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 or opposer. Let’s consider scenarios when it may make sense to file a TTAB trademark counterclaim.

Has the plaintiff pleaded its trademark registrations?

In a Notice of Opposition or Petition for Cancellation, the plaintiff will typically cite any owned trademark registrations that support their claims. For example, if the plaintiff has alleged likelihood of confusion and priority, they might plead at least one owned registration for a trademark that is arguably similar to your mark. Pleaded registrations may also show up in dilution claims.

If registered trademarks are pleaded by the plaintiff, take a close look at each registration to see if a counterclaim makes sense.

Compulsory Counterclaims vs. Permissive Counterclaims: What are the differences?

The difference between compulsory and permissive counterclaims is whether the trademark registrations were pleaded by the plaintiff. A permissive counterclaim seeks to cancel a trademark registration owned, but not pleaded, by the plaintiff.

If an opposer or petitioner pleads a registration, a counterclaim would be compulsory if grounds for such counterclaim exist at the time when the answer is filed. The counterclaim must be pleaded with or as part of the answer. Timing is crucial here.

What are grounds for a potential trademark counterclaim?

Before filing an answer, a TTAB defendant should carefully investigate any grounds for cancelling the registrations plead by the plaintiff. For example, has the owner abandoned its registered trademark? Is the mark being used on some goods or services, but not all the items identified in their registration?

If a defendant later learns of information supporting a counterclaim, the counterclaim must be pleaded promptly after the grounds for cancelling the plaintiff’s registration are learned.

Do you have priority over their trademark registrations? Is their registered trademark merely descriptive? Keep in mind, however, that certain counterclaims are available only within 5 years of their registration date.

How to gain leverage by filing counterclaims

When you’re solely defending a TTAB trademark proceeding, the plaintiff does not have much to lose. A loss for an opposer or petitioner simply means that they failed to block or cancel your trademark registration. By pursuing a counterclaim against their registration, the plaintiff now faces the risk of losing trademark rights. And those rights may be significant. So a counterclaim might facilitate settlement, and possibly at an earlier stage.

Thinking of filing a TTAB trademark counterclaim?

Email US patent and trademark attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623 to see if we can help you formulate a strategy for defending your TTAB trademark case.

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Vic Lin

Startup Patent Attorney, Cofounder at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. We have helped clients obtain 700+ granted patents, 500+ registered trademarks and countless foreign IP registrations. Let's get to work on your IP: (949) 223-9623 | vlin@icaplaw.com

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