Trademark Cancellation: What you need to know

Should you cancel a trademark registration? The decision to cancel a registered trademark is not an easy one. You’re about to embark on a journey where you and your IP attorney must take the lead and drive the case forward. There may be more timely and cost-effective options if particular registrations are blocking you from […]

Read More

How to Defend a Trademark Cancellation

What is a trademark cancellation proceeding? A trademark cancellation proceeding is basically a mini-lawsuit to kill a trademark registration. Cancellations deal with only registered trademarks, and not pending applications. If a cancellation has been filed against your registered trademark, here are some helpful tips in defending your registration. In what court or government agency are […]

Read More

How to Defend a Trademark Opposition

Why would someone oppose your trademark application? One of the top reasons why a third party would file a trademark opposition against your application is because they believe your mark is too close to theirs. Likelihood of confusion is the most common ground for trademark oppositions. In such a case, the burden falls on the […]

Read More

How to Oppose a Trademark Application

When is the right time to oppose a trademark application? If and when a trademark application has received preliminary approval by the USPTO examining attorney, a date will be in the coming weeks for the mark to be published for opposition. The publication period is a 30-day window during which any member of the public […]

Read More

Are monetary sanctions available in TTAB proceedings?

TTAB Monetary Sanctions? No, monetary sanctions are not available in TTAB oppositions and cancellations. TBMP Section 502.05 states: The Board will not hold any person in contempt, or award attorneys’ fees, other expenses, or damages to any party. What are appropriate TTAB Sanctions? The Board may enter the following sanctions where appropriate: striking all or […]

Read More

What are TTAB Initial Disclosures?

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 […]

Read More

What are the 2017 TTAB rule changes?

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. […]

Read More

What Happens If an Applicant Loses a TTAB Trademark Opposition?

What are the results of losing a TTAB trademark opposition? 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 […]

Read More

What Should Be Discussed During a TTAB Discovery Conference?

What subjects should be covered during Discovery Conference? 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 [see TBMP Section 401.01]: claims and defenses of the TTAB case; possibility […]

Read More

What is a TTAB trademark Notice of Opposition?

What is a TTAB Notice of Opposition? 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. A Notice of Opposition […]

Read More