TRADEMARK OPPOSITIONS: STRATEGIES TO WIN

TRADEMARK OPPOSITIONS: STRATEGIES TO WIN

Are You Thinking of Filing a Trademark Opposition? These Strategies Can Help

The Trademark Trial and Appeal Board (TTAB) is a unique, federal administrative body which provides trademark applicants with a highly-focused avenue to pursue adversarial moves against trademark infringers (among other activities). If you are preparing to file a trademark opposition (or trademark cancelation for that matter), it is important to remember that the TTAB is an administrative court, and you are embarking on a formal legal process, much akin to a traditional litigation in a traditional court room. TTAB actions will require time, money, and a great deal of attention and one should strive to have a broad sense of what has helped litigants succeed or fail in past cases. The purpose of this Memorandum is to provide trademark litigants with insights into successful (and not so successful) strategies for TTAB cases.

DO: UNDERSTAND WHAT THE TTAB CAN AND CAN’T DO COMPARED TO A FEDERAL COOURT

The TTAB has limited jurisdiction and it is important to understand the sorts of relief that the Board can provide to the parties to the action. The TTAB has the power to adjudicate matters of Trademark Registrability; It does not have the power to determine the right to use a trademark or adjudicate issues related to unfair competition, infringement, or damages. Thus, procedurally, a party to a TTAB Opposition can make the process quite painful for his opponent because he does not have to worry about the threat of sanctions (financial or otherwise) for not honoring the Federal Rules of Civil Procedure (FRCP) or the procedural norms of the TTAB. For example, a defendant who continuously provides nonsensical responses to Requests for Admissions during the Discovery phase of the process effectively forces the plaintiff to draft motion after motion to Compel appropriate responses; This can require quite a bit of time and money and the fact that the TTAB’s enforcement powers do not extend to sanctions means that these sorts of bad faith strategic moves can go on in various forms ad infinitum. Trademark Jurisprudence does of course understand that the TTAB should not necessarily be the end of a trademark dispute and consequently, decisions made by TTAB can be Appealed to either a United States District Court or the United States Court of Appeals for the Federal Circuit. (PRO TIP: in terms of scheduling, a district court will likely be stricter about granting extensions than TTAB. If both parties agree to an extension, then TTAB may grant one, but a district court’s rules and procedures urge parties to settle or move ahead and set a date for trial.)

DON’T: MISS A DEADLINE AT THE TRADEMARK TRIAL AND APPEAL BOARD (TTAB)

While TTAB allows extensions in certain scenarios, keeping track of deadlines when involved in a trademark opposition is critical. Specifically, the TTAB will not consider suspending the 30 day time limit to file a trademark opposition for any reason, according to Section 209.01, although an opposer may file a request for extension of time. Also, the deadline to serve discovery, which is at least 30 days before the end of the expiration period, cannot be extended.  Deadlines are important because should a party miss a given deadline, the party may relinquish his/her right to object to an item that should have otherwise been responded to by the deadline. For example, if a party does not provide responses to a Request for Admissions during the Discovery period, he/she will lose the right to object to the Request which will indeed provide a major boon to the opposing party. Trademark lawyers have specific docketing software which allows them to monitor deadlines and prepare accordingly.

DO: BECOME FAMILIAR WITH THE TTAB RULES

The Trademark Trial and Appeal Board Manual of Procedure (TBMP) can reasonably be thought of as the office rule book fort the TTAB.  It is indeed the bedrock “Manual of Procedure” for matters brought before the Trademark Trial and Appeal Board and is organized according to the following chapters:

  1. (0100) – GENERAL INFORMATION
  2. (0200) – EXTENSIONS OF TIME TO OPPOSE
  3. (0300) – PLEADINGS
  4. (0400) – DISCOVERY
  5. (0500) – STIPULATIONS AND MOTIONS
  6. (0600) – WITHDRAWL; SETTLEMENT
  7. (0700) – TRIAL PROCEDURE AND INTRODUCITON OF EVIDENCE
  8. (0800) – BRIEFS ON CASE, ORAL HEARING, FINAL DECISION
  9. (0900) – REVIEW OF DECISION OF BOARD
  10. (1000) – INTERFERENCES
  11. (1100) – CONCURRENT USE PROCEEDINGS
  12. (1200) – EX PARTE APPEALS FROM REFUSALS OF APPLICATIONS
  13. (1300) – EX PARTE APPEALS FROM EXPUNGEMENT AND REEXAMINATION

ATTACHMENT A – APPENDIX OF FORMS

ATTACHMENT B – INDEX TO CHANGES

ATTACHMENT C – LIST OF ACRONYMS

It is imperative that a party to the TTAB familiarizes him/herself with the TMEP system and learns to navigate the library of rules to find rules and stipulations that advantage the case.

Of course, the TBMP is only one piece of the trademark litigation puzzle. The Federal Rules of Civil Procedure and the Lanham Act (15 U.S.C. 1051) govern trademark law as well and should be considered for a broader analysis of the given dispute. These disparate but still highly intertwined guidelines really do matter and even if a party has “the winning argument”, a procedural mistake resulting from a misunderstanding of the rules can be costly. It is critical that your trademark lawyer has familiarity with both transactional trademark law (filing trademark applications) but also trademark litigation which is governed by these more abstract and technical provisions.

DON’T: BECOME BLINDLY CONFIDENT

Filing Trademark Opposition Complaints is of course a costly undertaking and when done properly, requires a good amount of research and preparation; it is understandable that opposers may be lulled into a false sense of security and dismiss any weaknesses in their case. Don’t get Complacent! Really do your due diligence before filing the actual complaint and have a rock-solid plan for how you will be able to win and prove each element of the complaint in your final brief. You must strive to ensure that the elements which comprises the basis of the Complaint can ultimately be supported in your Brief. At all times, consult with your trademark attorney to determine the viability of marshaling enough evidence to support these claims.

DO: TAKE TIME TO ANALYZE YOUR CASE

It may be tempting to file a trademark opposition any time an application appears on the Trademark Official Gazette that looks too similar to your trademark. However, the likelihood of confusion standard requires more than passing similarity. Replacing this strategy with one that includes thorough research before filing any trademark opposition should lead to more successful and meaningful results when the opposer goes ahead with filing trademark oppositions.

DON’T: PROCRASTINATE

Because of the TTAB’s strict rules about the timing of filing a notice of trademark opposition, it is strategically important (dare I say critical) to plan ahead. This includes developing a system for monitoring third-party trademarks both through the Trademark Official Gazette and elsewhere. Consider the circumstances which would warrant filing a notice of trademark opposition and when it might be prudent (certainly from a cost perspective) to let the mark proceed to registration and then move instead with a trademark cancellation proceeding. While opposing a trademark will always be a complex process, investing time and resources into managing an existing trademark allows an opposer to begin the process in a more solid position.

NEED HELP WITH A TRADEMARK OPPOSITION PROCEEDING?: SPEAK TO AN IP ATTORNEY

If you need help with a trademark opposition proceeding, please reach out to us. Our Trademark attorneys would love to chat and discuss your case.


Abe is managing partner of Cohn Legal, PLLC, Head of the firm’s Intellectual Property and Transactional Group, and works in the New York office in Midtown Manhattan. Abe is committed to his client’s success.

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