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Trademark Opposition and Cancellation Procedure

By Eric Misterovich

Inter parte proceedings before the Trademark Trial and Appeal Board largely consist of trademark opposition and cancellation proceedings. These proceedings are similar to federal civil lawsuits, but the procedure is different. For an explanation of the process, continue reading.

What Happens After a Notice of Opposition or Petition to Cancel is Filed?

After the Notice of Opposition or Petition to Cancel is served on the Applicant or Registrant, the Applicant or Registrant has 40 days to file an Answer or otherwise defend, including filing a Motion to Dismiss. The Notice of Opposition, Petition to Cancel, and respective Answers, and all other pleadings must comply with Fed. R. Civ. P. 8.

After the Answer is filed, the parties conduct the remainder of litigation pursuant to the scheduling order issued by the Interlocutory Attorney. This will involve conducting discovery, including interrogatories, requests to admit, requests for production of documents, and depositions (usually on written questions). One difference between traditional federal actions and TTAB proceedings is that the TTAB permits 75 interrogatories rather than 25.

TTAB “Trials”

Unlike civil court, there is no trial with the presentation of witnesses and evidence in the TTAB. Instead, there are “testimony periods” in which each side is permitted 30-days to submit its trial evidence, which the opposer being granted an additional 15-days to submit rebuttal evidence. During these stages, the parties introducing direct examination evidence through depositions or sworn statements of its clients.

Further, the parties are permitted to submit a “Notice of Reliance” and submit further documentary evidence in support of its claims.

After the above evidence is submitted, the parties submit written briefs. The Board decides the case on the written record, but either party may submit a request for an oral hearing before a panel of three Board members decided the case. The Board then decides the case within the following 4-8 months.

Appeal TTAB Decision

The losing party has the option to file an appeal of the Board’s decision to the United States Court of Appeals for the Federal Circuit or to a U.S. District Court within two months from the Board’s decision. The decision on whether to file the Federal Circuit or a District Court is an important decision. While appealing to the Federal Circuit is considered a traditional appeal, the District Court option provides the opportunity to introduce new evidence and assert claims and counterclaims for infringement, dilution, or other claims.


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