Trademark Counterclaim: A Counterattack for TTAB Oppositions and Cancellations

What is a trademark counterclaim? Is the best defense a strong offense? When it comes to TTAB oppositions and cancellations, it may make sense to consider filing a counterclaim against the plaintiff. Monetary relief is unavailable in TTAB proceedings. A potential TTAB counterclaim, therefore, will typically seek to cancel trademark registrations owned by the petitioner […]

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How to Cancel a Trademark Registration

How to Cancel a Registered Trademark As recently as a year ago, this article would have been written quite differently. A trademark cancellation filed with the TTAB would have been the only procedure to discuss. We’ll certainly delve into a TTAB cancellation in this post, but we now have a couple more ways to cancel […]

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Can you suspend or extend trademark opposition deadlines?

What is the difference between a suspension and an extension of trademark opposition deadlines? Each trademark opposition will have deadlines set by the TTAB. When a party believes that an extension or suspension may be warranted given certain circumstances, a party may file a motion to extend or motion to suspend. If the nonmoving party […]

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What is a TTAB summary judgment motion?

What is a TTAB summary judgment motion? A TTAB summary judgment motion is a pretrial filing made to request an earlier decision in a trademark opposition or cancellation proceeding before the USPTO. Such a motion is called dispositive since it can potentially dispose of the case. Due to its dispositive nature, summary judgment motions are […]

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How many TTAB cases reach final decisions?

How many TTAB oppositions and cancellations reach final decisions? At the outset, let me clarify that this post contains rough estimates of final decisions in adversarial TTAB oppositions and cancellations which are merely approximations, and not based on any solid statistical disciplines. I’m simply comparing the number of final judgments made in 2019 to the […]

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Trademark Cancellation: What you need to know

Does it make sense to file a trademark cancellation? 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 […]

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How to Defend a Trademark Cancellation

What is a trademark cancellation? A trademark cancellation is a mini-lawsuit filed with the TTAB to attack a trademark registration. Cancellations deal with only registered trademarks, and not pending applications. A third party may seek to cancel a registration in whole or in part. Here are helpful tips to defend against a trademark cancellation. What […]

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What Should Be Discussed During a TTAB Discovery Conference?

What subjects should be covered during a TTAB Discovery Conference? In a TTAB¬†trademark opposition or cancellation proceeding, attorneys for both sides must conduct a mandatory discovery conference early on. This early meeting between the parties must take place before discovery can begin.¬†In a sense, the discovery conference helps put the brakes on a trademark case […]

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