cancellation
proceeding); a wide range of possible motions; discovery; and briefs, followed by a decision on the case. However, because the Board is an administrative tribunal, its
rules and procedures necessarily differ in some respects from those prevailing in the Federal district courts. The principal difference is that proceedings before the
Board are conducted in writing, and the Board's actions in a particular case are based upon the written record therein. For example, the Board does not preside at the
taking of testimony. Rather, all testimony is taken out of the presence of the Board during the assigned testimony periods, and the written transcripts thereof, together
with any exhibits thereto, are then filed with the Board. Indeed, a party to a proceeding before the Board need never come to the offices of the Board at all, unless the
Board requests that the parties meet with the Board at its offices for a pre-trial conference pursuant to 37 CFR § 2.120(i)(2), or unless the party wishes to argue its case
at oral hearing (an oral hearing is held only if requested by a party to the proceeding).
An ex parte appeal, being appellate in nature, is a much simpler and shorter procedure, involving only the filing of briefs by the applicant and examining attorney, and, if
requested by the applicant, an oral hearing. The appeal to the TTAB is for the review of a Final Refusal to Register issued by an Examining Attorney. The appeal must
be filed within six months of the mailing date of the final refusal to register.
The Board includes both interlocutory attorneys and administrative trademark judges (known also as Board members). Interlocutory motions, requests, and other
matters not actually or potentially dispositive of a proceeding may be acted upon by a single Board judge or by a single interlocutory attorney to whom such authority has
been delegated. Decisions on the case, and on complex or contested motions that are potentially dispositive of the case, are rendered by a panel of at least three
Board judges. Stipulations or consented (or uncontested) motions to dispose of the proceeding in a certain manner may be decided per curiam by the Board.
Oppositions:
An opposition is a proceeding in which the plaintiff seeks to prevent the issuance of a registration of a mark on the Principal Register. "Any person who believes that he
would be damaged by the registration of a mark" may file an opposition thereto, but the opposition may be filed only as a timely response to the publication of the mark,
under Section 12(a) of the Act, 15 U.S.C. § 1062(a), in the Official Gazette of the USPTO.
An opposition proceeding is commenced by filing a timely Notice of Opposition, together with the required fee, in the Office. The opposition or the petition for
cancellation and the answer correspond to the complaint and answer in a court proceeding.
An opposition to the registration of a mark on the Principal Register must be filed prior to the expiration of the thirty-day period after publication of the mark in the Official
Gazette for opposition, or within an extension of time to oppose granted to the opposer or its privy. The filing date of an opposition is the date of receipt in the Office of
the opposition together with the required fee.
The Board notification allows the defendant 40 days from the mailing date of the notification in which to file an answer to the complaint.
Cancellations:
A cancellation proceeding is a proceeding in which the plaintiff seeks to cancel an existing registration of a trademark. The proceeding may only be filed after the
issuance of the registration. A petition for cancellation may be filed by "any person who believes that he is or will be damaged by the registration" of the mark.
A cancellation proceeding is commenced by the filing of a timely Petition for Cancellation, together with the required fee, in the Office. The opposition or the petition for
cancellation and the answer correspond to the complaint and answer in a court proceeding.
A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any person who believes
that he is or will be damaged, including as a result of dilution under section 43(a), by the registration of a mark on the principal register :
- (1) Within five years from the date of the registration of the mark.
(2) Within five years from the date of publication under section 12(c) hereof of a mark registered under the Act of March 3, 1881, or the Act of February 20, 1905.
(3) At any time if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or is functional or has
been abandoned, or its registration was obtained fraudulently or contrary to the provisions of section 4 or of subsection (a), (b), or (c) of section 2 for a registration
under this Act, or contrary to similar prohibitory provisions of such prior Acts for a registration under such Acts, or if the registered mark is being used by, or with
the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used. If the registered mark
becomes the generic name for less than all of the goods or services for which it is registered, a petition to cancel the registration for only those goods or services
may be filed. A registered mark shall not be deemed to be the generic name of goods or services solely because such mark is also used as a name of or to
identify a unique product or service. The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for
determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used.
(4) At any time if the mark is registered under the Act of March 3, 1881, or the Act of February 20, 1905, and has not been published under the provisions of
subsection (c) of section 12 of the Act.
(5) At any time in the case of a certification mark on the ground that the registrant (A) does not control, or is not able legitimately to exercise control over, the use of
such mark, or (B) engages in the production or marketing of any goods or services to which the certification mark is applied, or (C) permits the use of the
certification mark for purposes other than to certify, or (D) discriminately refuses to certify or to continue to certify the goods or services of any person who
maintains the standards or conditions which such mark certifies:
The Board notification allows the defendant 40 days from the mailing date of the notification in which to file an answer to the complaint.
Protective Order:
Under the new 2007 rule changes for Trademark Trial and Appeal Board proceedings, parties are required to abide by the Standardized Protective Agreement in
reference to confidential information disclosed during a cancellation or opposition proceeding. The Board's Standard Agreement can be found at the TTAB website.
New 2007 Rules.
The United States Patent and Trademark Office has amended the Trademark Rules of Practice (trademark rules) as follows:
- plaintiffs in inter partes proceedings must serve on defendants their complaints or claims;
- utilizes Board inter partes proceedings a modified form of the disclosure practices included in the Federal Rules of Civil Procedure; and
- deletes the option of making submissions to the Board in CD–ROM form;
- imposes Standard Protective Order applicable in every case (covering disclosures, discovery and trial);
- numerous general provisions regarding the required discovery conference, what to discuss in such conferences,and when it may be necessary to file written report
on conference discussions; regarding initial disclosures (including requirement that initial disclosures must be made before a party can take discovery); and
regarding expert testimony disclosures.
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