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 trademark should be registered. All arguments, pieces of evidence, and testimonies are submitted on paper for the TTAB to consider, though the parties have the option of requesting an oral hearing at the conclusion of the submission of their legal briefs.
Each type of proceeding includes its own standards. A registered trademark carries certain legal presumptions that are not yet associated with a pending application. For example, a registered trademark is presumed valid and protectable, meaning that the owner has the exclusive right to use the trademark nationwide in connection with the goods and services covered in the registration.
A registration also carries the legal presumption that ownership of the mark belongs to the registrant. In seeking to cancel a trademark registration, the petitioner must overcome such legal presumptions that do not attach to an unregistered mark or a pending application.
Just as there may be advantages for a plaintiff in an opposition or cancellation proceeding, there may also be advantages for the defendant in each type of action. In an opposition involving a pending application, for example, the applicant may have opportunities to remedy certain defects which would not be available to a registrant in a cancellation.
An applicant may also have certain options that would facilitate an early settlement with the opposer. For example, an applicant can amend the identification of goods/services by deleting certain products or including exclusionary language.
First Steps for TTAB Defendants
If you’re an applicant or registrant on the receiving end of a TTAB complaint, the first date to calendar is the deadline for filing an answer. If you care about your trademark, you should lawyer up promptly and make sure not to blow this deadline. Shortly after the answer is due, the parties will need to conduct a mandatory discovery conference which will discuss a number of topics, including settlement. If you can at least cover these first two deadlines, you’ll be in good shape to figure out your strategy for the proceeding, including the possibility of an early settlement which will obviously keep down legal costs.
Since these proceedings can become quite expensive in a short amount of time, a TTAB defendant may be tempted to simply forfeit the case without putting up a fight. It would be prudent, however, to consider how a decision in the TTAB proceeding may come back later to bite you (legalese: any potential legal preclusive effects or estoppel of such a surrender).
What are the costs of a TTAB proceeding?
Since TTAB proceedings are adversarial, they’re basically a pared-down version of trademark litigation. A TTAB action is essentially a mini-lawsuit where the issues litigated are limited to registration, and not infringement. There are no court hearings, so you won’t have to pay expensive legal fees for your attorney to appear in court. Everything is litigated on paper, more or less.
That being said, most firms will bill hourly for litigating a TTAB proceeding. Our firm provides a hybrid billing arrangement for TTAB cases where certain tasks are billed on a flat rate. Here’s our TTAB flat fee schedule.
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