Trademark Trial and Appeal Board

Considerations for USPTO Proceedings

USPTO proceedings are complex matters and there are many things you should be aware of before making a decision. As far as motions are concerned the Trademark Trial and Appeal Board (TTAB) generally complies with Federal Rules, however there are exceptions. There are special motions to dismiss due failure to provide testimony or evidence and there are other rules differences regarding response time and what happens when no response is entered. Such proceedings usually use accelerated case resolution (ACR) in order to speed up the process. What this means is the TTAB can resolve genuine issues of fact and issue final rulings. It also means that if agreed, the parties can skip discovery, oral hearing, expert testimony, and trial. If after a USPTO proceeding you are still not satisfied with the outcome and have grounds to appeal, then a petition for consideration can be filed within one month of the decision. Know what you are getting into before the proceeding begins and ensure you are complying with all rules.

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

Cancelling a Registered Trademark

The cancellation of registered trademark can occur one of two ways, by a court from the result of a civil action or by the United States Patent and Trademark Office (USPTO) following a cancellation proceeding. During the first five years of registration, trademarks may still be subject to arguments including likelihood of confusion with a prior filed mark, generic, and descriptive arguments. Such seniority and descriptive arguments may not be made after five years. To take the matter of cancellation before a court there must be a basis other than just cancellation, such as infringement or other issues. In addition, all other administrative remedies must be exhausted first. This usually means one had to go before the Trademark Trial and Appeal Board (TTAB) first and possibly other administrative steps. Courts may still defer to the TTAB’s decision. Cancelling a registered trademark is not an easy process and make sure you develop a strategy and understand all the steps involved.

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.