TTAB Opposition and Cancellation Proceedings Overview
Written by Saul Acherman - December 13, 2024
The Trademark Trial and Appeal Board (TTAB) is a tribunal within the United States Patent and Trademark Office (USPTO) that adjudicates disputes related to federal trademark registration. Two common types of proceedings before the TTAB are Opposition Proceedings and Cancellation Proceedings. Both are administrative proceedings for challenging the registration or the application for registration of a trademark, but they differ in their focus and who can initiate them. Below is an overview of each proceeding, including the process, motions, testimony procedures, and related components.
1. TTAB Opposition Proceedings
Purpose: An opposition proceeding is a challenge to the registration of a trademark that has been published for opposition in the Official Gazette but has not yet been registered. The party filing the opposition, known as the “Opposer,” seeks to prevent the trademark from being registered.
Initiation:
- An opposition proceeding is initiated by filing a Notice of Opposition within 30 days after the trademark is published in the Official Gazette (this period can be extended with some limitations).
- The Notice of Opposition must include a clear statement of the grounds for opposing the registration and the factual basis supporting those grounds (e.g., likelihood of confusion, dilution, descriptiveness, etc.).
Discovery:
- After the Notice of Opposition is filed, the parties enter a discovery period, typically lasting about six months. This is the time when each party can request documents, depositions, and interrogatories to gather evidence.
- Discovery is crucial as it allows each party to learn about the other party’s evidence and position before trial.
Motions During the Proceeding:
- Motion to Dismiss: The applicant may file a motion to dismiss the opposition if the claims are legally insufficient.
- Motion for Summary Judgment: Either party may file a motion for summary judgment if they believe there are no material facts in dispute and they are entitled to judgment as a matter of law.
- Motion to Compel: If one party fails to respond to discovery requests, the opposing party can file a motion to compel further responses.
Testimony Period:
- Following discovery, a testimony period is scheduled. The testimony period is the time when both parties can submit evidence in the form of testimony, declarations, and exhibits. The testimony period generally lasts for about 60 days, divided between the parties.
- The testimony period is set in phases: the Opposer presents its case first, followed by the Applicant, and the Opposer may offer rebuttal testimony.
Testimony Methods:
- Written Testimony: Most testimony is submitted in written form, either in the form of a declaration or an affidavit. These are signed statements made under oath.
- Depositions: Parties may depose witnesses, typically in person or via a video conference.
- Written Discovery: This can include requests for admissions, interrogatories, and document requests.
Briefing and Oral Argument:
- Opening Briefs: After the testimony period ends, each party submits an opening brief to the TTAB, summarizing their evidence and legal arguments.
- Rebuttal Briefs: Each party may file a rebuttal brief to respond to arguments made in the opening briefs.
- Oral Argument: At the discretion of the TTAB, oral argument may be scheduled. However, this is not guaranteed and is only held if the Board believes it is necessary to clarify issues.
2. TTAB Cancellation Proceedings
Purpose: A cancellation proceeding is a request to cancel an already-registered trademark. The grounds for cancellation are similar to those for opposition but focus on challenging the validity of an existing registration.
Initiation:
- A cancellation proceeding is initiated by filing a Petition for Cancellation. A cancellation petition can be filed by any party who believes they are damaged by the registration, and they do not need to wait for the trademark to be published for opposition.
- A petition must state the grounds for cancellation, which may include nonuse, abandonment, fraud, genericness, or other legal grounds.
Discovery:
- The discovery period in a cancellation proceeding is similar to that in an opposition proceeding.
- As with opposition proceedings, parties can engage in written discovery, depositions, and other discovery methods.
Motions During the Proceeding:
- Motion to Dismiss: A respondent (the party defending the registration) may file a motion to dismiss the petition for cancellation if the grounds for cancellation are legally insufficient.
- Motion for Summary Judgment: Similar to opposition proceedings, either party may file a motion for summary judgment.
- Motion to Compel: If one party fails to respond adequately to discovery requests, a motion to compel can be filed.
Testimony Period:
- The testimony period in a cancellation proceeding follows the same general format as in opposition proceedings.
- The parties submit their evidence during a testimony period of about 60 days, with each party presenting testimony and evidence in turn.
Testimony Methods:
- Written Testimony: Affidavits or declarations are commonly used for testimony.
- Depositions: Witnesses may be deposed under oath.
- Written Discovery: This can include document requests, interrogatories, and requests for admissions.
Briefing and Oral Argument:
- Opening Briefs: After the testimony period ends, both parties submit opening briefs to the TTAB.
- Rebuttal Briefs: Rebuttal briefs are filed in response to the opening briefs.
- Oral Argument: Oral argument may be scheduled at the Board’s discretion if it is necessary to clarify the issues in the case.
Key Differences Between Opposition and Cancellation Proceedings
| Aspect | Opposition Proceeding | Cancellation Proceeding |
| Purpose | Challenge a pending trademark application. | Challenge the validity of an existing trademark registration. |
| Initiation | Filed after publication of the mark in the Official Gazette. | Can be filed at any time by someone who believes they are damaged. |
| Grounds | Grounds are typically likelihood of confusion, descriptiveness, etc. | Grounds include abandonment, nonuse, fraud, genericness, etc. |
| Plaintiff | Opposer (the party challenging the application). | Petitioner (the party challenging the registered mark). |
Conclusion
TTAB Opposition and Cancellation proceedings are essential components of trademark law in the United States, providing mechanisms for disputing the registration or continued validity of trademarks. These proceedings are highly structured, with clear timelines for filing, discovery, testimony, and briefing. Though both types of proceedings involve similar processes, they differ in their initiation, with opposition proceedings challenging applications for new registrations and cancellation proceedings targeting existing registrations. The TTAB offers a legal forum for resolving these disputes, typically without the need for extensive litigation in federal court.
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At Jafari Law Group, we have years of experience helping clients of all backgrounds and from all industries successfully prosecute and defend their trademark rights. Contact our Orange County trademark lawyers today for a free consultation if your trademark is being challenged or you need to enforce your rights. We want to put our experience and track record of success to work for you.