Another person or entity has applied for a trademark at the United States Patent and Trademark Office (the “USPTO”) that is similar to your trademark. What can you do?
One option is to institute an opposition with the Trademark Trial and Appeal Board (the “TTAB”) to challenge their registration of the mark. A TTAB opposition is a specialized proceeding where the TTAB determines whether your opponent’s trademark application violates your trademark rights. If you win, the TTAB refuses your opponent’s trademark and cancels its application.
A TTAB opposition is different than a district court lawsuit in several ways. Below are some examples and other information that may help you determine whether an opposition could be a good option for you.
A party institutes a TTAB opposition before the USPTO grants the opponent’s trademark registration. This allows the instituting party to challenge a trademark as quickly as possible. This is especially important when the opponent has not yet started using the trademark with a service or good, as this may prevent the challenging party from suing in district court.
Often TTAB oppositions are resolved quicker than district court litigations because the opponent has not invested heavily in the mark. The opponent may choose to abandon the application instead of spending time and money defending a trademark it has not yet established goodwill with.
Common Law Rights
Even if you have not registered your trademark, you may be able to assert common law trademark rights in an opposition proceeding. Common law trademark rights are based in state law and are obtained by using a trademark with goods or services and obtaining public recognition.
Even if you have registered a trademark, you may still be able to assert common law trademark rights to obtain the full protection you are entitled to. For example, you may only have a registered trademark for certain goods or services. But if you have used your trademark on goods or services beyond your registration, you may be able to assert common law trademark rights in your TTAB opposition.
TTAB oppositions are adjudicated by government lawyers who are trademark experts. In district court litigation, the judge assigned to your case may have never adjudicated a trademark case or studied trademark law. The legal experience TTAB judges have may make it easier to explain and win the particular issues associated with your case.
TTAB judges also decide factual disputes between the parties. This is different than district court litigation, where factual disputes are typically decided by a jury of lay people.
Trademark disputes often involve complicated factual questions, such as whether a company’s marketing and sales have affected its trademark rights. The parties can also commission expert surveys, which must be analyzed by the fact finder. TTAB judges have experience with these types of issues, which you may prefer to a jury.
The TTAB publishes its opinions, which gives your attorneys a deep source of information to rely on. The Board can deem any opinion as “precedential,” meaning that it is binding on the Board if the same issue it determined in the opinion arises in a later case. The Board can also determine that an opinion is “non-precedential,” meaning that it doesn’t bind judges in subsequent cases. But the parties can still cite non-precedential opinions if they believe it will help the Board correctly decide an issue. Keep in mind that all Federal Circuit case law is binding on the TTAB.
The USPTO also has a Trademark Manual of Examining Procedure (the “TMEP”). This manual contains the rules related to registering trademarks with the USPTO, and it also includes summaries of precedential cases that may help your attorney analyze a legal issue. The TMEP is especially helpful for finding cases about substantive questions, such as types of marks that have been found invalid.
The TTAB has also published a Trademark Trial and Appeal Board Manual of Procedure (the “TBMP”), which contains the rules related to pursuing trademark oppositions, cancellations and ex parte appeals at the TTAB, including on topics such as trial procedure, motions, and discovery. The TBMP also cites and explains precedential cases—another resource for the parties to consult. The TTAB often defers to the Federal Rules of Civil Procedure when an issue has not already been resolved by precedential case law or otherwise explored in the TBMP.
Parties in TTAB oppositions can obtain discovery, such as by deposing opponent’s employees and requesting opponent’s internal documents. This discovery can be time-intensive and increase costs. But often TTAB oppositions require less discovery than district court litigation. One reason for this is because the TTAB does not have jurisdiction over other types of counterclaims that defendants often assert in trademark district court litigations.
This may make a TTAB opposition a favorable option as it can lead to decreased costs as compared to district court litigation. But this may make it harder to win your case if you are unable to obtain the evidence you need.
Parties can appeal unsatisfactory TTAB decisions. A party may appeal a TTAB decision to a district court, where it is reviewed de novo. De novo review generally means that the district court can take a fresh look at all factual and legal determinations. Unfavorable decisions can alternatively be appealed straight to the Federal Circuit. The Federal Circuit reviews legal issues de novo. But the Federal Circuit gives the TTAB some deference for factual disputes, and findings of fact are reviewed under a substantial evidence standard.
Depending on the circumstances, a TTAB decision can forever end a dispute between the parties. Two doctrines that may be applicable are issue preclusion and claim preclusion. Issue preclusion generally prevents a party from rearguing an issue that it already lost before the TTAB. Claim preclusion generally prevents a party from re-litigating any claims or defenses that it brought or could have brought before the TTAB.
Also, since the TTAB publishes its opinions, if you win a dispute you will likely have a written decision explaining why your mark is valid and why you won the opposition. This may dissuade others from violating your trademark rights in the future.
TTAB oppositions can be a good option to enforce your trademark rights, but there are many factors to consider. For more information about trademark law, check out the other blogs on Fish’s website.
The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.
Cynthia Walden is a principal in the Boston office of Fish & Richardson P.C. and the leader of the firm’s trademark and copyright practice group. Ms. Walden is well-known for providing insightful and business minded advice to clients on all aspects of brand protection and enforcement in the U.S. and countries around the world. Over the...