This blog is the eighth in a series that Finkel Law Group is publishing to provide our readers with a broad overview of trademark law in the United States. Protecting your company’s trademarks doesn’t always require litigation in federal court. The U.S. Trademark Office provides an administrative process for challenging pending trademark applications and existing registrations through opposition and cancellation proceedings before the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office (“U.S. PTO”).
These proceedings allow businesses to proactively protect their brands by preventing conflicting trademarks from being registered or removing improperly maintained registrations. In this post, we will explore the key aspects of opposition and cancellation proceedings, when they are appropriate, and how they can be used to enforce your company’s trademark rights.
Before you decide to take action to enforce your company’s trademarks you should consult an experienced trademark litigation attorney to discuss the most appropriate steps forward to protect your marks.
Opposition Proceedings
Under certain circumstances, trademark owners may oppose registration of a trademark that is the subject of a federal trademark application for registration on the Principal Register. A party (the opposer) with an entitlement to a statutory cause of action may oppose registration of a trademark applied for by another party (the applicant) to prevent the issuance of a registration for the trademark on the Principal Register.
This proceeding does not apply to trademark applications seeking registration on the Supplemental Register. A party initiates an opposition proceeding by filing a Notice of Opposition with the TTAB within the 30-day opposition period after the trademark application is published, which may be extended subject to certain criteria and the payment of certain fees.
Principal grounds to oppose registration of the applied-for mark include the fact the mark is: (1) likely to cause consumer confusion about the source of goods or services, (2) likely to dilute the distinctiveness of an existing owner’s famous trademark, or (3) a generic term for or merely descriptive of the goods or services for which the mark is sought.
Trademark opposition proceedings are conducted in the TTAB before an administrative law judge in the U.S. Trademark Office. Most opposition proceedings settle before trial, often with the parties entering into an agreement for their marks to co-exist in the marketplace subject to certain restrictions.
Adverse rulings in opposition proceedings in the TTAB may be appealed to the federal district courts.
Cancellation Proceedings
Cancellation proceedings are similar to opposition proceedings but are brought to cancel trademark registrations after they have been issued by the Trademark Office. Cancellation proceedings take place in the TTAB, and allow persons who file such proceeding to cancel trademark registrations after the U.S. Trademark Office has issued the registration.
A party (the petitioner) with an entitlement to bring a statutory cause of action (formerly standing) may petition to cancel a registration owned by another party (the registrant). Commonly, a petitioner brings a cancellation proceeding because either the registrant’s registered mark is blocking the petitioner’s application for the same or similar mark or the petitioner reasonably believes the registrant’s registered mark may block the petitioner’s application.
In addition, applicants in opposition proceedings often counterclaim to cancel the petitioner’s pleaded registrations based on one or more available grounds for cancellation. The grounds for cancellation are largely consistent with the grounds for opposition to a trademark application, but are limited once a registration has been in existence for 5 years.
Adverse rulings in cancellation proceedings in the TTAB may be appealed to the federal district courts.
About Finkel Law Group
Finkel Law Group P.C., with offices in San Francisco and Oakland, has more than 28 years of experience helping our clients navigate the requirements for registering their trademarks through the U.S. Trademark Office, licensing those trademarks for commercial gain, and enforcing trademark rights in administrative proceedings before the TTAB and in judicial proceedings in federal court.
When you need intelligent, insightful, conscientious and cost-effective legal counsel to assist you with matters that may affect your company’s intellectual property rights, please contact us at (415) 252-9600, (510) 344-6601, or info@finkellawgroup.com to speak with one of our attorneys about your matter.