Trademark Opposition and Cancellation Proceedings

By Eric Misterovich

The Trademark Trial and Appeal Board (“Board”) has jurisdiction over four types of inter partes (“between the parties”) proceedings: oppositions, cancellations, interferences, and concurrent use proceedings.

 

If a party believes that he/she will be damaged by the registration of a mark, they can file an opposition. An opposition is a proceeding in which the plaintiff seeks to prevent the issuance of a registration of a mark on the Principal Register. Grounds available for opposition include, but are not limited to: abandonment of the trademark; fraud; and dilution.

 

Notably, the opposition may be filed only as a timely response to the publication of the mark, under Section 12(a) of the Act, 15 U.S.C. § 1062(a), in the Official Gazette[1] of the United States Patent and Trademark Office. That is, the impetus behind a potential filing of an opposition is the publication of the trademark in the Trademark Official Gazette. A party must file its opposition, or a request to extend its time to file an opposition, within thirty days of the date after which the mark is published in the Official Gazette. Thus, any opposition filed before the publication of the mark sought to be opposed is deemed premature, and will be rejected by the Board. Moreover, the date of publication of a mark is the issue date of the issue of the Official Gazette in which the mark appears for purposes of opposition.

 

Additionally, a potential trademark “opposer” may file additional extension requests, but in no case may an opposition be filed beyond 180 days of the date the trademark was published in the Official Gazette. While there are no fees required for filing requests to extend the opposition period, fees are required for filing the opposition. The rules governing opposition fees are specified in 37 CFR § 2.101(d)(1)-37 CFR § 2.101 (d)(4).

 

Trademark Cancellation Proceedings:

 

Any person who believes he or she will be damaged by the registration of a trademark may file a petition to cancel. A cancellation proceeding is a proceeding in which the plaintiff seeks to cancel an existing registration of a trademark. Grounds available for cancellation include, but not limited to: prior rights; non-use; likelihood of confusion; or the mark is generic.

 

Within 5 years after an application has issued to registration, a petition to cancel that registration may be filed. Following 5 years, such a petition may be filed only on certain grounds. For example, if at any time the registered mark becomes generic (this claim must be made as to the entire mark, not just a portion); is abandoned; is discovered that its registration was fraudulent; or the mark is determined to be geographically deceptive. Notably, a petitioner may not seek to cancel a Principal Register registration over years old on the ground of likelihood of confusion. However, a petitioner may seek to partially cancel a registration over 5 years old by restricting the goods or services therein in order to avoid a likelihood of confusion.

 

The required fee for a petition to cancel must be submitted with the petition; the effective filing date of a petition to cancel (the date of commencement of the cancellation proceeding) is the date of receipt in the Office of both the petition to cancel showing proof of service and the required fee. The rules governing cancellation fees are specified in 37 CFR § 2.111(c)(1)-37 CFR§ 2.111 (c)(4).

 

Pleadings:

 

 

While proceedings before the Board have similarities to a civil action in a Federal district court, and the Board follows the Federal Rules of Civil Procedure, there are differences because the Board is an administrative tribunal. For example, similar to Federal district court, in both an opposition and cancellation proceeding there are pleadings followed by a decision on the case. Specifically, the Notice of Opposition and the Petition for Cancellation, like a Complaint, require only of a short statement that provides notice of the party’s grounds for opposing the application or seeking to cancel the registration. The pleading must also illustrate that a party has sufficient interest in the matter and list the grounds for the opposition or cancellation petition, e.g., likelihood of confusion, dilution of a famous mark, etc.

 

Following the initial pleading, the Board sends notice to the defending party of the petition and the defending party has forty days from the date of that notice to answer the pleading or, serve a Rule 12 motion.

 

 

Discovery:

 

Following the pleading stage is discovery, which usually closes within ninety days after the issuance of the trial schedule by the Board. However, if the parties notify the Board that they are negotiating for a settlement, the Board will suspend proceedings for 6 months. Mirroring district court, discovery consists of both written and oral forms.

 

Trial:

 

Contrary from litigation in district court, proceedings before the Board are conducted in writing,[1] and the Board’s actions in any particular case are based upon the written record therein. That is, the Board does not preside at the taking of testimony. Instead, all testimony is taken out of the presence of the Board during the assigned testimony periods, specifically, 30 days, and the written transcripts, together with any exhibits, are then filed with the Board as evidence. The defending party then has 30 days to do the same. Next, the plaintiff has the opportunity to submit any rebuttal evidence.

 

The only opportunity for parties to appear before the Board is after the submission of all evidence when parties deliver oral arguments, where at that time, a written decision from the Board will be issued.

 

A panel of at least three judges renders the final decision, however, every judge assigned to the case does not read the evidentiary record in a case. Instead, one judge reads the testimony and examines the evidence, discusses the case with the other judges, and then drafts a decision and supporting opinion.

 

Appealing the Board’s Decision:

 

Decisions by the Board can be appealed in two ways: (1) a party may appeal to the Court of Appeals for the Federal Circuit and (2) either party has the right to appeal to a district court, assuming jurisdiction and venue are proper. Regarding a Federal Circuit appeal, the Court will only consider evidence that came before the Board and will affirm the Board’s decision unless the decision was arbitrary, capricious, an abuse of discretion, or unsupported by substantial evidence. Notably, an appeal to district court is considered de novo, and thus, additional evidence may be submitted. While the district court will give deference to the Board’s decision, it has discretion in making its own determinations.

 



[1] All correspondence with the Board is required to be transacted in writing (see 37 CFR § 2.191). Moreover, unless the Board requests that the parties meet with the Board, or unless the party wishes to argue its case at an oral hearing, a party to a proceeding is never required to come to the offices of the Board (located in Arlington, Virginia.) However, parties or their attorneys, or other authorized representatives, may call the Board or come to their offices to inquire about the status of a case or to ask for procedural information, but never to discuss the merits of a case or of any particular issue.

 

 



1 Every Tuesday, the USPTO issues the Trademark Official Gazette (“TMOG”), a publication that contains a depiction of the mark, the identification of goods and/or services, and owner information for: (1) marks published for opposition on the Principal Register; (2) marks registered on the Principal Register under 15 U.S.C. §1051(d); (3) marks registered on the Supplemental Register on the date of the particular issue in which the marks appear; and (4) updated registration certificates.

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