Trademark Disputes

​Q: Someone filed an application with the USPTO that is very similar to my trademark. What is the process for contesting a trademark application in the U.S.?

A: If you believe that a trademark application filed with the United States Patent and Trademark Office (USPTO) is too similar to your trademark, you can do a few things to alert the USPTO.  First, you can file a Letter of Protest if it has not yet been assigned to an Examining Attorney.  Our Denver trademark lawyers can help you with this.  Next, later in the process, you can contest the new application by filing a Notice of Opposition with the Trademark Trial and Appeal Board (TTAB). The TTAB filing process involves several steps:

 

• Filing a Notice of Opposition: Once an application is published for opposition, you have 30 days to file a Notice of Opposition. This period can be extended for a total of up to 90 days upon request.

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• Opposition Proceeding: Both parties present their arguments through pleadings, and evidence is gathered during the discovery phase. The TTAB opposition process is like mini-litigation and may include depositions, written interrogatories, and document requests.

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• Trial: After discovery, each side files a brief and has an opportunity for an oral hearing before the TTAB makes its decision.

It's advisable to work with a trademark attorney to navigate the opposition process effectively and to present the strongest possible case.

Q: How do I defend my trademark against a Trademark Trial and Appeal Board (TTAB) cancellation proceeding in the United States Patent and Trademark Office (USPTO)?

A: Defending against a TTAB cancellation or opposition proceeding involves several key steps:

 

• Respond to the Notice: You must file an answer to the Notice of Cancellation or Notice of Opposition within 40 days of receiving it, responding to each allegation and asserting any defenses.  If you need more time to respond, you can ask the other party to grant an extension of time.  If you do not respond to the initial filing for a cancellation proceeding, your trademark registration is in jeopardy of becoming canceled.  If you do not respond to the Notice of Opposition to your trademark application, your application will become “abandoned.”

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• Engage in the Discovery Process: The TTAB discovery process involves both parties exchanging information and evidence related to the case. Preparation is critical, as the evidence you gather will support your defense.

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• Submit Briefs and Evidence: After discovery, you'll submit a brief outlining your arguments and evidence to the TTAB.

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• Possible Motions or Oral Hearing: While not always required, either party can file various motions along the way or request an oral hearing before the TTAB for a final chance to argue their case.

Having an experienced trademark attorney to represent you in these proceedings can significantly increase your chances of a successful defense.

Q: What are the differences between a trademark infringement lawsuit and a USPTO TTAB opposition or cancellation proceeding?

A: The main differences between a trademark infringement lawsuit and a USPTO opposition proceeding are:

 

• Jurisdiction and Scope: A trademark infringement lawsuit is filed in U.S. Federal Court or in State court and can address broader issues such as damages, injunctions, and wider trademark use in the marketplace. An opposition proceeding is limited to challenging the registration of a trademark with the USPTO.

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• Remedies: In a Federal Court lawsuit, the plaintiff can seek monetary damages and injunctions against the defendant.  If a trademark is registered, the party who is harmed may be entitled to enhanced damages or even attorney’s fees.  In a TTAB opposition or cancellation proceeding, the remedy is limited to the refusal of the trademark application, or cancellation of an existing mark.  Only a Federal court lawsuit can force a party to actually stop using a mark. 

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• Procedure: Court cases follow the rules of civil procedure and can involve jury trials, while opposition proceedings follow the TTAB's administrative rules and procedures.  The special TTAB rules are very similar to the Rules of Civil Procedure, but TTAB proceedings can be a bit more casual and forgiving with respect to deadlines. 

Q: What are the potential consequences of losing a trademark dispute?

A: Losing a trademark dispute can have several consequences, including:

 

• Loss of Trademark Rights: You may lose the exclusive right to use your trademark in connection with certain goods or services.  You won’t be able to stop others from using the same or similar trademarks.

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• You will not be able to use the registered trademark ®️ symbol.

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• Monetary Damages: In a lawsuit, you could be ordered to pay damages to the other party. 

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• Restrictions on Use: In a lawsuit, you may be subject to an injunction limiting or prohibiting your use of the trademark.

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• Reputation Damage: Loss of a dispute can negatively impact your brand's reputation and consumer trust.

 

Q: What strategies can help resolve a trademark dispute without litigation?
 

A: Several strategies can resolve trademark disputes without resorting to litigation:

 

• Negotiation: Parties can negotiate directly or through their attorneys to reach an amicable solution.

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• Mediation: A neutral third party can facilitate a discussion between the parties to help them reach a voluntary agreement.

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• Coexistence Agreements: Parties may agree on terms that allow both to use their trademarks under certain conditions, avoiding confusion.

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• Assignment or Licensing: One party might agree to assign its trademark rights to the other or to enter into a licensing agreement. 

 

Q: When should an established business consider a trademark coexistence agreement?

 

A: An established business should consider a trademark coexistence agreement when:
 

• Markets Do Not Overlap: The businesses operate in different geographical areas or sectors where customer confusion is unlikely.

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• Litigation Costs Outweigh Benefits: The cost and uncertainty of litigation are higher than reaching an agreement.

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• Mutual Benefit: Both parties can benefit from the agreement, such as through cross-marketing or expanding their respective markets without conflict.

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• Brand Strategy: The agreement aligns with the company's long-term brand and business strategies.

Coexistence agreements can be complex and require careful negotiation to ensure they serve your business's interests. Consulting with a trademark attorney is advisable to navigate these agreements effectively.