What are Initial Disclosures in a TTAB proceeding? Each party in a TTAB opposition or cancellation must serve the following information on the other side without being asked: the name and, if known, the address and telephone number of each individual likely to have discoverable information – along with the subjects of that information – that the […]
Effective date New TTAB rules for trademark oppositions and cancellations take effect on Jan. 14, 2017. ESTTA Electronic Filing All submissions must be filed through the TTAB online filing system known as the Electronic System for Trademark Trials and Appeals (ESTTA). Paper filings are no longer permitted unless extraordinary circumstances or technical difficulties would prevent filing online. […]
Say you’ve applied for a trademark and everything goes smoothly as your examining attorney approves the mark. So you wait through 30-day period when your trademark is published for opposition and hope no one challenges your mark. Unfortunately, a third party believes your trademark will cause a likelihood of confusion with its registered mark and, therefore, files a Notice of Opposition […]
Before discovery can occur in a TTAB trademark opposition or cancellation proceeding, attorneys for both sides must conduct a mandatory discovery conference to discuss the subjects identified in Rule 26(f) of the Federal Rules of Civil Procedure, including: claims and defenses of the TTAB case; possibility of settlement; plans for disclosures and discovery; and any changes to the […]
After a trademark application has been preliminarily approved by the USPTO examining attorney, the pending application will be published for opposition – i.e., made available during a 30-day window, which can be extended, for any third party to file a challenge called a Notice of Opposition. The filing of the Notice of Opposition creates a trademark opposition proceeding before […]
Where can I find an attorney fee schedule for litigating a TTAB trademark opposition or cancellation?
Innovation Capital Law Group publishes flat rate attorney’s fees for IP matters, including a fee schedule of attorney’s fees and cost estimates for TTAB proceedings here. Here are 2017 attorney fee estimates for TTAB oppositions and cancellations: 2017 Attorney Fee Schedule for TTAB Trademark Oppositions & Cancellations Petitioner (Plaintiff) Respondent (Defendant) Running Subtotal Initial […]
What is the difference between an opposition and a cancellation? Trademark oppositions and cancellations are adversarial proceedings before the Trademark Trial and Appeal Board (TTAB) of the USPTO to defeat the registration of a mark. Oppositions challenge pending trademark applications while cancellations contest trademark registrations. These adversarial TTAB proceedings are basically lawsuits focused on whether a particular […]