Trademark Trial and Appeal Board

JMBM’s Intellectual Property attorneys have over 40 years’ combined experience handling Trademark Trial and Appeal Board (TTAB) disputes, including bringing and defending against petitions to cancel, notices of oppositions, section 18 proceedings, and both inter partes and ex partes appeals.

The TTAB is an administrative body within the United States Patent and Trademark Office (USPTO) that functions like a court, hearing and deciding disputes about a party's right to a federal trademark registration.

The most common types of cases handled by the TTAB are:

• Ex parte appeals of USPTO decisions refusing an application to register a trademark
• Opposition proceedings, in which one party opposes an application to register a trademark filed by another party
• Cancellation proceedings, in which one party seeks to cancel a trademark registration owned by another party

The TTAB also handles appeals from expungement or reexamination proceedings.

TTAB proceedings typically involve issues like those litigated in court actions for trademark infringement, but the TTAB cannot issue injunctions prohibiting use of marks, nor can it award monetary damages or attorneys' fees. However, TTAB actions can be completed for a fraction of the cost of federal court litigation.

TTAB proceedings are an important part of a brand enforcement strategy. It is crucial to protect one's brand identity by opposing or seeking cancellation of registrations for third-party marks that are too similar to your own. Often, opposition or cancellation proceedings are resolved with favorable settlements. Even when they are not, denying a third party a trademark registration can be sufficient to deter a third-party from proceeding with a mark.

Because of the important role trademark registrations play in brand enforcement, it is likewise important to defeat third-party attempts to oppose or cancel one's own applications or registrations.

JMBM's IP attorneys have a sterling record in these types of proceedings. Examples include:

• For a wellness device company: Win over an entity using a confusingly similar mark following a full trial and oral hearing.
• For a designer and manufacturer of luxury cars: Summary judgment of abandonment cancelling an infringing registration.
• For an eyewear manufacturer: Summary judgment of priority and likelihood of confusion cancelling an infringing mark.
• For an international manufacturer of premium distilled spirits: Multiple wins following full trials.
• For a cigar retailer: Win over a direct competitor, barring registration of a mark based in part on application of the doctrine of foreign equivalents.
• For a chain of grocery stores specializing in the Supplemental Nutrition Program: Establishing application of a laches defense barring cancellation of registrations following a significant period of delay by the petitioner.

We have prevailed at summary judgment, taken testimony, presented evidence by declaration as well as Notice of Reliance, and taken cases through trial and oral argument before the Board. This comprehensive experience distinguishes our practice from those that merely file a notice of opposition or a petition to cancel.

Trademark offices in many foreign jurisdictions provide for opposition and cancellation proceedings that are like TTAB actions. Unlike in the U.S., in many foreign jurisdictions trademark registrations are necessary to establish trademark rights. For this reason, trademark opposition and cancellation proceedings are a critical component of a foreign enforcement strategy.

We have extensive experience in both TTAB procedures and their foreign corollaries. We know how to use these procedures for effective representation and are committed to outcomes that best support our clients' goals and protect their business.