Administrative Proceedings Before the Trademark Trial and Appeal Board

Our attorneys vigorously enforce and defend our clients’ trademark rights before the Trademark Trial and Appeal Board (TTAB), an administrative tribunal that resolves disputes concerning the registration of trademarks by the United States Patent and Trademark Office. We have successfully opposed the registration of trademarks by third parties in the TTAB and, conversely, prevailed against third parties who have attempted to prevent our clients from registering their trademarks. We also engage in trademark cancellation proceedings before the TTAB, whereby one party seeks to cancel a certificate of trademark registration already issued to another. Our attorneys work closely with clients to keep them informed of TTAB proceedings and ensure that our advocacy efforts complement the clients’ business strategies.

A trademark opposition proceeding is filed by a party who wishes to oppose another party’s attempt to seek federal trademark registration of a given mark. A trademark opposition proceeding is somewhat similar to civil litigation in that there is a discovery period, an opportunity to file for summary judgment and a trial period. Opposition proceedings concern only the registration of trademarks, and not their use. Therefore, it is not possible to obtain an injunction from the TTAB to prevent another party from using an infringing mark. At a client’s request, we will “police” its trademarks by reviewing the Official Gazette, a weekly publication of the United States Patent and Trademark Office containing marks sought to be registered, and inform the client of any similar marks that have been published for opposition so that the client can determine whether to initiate an opposition proceeding.

The TTAB does not hold live trials, but conducts them on paper using the submissions of the parties and deposition testimony taken for that purpose. Thus, the stages of a trademark opposition are the same as the stages of a civil action for trademark infringement (as outlined under Trademark Litigation) except that an opposition proceeding does not involve a motion for preliminary injunction or the presentation of witnesses at trial for live testimony. A cancellation proceeding is similar to an opposition proceeding, but seeks cancellation of an existing trademark registration that has already been issued.

If you would like further information concerning opposition or cancellation proceedings in the TTAB, or have any questions concerning the above materials, please contact an attorney in our Trademark Practice Group.