Michael W. Schroeder
What is a TTAB Proceeding?
Updated: Jan 22, 2021
Confused about how to remove the trademark registration or application of someone else? Is someone trying to remove your trademark registration or application? Here are the basics you should understand about a TTAB proceeding. TTAB stands for Trademark Trial and Appeal Board. In this guide, we will provide you with an overview of this routine, yet often daunting process, that affects many in the process of securing and/or protecting their federal trademark registrations.
What Is A TTAB Proceeding?
The first step in any trademark dispute is understanding precisely what a TTAB proceeding is. It is administrative litigation where one party challenges another to either cancel its existing trademark registration (cancelation) or stop its trademark registration (opposition). Both cancelations and oppositions work in the same way. Logistically, they have little difference except for the challenged trademark’s status (registered/unregistered). A TTAB proceeding works just like a federal civil litigation lawsuit, following most of the same procedural rules and court procedures. Therefore, it is essential you hire a highly-qualified attorney to represent you in the course of such TTAB proceedings.
What Exactly Is TTAB?
The Trademark Trial and Appeal Board (the “Board”) is a part of the USPTO or the United States Patent and Trademark Office. The Board constitutes an administrative judicial panel, composed of recognized trademark attorneys. Should your matter reach trial, three judges eventually decide whether or not the challenged trademark will be registered.
How Long Does It Take For A Cancelation Or Opposition Proceeding To Conclude?
TTAB proceedings are neither easy nor quick. A typical proceeding can take anywhere between 18 and 24 months to end. There are others that go on for even longer periods. The Board does not base the decision on the initial findings and asks for evidence from the parties to reach the final determination. That said, having the right representation can help speed up the process significantly.
What Is At Stake In A TTAB Proceeding?
TTAB proceedings are limited to determining whether or not a trademark can be registered or stay registered. That is the only outcome it determines and its only purpose. You cannot obtain any monetary damages from infringement or expect attorneys’ fees from this proceeding. What is at stake is the trademark itself. Still, determinations by the Board have been determined to have the same force and effect for factual findings and judgments as do the federal courts. Consequently, if you lose a TTAB proceeding, and continue using the contested mark, the results of the TTAB proceeding may be used against you in federal court to quickly secure a monetary judgment for damages due to your continued, willful infringement. Therefore, it is important that you immediately address the complaint in any TTAB Opposition or Cancellation action, to preserve all available defenses and avoid a default judgment being issued against you.
How Do The Parties Present The Arguments To The Board?
Following the conclusion of the discovery period, where both parties have the opportunity to gather evidence and ask questions from each other, the proceeding will enter into the Trial phase, where both parties will have designated periods in which to properly submit evidence to the Board, as well as submit their full trial briefs in order to make their final arguments. Each party will submit briefs summarizing all the evidence that has been submitted, pointing out the relevant law, and trying to persuade the Board to make the decision in their favor. The first party to submit the brief is the plaintiff. Then, the defendant submits one. Following the conclusion of the Defendant’s Trial period, the Plaintiff has a final opportunity to submit a Rebuttal to the Defendant’s arguments, if so desired. The Board sometimes also conducts an optional oral hearing where the attorneys of both the parties present their arguments in front of the Board. Both the parties get half an hour to argue their case. First, the plaintiff presents but can reserve some time for rebuttal after the defendant’s argument. The oral hearing is often held to answer questions of the Board and point out novel positions in the case.
It is also noteworthy that you will not be required to appear before the USPTO in person. The entire proceeding takes place virtually, except the oral argument that might be conducted in person. Before the coronavirus pandemic made its presence known, you could appear for the oral argument in person, but that can be conducted virtually too. All documents and motions are electronically submitted via the ESTTA computer system of USPTO. Furthermore, a TTAB proceeding is essentially a public proceeding. Hence, all filings can be accessed at TTABVUE.
Can The Case Be Settled Before Trial?
It is possible to reach a settlement before trial, and in fact, a vast majority of these disputes settle well-prior to trial. A settlement is an agreement between the involved parties where both must agree to the stipulated conditions of the settlement. A settlement usually takes place in one of the following forms (although other ways are possible too):
In this form, both parties agree to use their mark limited to their own goods and services and to agree to certain other restrictions on use to avoid consumer confusion. This can take a variety of forms, and the scope of protection and enforcement for your trademark can often be significantly affected by entering into such agreements. Therefore, it is important you have a highly-skilled attorney, experienced with such TTAB settlement negotiations to handle your case and review all elements of a proposed settlement agreement and negotiate its terms before it is executed by you.
● Trademark Registration Abandonment
The defendant party abandons its trademark application/registration in this form of a settlement, with assurances that the other party will not sue for past infringements. It is noteworthy that this may or may not come with a need to abandon the trademark use in the marketplace by the defendant in addition to the registration itself. Oftentimes, settlement can be negotiated to allow your continued use of your mark in commerce, even in the absence of a federal registration. However, this result is not preferred, as federal trademark registration in itself affords the owner significant benefits.
● TTAB Proceeding Abandonment
The plaintiff party decides that it does not wish to prosecute the matter anymore for various reasons, including possibly the presence of clear evidence stating that it will lose due to inadequate resources. The plaintiff abandons the TTAB proceeding prosecution, allowing the other party to complete its pending application for registration.
The Board’s Final Decision
Once the trial is over, the Board reviews all the arguments and evidence to determine whether or not the pending trademark application should continue with registration (in the case of an Opposition Proceeding) or the trademark registration should be canceled (in the case of a Cancelation Proceeding). The Board often takes many months to issue its decision, following the full submission of the final trial briefs by the respective parties.
Get In Touch With Trademark.Legal For Expert Representation
At Trademark.Legal, we are experts in the Trademark Trial and Appeal Board Proceedings. We bring a wealth of knowledge and experience in Trial and Appeal Board Rules to every case and client we represent. Unlike many law firms that charge a large retainer and bill hourly for TTAB litigation proceedings, we operate on an up-front and flat-fee basis for each stage of the proceeding, allowing our clients to better anticipate costs and budget effectively, We are well-versed with the procedure of a TTAB proceeding and the legal analysis that is required to win. Our TTAB litigation services are low-cost to ensure your rights are preserved without putting a huge dent in your bank account.Contact us at email@example.com for a consultation with a seasoned TTAB litigation attorney.