The TTAB Advantage: Opposition and Cancellation Proceedings

The TTAB Advantage: Opposition and Cancellation Proceedings

Not all trademark disputes end up in federal court. The Trademark Trial and Appeal Board (TTAB), an administrative body within the USPTO, provides a specialized, often more cost-effective forum for challenging the registration of a trademark. The two primary types of TTAB proceedings are Opposition and Cancellation.

1. Opposition Proceedings (Stopping a Mark Before it Registers)

An Opposition proceeding is filed when a party believes they will be damaged by the registration of a mark that has been published in the USPTO's Official Gazette.

•       Timing: The opposition must be filed within 30 days of the mark's publication (or after a granted extension).

•       Grounds: The most common ground is likelihood of confusion with the opposer's prior-used mark. Other grounds include the mark being merely descriptive, generic, or primarily a surname.

•       Strategic Value: Opposition is a proactive measure. It is generally less expensive than federal litigation and prevents the mark from ever gaining the presumptions of validity that come with a federal registration.

2. Cancellation Proceedings (Removing an Existing Registration)

A Cancellation proceeding is filed to challenge a mark that has already been registered on the Principal Register.

•       Timing: A petition to cancel can be filed at any time if the mark is less than five years old. If the mark is over five years old and has achieved incontestable status, the grounds for cancellation are significantly limited (e.g., the mark became generic, was obtained fraudulently, or was abandoned).

•       Grounds: The grounds are similar to opposition, but the strategic focus shifts to proving the mark should be removed from the register.

The TTAB Process

TTAB proceedings are similar to federal litigation but are streamlined and conducted entirely on paper (or electronically). They involve discovery, motion practice, and the submission of evidence and briefs. While less formal than court, they require the same level of legal precision and strategic thinking.

The TTAB is a powerful, specialized forum for protecting your brand's turf. I provide the strategic guidance and advocacy necessary to successfully oppose or cancel a confusingly similar mark, ensuring the integrity of the federal register.

Legal Disclaimer

This article is intended for informational purposes only and does not constitute legal advice. The information provided herein is general in nature and may not apply to your specific circumstances. Trademark law is complex and constantly evolving. Therefore, you should consult with a qualified intellectual property attorney for advice tailored to your individual needs and situation. No attorney-client relationship is formed by reading this article.