TTAB Trademark Opposition – An Early Alternative to Litigation?
To properly set the stage, you are the owner of a trademark, either under common law or pursuant to a United States Patent and Trademark Office (USPTO) trademark registration, and you have identified what which you consider to be a pending USPTO trademark application. which is likely to cause consumer confusion. Not only have you discovered that this third party is using a trademark that you believe constitutes trademark infringement, but you have also identified, likely through the use of trademark monitoring, that the opposition period for this trademark is approaching from the USPTO. The question is: what do you do next?
The USPTO has a body known as the Trademark Trial and Appeal Board. This board, commonly known as the TTAB, handles trademark oppositions based on a variety of reasons. For example, the pending trademark registration in this case would be challenged because it is confusingly similar to an existing trademark to which you claim prior rights. However, there are other reasons why a trademark can be opposed during the opposition period, such as the fact that it is generic, derogatory or fraudulent. However, you only have 30 days to file a notice of opposition with the TTAB. This 30-day period is known as the opposition period. This trademark opposition period occurs when the application in the opposition process is published in what is known as the Official Gazette.
If your goal is to ensure that your brand remains protected and enforceable and that there is no confusion for consumers in the marketplace, you must decide how to address this infringing use. While a Lanham Act trademark infringement lawsuit in federal court is an option, it is important that you also consider a TTAB opposition proceeding. The opposition procedure allows you to file a notice of opposition, which is similar to a claim in litigation, and show why the trademark should not be registered. Administrative proceedings are similar to litigation in that there are requirements under federal rules which, within the TTAB, are specifically referred to as its Trademark Rules of Practice. Once the notice of opposition is filed, a typical opposition procedure will include the following:
time to answer
time frame for discovery
Expired Initial Disclosures
Expert disclosures due
Plaintiff’s Pre-Trial Disclosures
Plaintiff’s 30-day trial period ends
Defendant Pretrial Disclosures
Defendant’s 30-day probationary period ends
Plaintiff Rebuttal Disclosures
Complainant’s 15-day rebuttal period ends
Once the aforementioned stages have been completed, the TTAB will decide on the admissibility or not of the opposition. If successful, the opposition will be upheld and registration of the trademark will not be allowed.
While ultimately, you’ll not only want to make sure they don’t get trademarked with the USPTO, you’ll also want to make sure all usage stops. While a court order would be required to ensure that all use stops or to collect money damages, a TTAB ruling may be the impetus needed for the alleged trademark infringer to cease all use of the mark. Most importantly, it is often cheaper than trademark litigation and brings any issues immediately to the attention of the parties involved to allow for the possibility of resolution. Therefore, a TTAB trademark opposition should be considered as part of any trademark owner’s enforcement strategy.
A trademark attorney who has appeared before the TTAB can advise you regarding your particular options, risks and strategies. Anyone seeking to obtain a trademark or seeking to assert rights under that trademark should be familiar with the TTAB. A TTAB trademark lawyer can help you.