TTAB

TTAB

---

The Trademark Trial and Appeal Board hears and decides adversary proceedings involving: ^[1]Some of the material for this section is taken from the USPTO, “Trademark Trial and Appeal Board,” available at … Continue reading

• oppositions to the registration of trademarks
• petitions to cancel trademark registrations
• proceedings involving applications for concurrent use registrations of trademarks.

The Board also decides appeals taken from the trademark examining attorneys’ refusals to allow registration of trademarks.

What is a TTAB Proceeding?

There are two types of proceedings before the TTAB, an ex parte appeal from denial of your application for registration by an examining attorney, and an inter partes opposition, cancellation, concurrent use or interference proceeding.

What if my problem is not resolved or I need assistance with an unusual situation? What if I want to make a suggestion about TTAB processes?

In most cases, the Information Specialists can answer your questions, or can refer you to the appropriate person to handle your concern. However, if you need additional help, you may ask the Information Specialist to refer your call to the appropriate TTAB supervisor.

Can I look at a case file that is pending before the TTAB?

Case files are public records and are open to the public for review, except for certain documents filed under a claim of confidentiality. The easiest way to review a file is through the electronic system, TTABVUE.

To look at a file, you can review or print it out yourself using TTABVUE. TTAB records submitted prior to approximately 2001 are kept in paper.  An individual who wishes to inspect or copy one of the paper files is directed to the National Archives and Records Administration, www.archives.gov/research.

Do I need to file an extension of time to oppose or notice of opposition if a letter of protest is granted?

Yes, the filing of a letter of protest, whether before or after publication of the mark, does not stay the time for filing an opposition or an extension of time to oppose the subject mark. If a party files a letter of protest before publication but the subject mark still publishes for opposition, then the party must timely file a request for extension of time to oppose, if it wishes to preserve its right to oppose. Similarly, if a party that files a letter of protest after publication wishes to preserve its right to oppose, it too must file a timely request for an extension of time to oppose. Regardless of when the letter of protest was filed, if the subject mark has published for opposition, the party may choose to file a notice of opposition instead of a request for extension of time to oppose and request that the opposition be suspended pending a determination of the letter of protest. See TBMP § 215. Note: a Letter of Protest is considered good cause for the first 90-day request to extend time to file an opposition, but does not constitute extraordinary circumstance to grant the final 60-day request to extend time. Potential opposer will have to secure the consent of the applicant or file a notice of opposition within the time set.

I just got a notice of opposition. What’s an opposition?

An opposition is a proceeding in which one party is seeking to prevent registration of another party’s trademark. Under the law, if a party believes that he will be damaged by the registration of a mark, he can file an opposition. For more information, see TBMP § 102.02.

I just got a petition to cancel. What’s a cancellation?

A cancellation is a proceeding in which a party seeks to cancel an existing registration of a mark. Under the law, a person who believes he will be damaged by the registration may file a petition to cancel. For more information, see TBMP § 102.02.

What is the procedure for having an Interlocutory Attorney participate in the discovery conference?

If any party wishes to have a TTAB professional participate in the required discovery conference, the party must either call the TTAB attorney assigned to the case or file a request through ESTTA. Such request should be made no later than ten (10) days prior to the deadline for conducting the discovery conference, so as to facilitate completion of the conference by the deadline. Filing a request using ESTTA is preferred; however, parties are encouraged to follow up a few days later with a phone call to the Board attorney assigned to the case if they have not yet been contacted by a TTAB attorney. See TBMP § 401.01.

Does the TTAB take judicial notice of the USPTO records? / There are USPTO registrations which may be helpful to my case, will the TTAB take judicial notice of them?

No. In order to introduce USPTO records into evidence you must follow the correct procedure. For more information please see TBMP Chapter 700 on Trial Procedure and the Introduction of Evidence.

Do I need an attorney to represent me in a TTAB proceeding?

While you can represent yourself in a TTAB proceeding, you might wish to consider hiring an attorney to represent you. An opposition or cancellation proceeding is just like a case in court. Even if you do not have an attorney, you will be expected to follow the Rules of Practice for the TTAB and the Federal Rules of Evidence, which are followed by the TTAB. You may find it difficult to properly conduct your case without legal counsel.