An entity or an individual who believes that they will be damaged by the registration of a mark on the United States Trademark Office’s Register may file an opposition proceeding or a cancellation proceeding. An opposition proceeding is filed during the prosecution of a trademark application and a cancellation proceeding can be filed after the trademark registration. These proceedings are governed by the U.S. Trademark Trial & Appeal Board (TTAB).
A trademark opposition proceeding is similar to civil litigation wherein the parties participate in a discovery period, a period for summary judgment, and a trial period. However, the TTAB does not have a live trial; the trials are essentially conducted on paper using the submissions of the parties and deposition testimony. A cancellation proceeding is similar to an opposition proceeding, but seeks the removal of a registered trademark versus a pending application.
Sometimes parties attempt to register a trademark that would conflict with our clients’ branding or business plans. In other cases, our clients desire to use trademarks which were previously registered, but investigation reveals that the trademark owner is no longer using the mark as stated in the trademark registration record or absconded with the mark and filed for registration despite prior usage. Both eventualities require the elimination of the objectionable trademark application or registration. Depending upon the facts and circumstances, objectionable trademark applications and registrations may be eliminated through the employment of opposition and cancellation actions.
The opposition/cancellation practice is a specialized area of quasi-litigation in which a suit is brought against another trademark owner, but instead of a court of law, the suit is heard before the TTAB. The proceeding is governed by the Federal Rules of Evidence and Civil Procedure, as well as the TTAB rules. McHale | Slavin’s attorneys have prosecuted and defended numerous TTAB cases and bring to the practice a keen awareness and ability to navigate favorable resolutions to these matters. Contact us for additional information or to schedule a consultation.
