In order to set the stage appropriately, you are the owner of a trademark, either under common law or pursuant to a United States Patent and Trademark Office (USPTO) trademark registration, and you have identified what you deem to be a pending USPTO trademark application that is likely to cause consumer confusion. You have not only discovered that this third party is using a trademark that you believe constitutes trademark infringement, but you have also identified, likely through the use of trademark monitoring, that the opposition period for this USPTO trademark is upcoming. The question becomes – what do you do next?
The USPTO has a body known as the Trademark Trial and Appeal Board. This board, commonly referred to as the TTAB, handles trademark oppositions based upon a variety of reasons. For example, the registration of the pending mark in this case would be challenged because it is confusing similar to an existing mark to which you claim prior rights. However, there are other reasons that a trademark may be opposed during the opposition period, such as the fact that it is generic, disparaging, or fraudulent. Regardless, you only have 30 days within which to file a notice of opposition with the TTAB. This 30-day period is known as the opposition period. This opposition period occurs when the pending trademark application is published for opposition in what is known as the Official Gazette.
If your goal is to ensure that your mark remains protected and enforceable and that there is no consumer confusion in the marketplace, you must decide how to approach this infringing use. While a trademark infringement lawsuit pursuant to the Lanham Act in federal court is an option, it is important that you also consider a TTAB opposition proceeding. The opposition proceeding allows one to file a notice of opposition, which is akin to a complaint in litigation, and show why the mark should not be registered. The administrative proceeding is similar to litigation in that there are requirements under the federal rules which within the TTAB are referred to specifically as its Trademark Rules of Practice. Once the notice of opposition is filed, a typical opposition proceeding will include the following:
Time to answer
Deadline for discovery
Initial disclosures due
Expert disclosures due
Plaintiff’s pre-trial disclosures
Plaintiff’s 30-day trial period ends
Defendant’s pre-trial disclosures
Defendant’s 30-day trial period ends
Plaintiff’s rebuttal disclosures
Plaintiff’s 15-day rebuttal period ends
At the conclusion of the aforementioned phases, the TTAB will issue a decision as to whether or not to sustain the opposition. If successful, the opposition will be sustained and the trademark will not be permitted to be registered.
While ultimately you would not only want to ensure that they did not receive a trademark with the USPTO, you would also want to ensure that all use stopped. While an order from court of law would be required to ensure that all use stops or to collect monetary damages, a TTAB ruling may be the impetus necessary to cause the alleged trademark infringer to cease all use of the mark. More importantly, it is often cheaper than trademark litigation and brings all issues immediately to the attention of the parties involved so as to enable the possibility of a resolution. Therefore, a TTAB trademark opposition should be considered as part of any trademark owner’s enforcement strategy.
A trademark attorney that has appeared before the TTAB can help advise you regarding your particular options, risks, and strategies. Anyone looking to obtain a registered trademark or looking to enforce rights pursuant to that trademark needs to be familiar with the TTAB. A TTAB trademark attorney can help.