The process of perfecting the protection of one's trademark began with an application that involved intearaction only between the applicant and agents for the Patent and Trademark Office (PTO). However, there are two critical options available to third parties that allows them to interject themselves into the registration process.
The law provides for an administrative board to hear the public's objections both to registrations and pending applications. The name of this board is the Trademark Trial and Appeal Board (TTAB). All proceedings undertaken here are governed by a combination of the Federal Rules of Civil Procedure, the Federal Rules of Evidence, the Lanham Act (15 U.S.C.A. §1051 et. al.), the Trademark Rules of Practice (37 C.F.R. §2.1 et seq. & Rules 116-136) and the TTAB Manual of Procedure.
The Trademark Trial and Appeal Board has its own peculiar set of rules that can easily be transgressed. The rights at stake are significant. The results of these proceedings may lead to a fundamental change in the right to the use of one's mark. A trademark applicant or registrant should consult with a trademark attorney before involving itself in a Trademark Trial and Appeal Board proceeding.
Oppositions
During the application process, after an examiner has approved the application, one's trademark is published in the Patent and Trademark Office's Official Gazette. This publication notifies the public of trademarks about to be registered unless there is an objection. Any member of the public with an interest in the trademark may oppose its registration within 30 days from the publication date. If desired, a party can request an extension of time to file an Opposition. A party initiates such an Opposition by filing a Notice of Opposition with the Trademark Trial and Appeal Board. In addition to the rules cited above, Oppositions must also comply with 37 C.F.R. §2.1 et. al. & Rules 101-107.
Cancellations
For existing registrations, a party may initiate a cancellation proceeding. This is done before the Trademark Trial and Appeal Board by filing a Petition to Cancel. In addition to the rules cited above, Cancellations must also comply with 37 C.F.R. §2.1 et. al. & Rules 111-115.
Trademark Trial and Appeal Board Proceedings Generally
When deciding to oppose an application or cancel a registration, one must make a statement regarding how the party would be damaged by the registration and specify the grounds for the opposition or cancellation. The statutory grounds to cancel or oppose a mark can be found in 15 U.S.C.A. §1052, §1064, and §1065. They include:
1. The mark is likely to be confused with a previously used, non-abandoned mark, or with a mark in an earlier filed application, or with a registered mark.
2. The mark is descriptive, deceptively descriptive, or primarily geographically descriptive or deceptively misdescriptive.
3. The descriptive mark is not distinctive of applicant's goods or services.
4. The mark includes immoral, deceptive, or scandalous matter.
5. The mark includes a governmental insignia.
6. The mark identifies a living individual without the individual's consent.
7. The mark is functional.
8. The registered mark has become a generic term for the good or service.
9. The registered mark has been abandoned.
10. Registration was fraudulently obtained.
11. The registered mark is being used by the registrant to misrepresent the source of goods or services.
12. The mark would dilute the distinctiveness of one's famous mark.
13. A prior judicial decision or agreement between the parties precludes the use of the mark by the applicant or registrant.
Upon filing the notice or petition with the Trademark Trial and Appeal Board, the Board reviews the document and prepares a notice to the applicant or registrant that a proceeding has been initiated before the Board. This document will incorporate a calendar which sets the dates for the answer, discovery, and trial.
The Answer is due within 40 days of the notice issuance date. It must comply with 37 C.F.R. §2.106 if responding to an opposition or §2.114 if responding to a cancellation. Generally, one must either admit or deny each allegation made in the Notice or Petition or state one has no knowledge.
Additionally, one should specify the affirmative defenses one intends to rely upon. These are as varied as the grounds for initiating the opposition or cancellation. There are equitable defenses such as laches, acquiescence, and estoppel. Such defenses address the acts or omissions of the Opposer which support one's use of the trademark. Other defenses raise specific points such as the applicant or registrant having superior rights to the mark due to priority of use or Opposer having abandoned use of the mark.
The Applicant must also consider moving to counter-claim for cancellation of Opposer's registration(s) where appropriate. This puts at issue the Opposer's own trademark rights. There are certain situations where the Board might deem the counter-claim to be compulsory. In such an instance, if one does not file the counter-claim with one's answer, then one has waived all rights to ever cancel the Opposer's registration(s).
Both parties may engage in discovery. This entails the acquisition of information and documents from the opponent as well as from oneself. The means of acquiring this information can be through written questions and requests for specific types of documents. It can also be through in-person deposition of key individuals from the opposing side. In certain cases, an expert's insight may be required. It is through this mass of information that one draws the facts which will support one's position, whether it is as Opposer or Applicant.
Following the discovery period is the testimony period wherein the parties submit any documents and transcripts of testimony as factual evidence in support of its case. At the end of the testimony period, closing briefs are prepared and filed. The Trademark Trial and Appeal Board then takes several months to issue its written decision. It is possible to appeal this decision.
The nature of these proceedings entails that the time required for the Trademark Trial and Appeal Board to arrive at a decision can take years. Parties may be able to reach a settlement agreement, thus ending the proceedings much sooner. Where appropriate, the issues raised in an opposition or cancellation can be resolved by a dispositive motion such as a Motion for Summary Judgment or Motion to Dismiss. Such motions may significantly shorten the length of a proceeding. A proceeding before the Trademark Trial and Appeal Board is an intense and complicated affair. Only a trademark attorney can properly handle such proceedings.
Contact Us
To schedule an appointment, please call 305.604.2051, or contact the firm online.
Amaury Cruz & Associates
1560 Lenox Ave., Suite 207
Miami Beach, FL 33139
305.604.2051 Voice
305.604.2011 Fax
Representing clients throughout South Florida, including Miami, Miami-Dade County, Coral Gables, Aventura, Broward County, North Miami, South Miami, Miami Beach, Hialeah, Fort Lauderdale, and Pembroke Pines, as well as nationally and abroad.