TTAB oppositions and cancellations.

What is the Trademark Trial and Appeal Board?

The Trademark Trial and Appeal Board, generally known as the TTAB, is an administrative tribunal within the USPTO. It does not examine new applications, that is the job of examining attorneys, but it decides certain disputes about whether a mark should be allowed to register or should remain registered. A TTAB proceeding is not a lawsuit in federal court, though its procedures and deadlines are court-like, and its decisions can carry significant consequences for the parties involved. The TTAB decides rights to federal registration. It generally does not award infringement damages or issue the same remedies available in federal court.

Opposition vs. cancellation

The two main proceedings the TTAB handles are opposition and cancellation, and the difference between them comes down to timing.

• Opposition, filed during the limited publication window after the USPTO has approved a mark for publication but before it registers. Anyone who believes they would be damaged by the registration can file an opposition within that window (or seek an extension of time to do so).
• Cancellation, filed after a mark has already registered, seeking to cancel some or all of an existing registration. Cancellation proceedings can generally be brought at various points after registration, though certain grounds become harder to raise the longer a registration has existed.

Typical grounds, stated cautiously

The grounds available in an opposition or cancellation vary by circumstance and can be fact-intensive. Grounds that commonly arise include a likelihood of confusion with an earlier mark, a claim that the mark is merely descriptive or otherwise not distinctive, non-use or abandonment of the mark, and, in some cases, fraud on the USPTO. Whether any particular ground applies to a specific mark depends heavily on the facts, and this page is not a substitute for a case-specific evaluation.

Adversarial proceedings with strict deadlines

Once an opposition or cancellation is filed, it becomes an adversarial proceeding between the parties, with pleadings, discovery, and briefing similar in structure to federal litigation, governed by the Trademark Rules of Practice and, in many respects, the Federal Rules of Civil Procedure and Evidence. Deadlines in TTAB proceedings are strict, and missing one can have serious consequences for a party’s position.

How John approaches strategy

For a matter that reaches or may reach the TTAB, John works with the client to assess the strength of the position, the practical business objectives, and whether the proceeding should be pursued, defended, or resolved through settlement or a coexistence agreement. Where a matter also involves or risks spilling into federal-court litigation, John coordinates with litigation counsel rather than attempting to handle court litigation himself.

Results cannot be guaranteed

As with any contested legal proceeding, the outcome of a TTAB opposition or cancellation cannot be guaranteed. The Board weighs the evidence and arguments presented by both sides, and even a well-supported position can be affected by facts that only emerge during the proceeding.