Trademark opposition and cancellation proceedings are vital tools for protecting brand rights. These processes, conducted before the Trademark Trial and Appeal Board (TTAB), allow businesses to challenge pending applications or existing registrations that may infringe on their marks.
Understanding the grounds for TTAB actions is crucial for brand owners. Common reasons include likelihood of confusion, descriptiveness, and abandonment. Procedural aspects, such as filing requirements and discovery phases, play a key role in these proceedings.
Understanding TTAB Proceedings
Opposition vs cancellation proceedings
- Opposition proceedings challenge pending trademark applications within 30 days of publication aiming to prevent registration (Nike opposing Adidas' new sneaker logo)
- Cancellation proceedings target existing trademark registrations at any time seeking removal from register (Pepsi attempting to cancel Coca-Cola's trademark)
- Both inter partes proceedings conducted before TTAB follow similar procedural rules
Grounds for TTAB actions
- Common grounds include likelihood of confusion between marks (McDonald's vs. McDental), descriptiveness (Sweet for candy), genericness (Escalator), and abandonment (non-use for 3+ years)
- Additional cancellation grounds encompass fraud in obtaining registration, improper assignment violating Lanham Act, failure to function as source identifier
- Case merit assessment considers mark strength (Kodak vs. Koday), similarity (Apple vs. Applet), goods relatedness (Delta faucets vs. Delta airlines), actual confusion evidence, trade channels, consumer sophistication
Procedural Aspects and Strategies
Procedural requirements in TTAB cases
- Initial filing: Notice of Opposition/Petition for Cancellation, fees, standing proof
- Answer and counterclaims due 40 days after complaint service
- Discovery phase involves:
- Initial disclosures
- Written discovery requests
- Depositions
- Expert testimony
- Trial phase includes plaintiff's testimony, defendant's testimony, rebuttal
- Briefing schedule: main brief, reply brief, optional oral hearing
Strategies for TTAB evidence presentation
- Pre-filing: Conduct thorough trademark search, gather use/priority evidence, assess defenses
- Pleading: Draft clear, concise claims anticipating counterarguments
- Discovery: Focus on relevant info, effective interrogatories/document requests, witness preparation
- Evidence: Submit consumer surveys, utilize experts (linguists for descriptiveness), present marketplace evidence (ads, sales data)
- Arguments: Focus on strongest claims (long-standing use), address weaknesses proactively, emphasize policy (consumer protection)
- Settlement: Evaluate proceeding costs/benefits, explore coexistence agreements (geographic limitations), consider licensing options