Tag: appeal

Inter Partes Proceedings

Disputes can arise during the trademark registration process. If this occurs or if you are opposing the registration of another mark and the dispute is handled by the United State Patent and Trademark Office (USPTO), then it is an inter partes proceeding. Such proceedings are handled by the Trademark Trial and Appeal Board (TTAB).  The TTAB adheres to Federal Rules of Civil Procedure. These proceedings include filing opposition to a mark after it has been published in the Official Gazette. Parties have 30 days after publication to file such an opposition, although extension of time to file opposition can be requested. This can allow for negotiations with the other party and attempts to settle the dispute early and quickly. A party filing opposition must be by someone that believes they would be damaged if the mark were registered. Grounds for opposition can include dilution, likelihood of confusion, genericness, descriptiveness, misdiscriptiveness, fraud, deceptiveness, lack of intent to use, and scandalous matter.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Options Following an Adverse Decision

Going to trial is usually not preferable because there is always a chance the judge or jury does not agree with you. If this happens you do still have several options. You can still attempt to negotiate a better settlement with the other party. Odds are both sides are weary and eager to arrive at a resolution, so this may be worth an attempt. Another option may be to file a motion for reconsideration or reargument. This may be allowed if certain important things were non considered, overlooked, or there was an obvious misunderstanding. Attempts can also be made to alter the scope of the relief that was granted. If all else fails, then it might be possible to appeal the decision. Things to consider on appeal include whether the law was applied correctly and whether factual error were present. Appealing will not be easy, but given the subjective nature of trademark law it may be worth considering. After an adverse decision review all your options carefully.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Filing an appeal

Do you disagree with the examining attorney’s assessment of your application and still wish to fight for your trademark? If the refusal issued by the examiner was a second refusal or a final refusal, then you have the option to file an appeal with the Trademark Trial and Appeal Board if you so choose. An appeal must be filed and fees paid within six months from the date of the refusal. You will then have sixty days file an appeal brief. After doing so the examiner will then also have sixty days to file a response. It is important to note that during the appeal process the examiner may not raise any new refusals. After the examiner has issued his response you will have twenty days to respond. If at this point you are still refused and want to continue fighting, then a request for reconsideration may be filed. This must be done within one month. If success is not found here, then the only option is to proceed to federal court.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.