You worked hard to build your brand and have moved forward with taking the necessary steps to safeguard it. But sometimes, there may be one last hurdle in your way during the trademark registration and application process — a Trademark Trial and Appeal Board (TTAB) proceeding.
There are several reasons you might have to go before the TTAB. Whether you would like to appeal the denial of your application, or someone else is challenging your trademark rights, it's critical to take action. The trademark attorneys at the Trademark Lawyer Law Firm, PLLC have deep knowledge concerning the nuances of TTAB proceedings and can help you navigate the process to ensure your brand is successfully registered.
The Trademark Trial and Appeal Board is the administrative tribunal for the United States Patent and Trademark Office. While it is similar to a court, the TTAB is authorized to hear specific types of cases regarding trademark registration. However, there are only a limited number of remedies that the Trademark Trial and Appeal Board can provide to the prevailing party.
The Board can determine if an application should be granted and whether a trademark should be registered, maintained, or cancelled — but it cannot render a ruling concerning which party has the right to use the trademark. Unlike when a case is brought in state or federal court, the TTAB cannot award damages, attorney's fees, or litigation costs. The tribunal also does not have the power to grant an injunction.
The TTAB has very specific rules, regulations, and procedures. It is essential to work with an attorney who has experience practicing in the forum and knows how to diligently prepare your case to achieve favorable results. Our trademark lawyers have the acumen necessary to handle the complexities involved in matters heard by the Trademark Trial and Appeal Board and create a strategy to meet your entrepreneurial goals.
During the trademark registration process, you may receive one or more office actions from the USPTO examining attorney. While office actions are not uncommon, any response must be carefully researched and prepared to avoid refusal of your mark. If the USPTO sends a final office action and ultimately rejects your application, you may have the opportunity to appeal the decision at the TTAB.
Appealing the USPTO examining attorney's ruling is not an easy feat. Significantly, the panel of three judges who review your appeal application will consider the same legal standards that were applied when the examining attorney made the initial determination. Working with a trademark attorney who regularly handles trademark appeals and appears before the TTAB can obtain the best possible results for your brand and your business.
Some of the most common types of proceedings heard by the TTAB concern trademark oppositions. Before it is registered, the mark is published in the Official Gazette, and there is a 30-day period during which it can be opposed. When an individual or entity files a Notice of Opposition, they object to your trademark application and oppose your mark's registration.
Under the Lanham Act, anyone who could be damaged by the registration of a specific mark can raise an argument that the application should be denied. There are a variety of grounds upon which trademark registration can be opposed. A party challenging your use of the mark might argue:
A trademark opposition proceeding is a serious matter — if you are facing this type of action, your brand and bottom line could be in jeopardy. Our attorneys understand the significant amount of time, resources, and hard work you put into building your business. We are committed to providing effective representation to ensure your most valuable asset — your brand — is adequately protected.
Once you have successfully registered your trademark, disputes can still arise connected with your rights to the mark. Even after the initial opposition period has concluded, anyone with a legitimate interest in the mark can file a Petition to Cancel to stop you from continuing to use the mark in commerce.
Cancellation proceedings are usually brought within five years from the date the trademark was registered if the claim is based on a likelihood of confusion or mere descriptiveness. However, there is no time limit in place to commence a trademark cancellation proceeding if the mark is being challenged on the grounds that it is generic or functional. A cancellation action can also be filed at any time if the mark was allegedly abandoned or procured by fraud.
Nothing is more important when it comes to your business than your trademark. Not only does it encompass your company's identity and reputation, but it is what drives your bottom line. Our trademark attorneys are dedicated to representing business owners and helping them secure the thing that matters most — their brand.
Appeals, oppositions, and cancellation actions are the three types of proceedings most often heard by the TTAB. Notably, the tribunal also has the authority to hear two other types of proceedings — those involving concurrent trademark use and trademark interference.
Concurrent use proceedings arise when a business requests to register a trademark that is already in use. If two businesses have been using the mark in commerce, The TTAB will decide whether both are entitled to registration. If the Trademark Trial and Appeal Board determines both parties can concurrently use the mark, it will typically limit the geographic scope, trade channel, or usage. Concurrent use disputes can sometimes be resolved without litigation if the parties agree to restrict the geographical area in which the mark is used to avoid any likelihood of confusion.
Similarly, if conflicting applications are filed with the USPTO, one or both of the parties seeking registration can file a petition for an interference proceeding. The TTAB will conclude which is entitled to the registration and rights of the trademark.
If someone else is attempting to register a mark that is the same as yours — or a logo, slogan, or design that is similar to the one that makes your brand unique — it is essential to ensure your brand is protected. Our attorneys offer diligent representation for TTAB concurrent use and interference proceedings, and will strive to reach a positive outcome in your case.
Trademark Trial and Appeal Board proceedings can be complicated. With so much at stake, it is crucial to have a trademark attorney on your side who has the insight and skill necessary to defeat any potential challenges to your mark. The Trademark Lawyer Law Firm, PLLC is committed to providing superior advocacy for TTAB proceedings to business owners across a broad spectrum of industries nationwide. Having registered more than 5,500 trademarks successfully, we offer high-quality representation at cost-effective rates. Contact us today to schedule a complimentary 15-minute consultation with a Trademark Trial and Appeal Board litigation lawyer.