Types of TTAB Proceedings
Trademark Opposition
An opposition is a proceeding initiated by a third party challenging the registration of a pending trademark application after it has been published in the USPTO Official Gazette. Any party who believes it would be damaged by the registration can file an opposition within 30 days of publication (with extensions available). Grounds for opposition include likelihood of confusion, prior use, descriptiveness, fraud, and dilution, among others. See the Trademark Opposition page for more detail.
Trademark Cancellation
A cancellation proceeding allows a party to challenge an existing trademark registration that has already been granted. The grounds available depend on how long the registration has been in place. Within five years of registration, a broad range of grounds are available including likelihood of confusion, descriptiveness, and fraud. After five years the available grounds narrow, but abandonment, genericness, fraud, and misrepresentation of source remain available at any time.
Cancellation proceedings are an important enforcement tool when a competitor's registration is the primary obstacle to your own use or registration of a mark.
Appeals of USPTO Refusals
When the USPTO issues a final refusal of a trademark application and a Request for Reconsideration is unsuccessful, the applicant can have their appeal heard at the TTAB. The TTAB reviews the examining attorney's decision on the record, considers the applicant's brief, and issues a written decision. TTAB appeal decisions can in turn be appealed to the U.S. Court of Appeals for the Federal Circuit or to a federal district court.
A TTAB appeal is a meaningful opportunity to overturn a final refusal when the examiner's legal analysis is incorrect or incomplete. Success requires a well-structured brief that identifies the specific legal errors in the refusal and presents the strongest available counterarguments.
How TTAB Proceedings Work
Inter partes TTAB proceedings (oppositions and cancellations) proceed through several structured stages:
- Pleading. The proceeding begins with a notice of opposition or petition to cancel, followed by an answer from the defendant.
- Discovery. The parties exchange information and can take depositions relevant to the issues in the proceeding.
- Testimony periods. Each party submits their evidence in chief during designated testimony periods, followed by an opportunity to rebut the other side's evidence.
- Briefing. Both parties submit written briefs laying out their legal arguments and the evidence that supports them.
- Decision. The TTAB issues a written decision that constitutes final agency action, subject to appeal.
Many proceedings settle before reaching the decision stage. An early, realistic assessment of the strengths and weaknesses of each side's position is essential for making sound settlement decisions.
How Five Dogs Law Handles TTAB Proceedings
Jared handles TTAB matters from initial assessment through the full proceeding: pleadings, discovery, testimony, briefing, and decision. His approach begins with a frank evaluation of the merits and the realistic cost of the proceeding relative to the value of the outcome. At every stage, you will have a clear picture of where you stand and what it will cost to continue. Five Dogs handles both sides of TTAB proceedings: representing parties who initiate proceedings and representing parties who need to defend against them.
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