Trademark opposition or cancellation: What are the differences?
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. A trademark opposition seeks to block a mark from registering. A trademark cancellation seeks to cancel a registered mark. Therefore, trademark oppositions relate to pending applications whereas cancellations pertain to registrations.
As an adversarial proceeding, a TTAB trademark opposition or cancellation is basically a mini-lawsuit. While each type of TTAB proceeding includes its own standards, both oppositions and cancellations are squarely focused on the issue of registration. Trademark infringement, for example, is not litigated in a TTAB case.
Except for the optional oral hearing towards the end of the case, there are no in-person court appearances in a TTAB legal action. All arguments, pieces of evidence, and testimonies are submitted in writing for the TTAB to consider. After the submission of legal briefs, the parties have the option of requesting an oral hearing.
What is a TTAB trademark cancellation?
A registered trademark carries certain legal presumptions that do not yet apply to a pending application. For example, a registered trademark is presumed valid and protectable. This means that the registration owner has the exclusive right to use the trademark nationwide in connection with the goods or services covered in the registration.
A registration also carries the legal presumption that ownership of the mark belongs to the registration owner, i.e., the registrant. In seeking to cancel a trademark registration, a third party (known as the Petitioner) must overcome such legal presumptions that would not attach to a pending trademark application.
What is a TTAB trademark opposition?
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.
When a third party seeks to oppose a trademark application, the applicant may have certain options that would facilitate an early settlement with the opposer. For example, the applicant can amend the identification of goods/services by deleting certain products or including exclusionary language to reduce likelihood of confusion.
TTAB Defendants: Where to start
If you have received a TTAB complaint for cancellation or opposition, the first date to calendar is the answer deadline, which will be approximately 40 days from the date the TTAB institutes the proceeding. Lawyer up promptly and make sure not to blow this deadline. Shortly after the answer is filed, the parties must conduct a mandatory discovery conference to cover a number of topics, including settlement.
Make sure to cover these first two deadlines. You will then 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?
A TTAB proceeding is basically a milder version of trademark litigation. Infringement does not get litigated. There are no court hearings to be attending in person. A TTAB legal action is essentially a mini-lawsuit where the issues litigated are limited to registration. You will not have to pay legal fees for your attorney to appear in court. Mostly everything is litigated in writing and electronically filed.
That being said, most firms 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. Please our TTAB trademark opposition flat fee schedule.
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