Oppositions and Cancellation Proceedings Before a Trademark Trial and Appeal Board

The Trademark Trial and Appeal Board (or the TTAB) is a managing board within the USPTO that hears and decides for opposing parties in trademark cases (for example, if a party is trying to cancel another party’s trademark or if a party opposes another party’s mark). All judges who are a part of the board are sanctioned to determine if a party has a right to register a trademark at a federal level. It is different from the right to use a trademark. They cannot determine if a party can use the trademark. They don’t answer questions in regards to situations of infringement. Those suits have to be brought up at a state or federal court. The board hears hundreds of cases a year on trademark matters. These include oppositions, cancellations, and appeals.

What happens in an opposition is that a party can oppose another party’s application to register a trademark. The time frame in which a trademark can be opposed begins after publication of that mark. It lasts about 30 days but can be extended. More often than not, these opposition claims are based off the fact that the mark may be too similar to another or can cause confusion. Opposition proceedings are similar to civil cases. Both parties present their arguments and evidence to the board of 3 judges and then those judges issue a decision.

In cancellation proceedings, a party wants to cancel the registration of another party’s trademark. More common arguments for cancellation are: the party’s trademark is too similar to another trademark, the trademark is not being used anymore, or the party that registered the trademark is not the actual owner of it. Cancellation proceedings occur similarly to civil cases as well.

Most board proceedings are appeals of a decision of a USPTO examining attorney. But they can still be rare due to the fact that both the board and the examining attorneys follow the same criteria when a party applies for registration. When registering a trademark, an examining attorney can reject your trademark due to the many reasons that a trademark can’t be registered. If the party doesn’t agree with the attorney, they can appeal to the board. The TTAB can decide whether or not the attorney’s decision was valid and ultimately decide if the trademark can be registered. The decision is between 3 judges on the panel. They have to carefully examine the initial application and any correspondence between the party and the attorney. Thereafter, the written decision is made.

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