A federally registered trademark is a powerful way to protect your business’s name or logo and investments made in advertising and promotion. When disputes arise about eligibility for a federal registration, they are commonly litigated in a specialized forum called the Trademark Trial and Appeals Board (TTAB), which is a branch of the U.S. Patent and Trademark Office (USPTO). TTAB procedures in trademark opposition and trademark cancellation proceedings are fairly unique and differ from a traditional litigation in state or federal court. Accordingly, to protect a federal registration, it is important to associate with an trademark litigation attorney that has experience in representing trademark owners nationwide in these unique cases. Below you will find not only why and how Dunlap Bennett & Ludwig can help, but also detailed information on the TTAB process, including educational videos and an outline of the proceedings.
Why Hire Dunlap Bennett & Ludwig for a Trademark Trial and Appeals Board Case?
Dunlap Bennett & Ludwig Trademark litigation lawyers are not only one of the bigger and most experienced trademark teams in the United States, but we have offices located minutes from the USPTO, where all of the Trademark Trial and Appeals Board cases happen. Likewise, we have former USPTO trademark examiners on our team, and have some firm alumni at the USPTO working as examiners even now. We are deeply and intimately connected to the Trademark Office’s process and can not only give you the right advice, but can do so efficiently and at considerably less cost than many other national firms, and certainly more so than firms lacking the benefit of the experience and location that Dunlap Bennett & Ludwig enjoys.
New products are always appearing on the shelves of stores nationwide. Bill’s company, for example, is a mid-sized firm that produces energy drinks marketed to athletic young adults, and the company’s federally registered trademark is nationally recognized. Bill understands the value of his company’s trademark so he actively seeks to protect it because his company has spent a great deal of money advertising and promoting its flagship brand.Recently, while visiting another part of the country, Bill learned about a smaller regional company that produces energy drinks and uses a similar, although not identical, trademark. The smaller company’s trademark is about to be registered because the Trademark Office failed to notice the similarity of the smaller company’s trademark to Bill’s company’s trademark.
Bill is concerned that consumers will confuse his company’s energy drinks with an inferior product that will tarnish his company’s brand and reputation, and he is concerned that it will be more difficult to object to the smaller company’s use of the name if a federal registration is issued. In response, Bill contacts our experienced trademark attorneys at Dunlap Bennett & Ludwig. Trademark dispute cases are different from other lawsuits, but with a federally registered trademark and the help of our experienced trademark attorneys, Bill is in a good position to take effective legal action.
On his company’s, behalf the trademark attorneys at Dunlap Bennett & Ludwig will file a Notice of Opposition, or a petition to cancel, with the Trademark Trial and Appeal Board, or TTAB, which is a branch of the U.S. Patent and Trademark Office. The company targeted by Bill’s action must submit a response, and their failure to respond could result in the immediate loss of their trademark. After a response has been received, attorneys for both sides meet to discuss case planning issues and the possibility of a settlement. Many trademark disputes are settled during this initial phase of the case. If Bill’s case is not settled early, the discovery process begins.
Each side has the opportunity to ask the other for information or documentation related to the case. Bill and the other principals in the dispute may be deposed, that is questioned under oath about issues and facts in the case, such as how a trademark was developed and how it’s used. During discovery we may also ask expert witnesses to submit written opinions in support of Bill’s case. And as more facts are uncovered more opportunities to settle the case may also emerge. If Bill’s trademark dispute has not been settled by the end of the discovery process, he won’t have to spend weeks sitting in a court room.
In Trademark Trial and Appeal Board cases, unlike most legal matters, there is no jury or courtroom trial. Instead, both parties submit evidence, testimony from depositions, expert opinions, and briefs containing their legal arguments. Based on those submissions, the TTAB will issue a final decision. Our experienced trademark attorneys routinely assist business owners like Bill with trademarks and trademark protection both domestically and internationally. If you need to register a trademark, if your registered trademark is being infringed, or if you need to learn more about trademarks and trademark law, speak with our experienced trademark attorneys at Dunlap Bennett & Ludwig today.
Dunlap Bennett & Ludwig’s trademark litigation attorneys are well-versed in U.S. Trademark Trial and Appeal Board practice and have represented numerous domestic and international companies–from small start-ups to large corporations across a wide variety of markets–in defending their rights to a federal trademark registration. Our TTAB practice includes:
- Trademark Opposition proceedings
- Trademark Cancellation proceedings
- Ex Parte Appeals of final refusals issued by the Trademark Examiner
- Concurrent Use Proceedings
- Trademark Dispute Settlement Negotiations, including negotiations of coexistence agreements and licensing agreements
We also offer low cost flat fee trademark search services, as well as monitoring and docketing services, which can help avoid disputes before they arise.
Anatomy of a Typical TTAB Case
(Notice of Opposition or Petition to Cancel)
Phase 1: Initiation of the Case
A trademark opposition or trademark cancellation proceeding begins with the filing of a Notice of Opposition or a Petition to Cancel. Shortly after it is filed, the TTAB will set a deadline for the trademark owner to file its Answer. The Answer is mandatory, and the failure to file an Answer can result in the immediate loss of the trademark. The Answer should also include certain Affirmative Defenses, which may be deemed to have been waived if they are not raised in the Answer or early in the case.
After the Answer has been filed, the parties or their attorneys must conduct a mandatory case planning conference, during which the parties discuss case scheduling, issues related to discovery, the need for a protective order, and the possibility of settlement.
This initial phase lasts one to three months. Many cases are settled during the initial phase.
Phase 2: Discovery
The discovery phase is when the parties exchange information relevant to the case. Each party has the opportunity to provide the other party with written discovery requests, asking for information or the production of documents. Interrogatories request that the other party answer written questions, Requests for Production seek copies of relevant documents, and Requests for Admission ask the other party to admit or deny certain facts. The parties may also take Depositions of one another or of other people with information related to the case. A deposition is when a witness testifies under oath about issues and facts in the case, such as how a trademark was developed, the parties’ marketing efforts, and other issues.
The discovery phase also often includes discovery related to expert witnesses. Depending on the issues in the case, many trademark opposition and trademark cancellation proceedings require the testimony of an expert witness to provide clarity on consumer or industry trends or other issues that have a bearing on the facts of the case. Expert witnesses typically provide written reports of their opinions, and parties often want to take the depositions of the other party’s expert witness to learn more about the basis for his or her opinions.
The discovery phase is crucial to gathering the information needed to take a trademark opposition or trademark cancellation case to trial. This phase is important to build a client’s case for trial, and learning more about the facts of the case can often facilitate a settlement. The discovery phase typically takes six to nine months, but can take longer in complex cases.
Phase 3: Trial
Unlike most court cases, there is no live trial in front of a judge or jury in TTAB cases. Instead, the parties submit evidence, deposition testimony, expert opinions for consideration, along with lengthy briefs containing their oral arguments. The parties may take additional trial testimony depositions in this phase, and they may submit their evidence and information over a period of time. The submission of evidence and arguments typically takes two to four months, and then the parties can expect to wait another few months for the TTAB to render a decision.
If you believe you need to initiate a trademark opposition or cancellation proceeding, or one has been filed against your trademark, contact one of our experienced TTAB attorneys to discuss the details of your particular case.
The Comprehensive Legal Help You Need
Dunlap Bennett & Ludwig has prosecuted thousands of trademark cases and successfully prosecuted and defended these trademarks in both Federal Court and in front of the Trademark Trial and Appeals Board. See what a difference a highly experienced, economically efficient legal team with offices next to the USPTO, where all Trademark Trial & Appeals Board cases take place. Call 800-747-9354 or email: firstname.lastname@example.org or reach out to our lead partners below. To talk to a Patent Trial and Appeals Board lawyer today contact by calling 800-747-9354, email email@example.com, or reach out to the lead partners below. For more information on our other intellectual property lawyers and practices please visit our other web pages, Trademark Infringement, Patent Infringement, Copyright Infringement, Patent Trial and Appeals Board, Domain Name Disputes.