This video provides an overview of the three main types of Trademark Trial and Appeal Board ("TTAB" or "Board") proceedings a trademark owner may encounter: Appeals, Oppositions, and Cancellations. The video also features suggestions on how to retain legal counsel to assist you during a TTAB proceeding. This assistance is important, as losing your case before the Board may result in the abandonment of your application or the cancellation of your registration.
SANDHYA MAHAJAN, TMIN INVESTIGATIVE REPORTER:
Are you curious about the TTAB? Have you heard it mentioned in our other trademark videos? Or seen the acronym referenced in a letter from the Office?
If so, you've come to the right place. Over the next few minutes, I'll explain what the TTAB is, what it does, and how it might affect your trademark application or registration.
But first, what do the letters TTAB actually stand for.
The letters are an acronym for the Trademark Trial and Appeal Board, often simply called "the Board."
The TTAB is a neutral body that functions like a court for trademark matters at the USPTO. It is authorized to determine a party's right to register a trademark with the federal government.
It is not authorized to determine whether you have the right to use a trademark, just whether you have the right to register it.
Additionally, the Board is not authorized to determine questions of trademark infringement or unfair competition or to award money damages or legal fees. For those issues, you must file a case in state or federal court.
While the Board is authorized to handle many different types of cases, there are three main categories of proceedings that applicants and registrants should know about: appeals, oppositions, and cancellations. Let's take a look at these, one by one.
One of the most common Board proceedings is an appeal of the decision of a USPTO Examining Attorney.
During the application process, an examining attorney may refuse your mark for various legal reasons.
For example, the examining attorney may refuse to register your mark because it merely describes your goods and services or is likely to cause confusion with a registered mark.
If a refusal is final and you disagree with that decision, you may appeal it to the Board. The Board then decides whether your mark may register.
The Board's determination is made by a three-judge panel that independently reviews the case and issues a written decision explaining its reasoning. Because the Board reviews the same legal record and applies the same legal standard as the USPTO examining attorneys, please be aware that it is quite difficult for an applicant to win an appeal. Also be aware that these procedures can be very complex.
Another common Board proceeding is an "opposition." In an opposition, a person may oppose (or "object to") the trademark application of another party in order to stop that party from obtaining a federal registration.
As you might recall from other trademark videos, before a mark can register, the mark must be published for opposition in the Official Gazette (available through USPTO.GOV). Publication starts the opposition period, which typically lasts for 30 days.
During the opposition period, any party that believes that it would be damaged if the published mark registers may oppose registration.
Although there are many possible grounds for opposition, the most common one is a claim that a likelihood of confusion exists between the published mark and the opposer's mark.
In this type of proceeding, a three- judge panel issues a decision after both sides have had an opportunity to present evidence and make arguments before the Board. These issues and procedures can be very complex and the experience is similar to a civil court case.
The third type of common Board proceeding is a "cancellation." In a cancellation, one party seeks to cancel a trademark registration owned by another party.
There are many possible grounds for attempting to cancel a registration. Some of the more common ones include claims that the registered mark is likely to be confused with another mark, that the registrant is not the rightful owner of the mark, and that the registrant is no longer using its mark. Like oppositions, cancellation proceedings are highly complex and involve time-consuming and detailed presentations of evidence and legal arguments.
All of these proceedings require you to follow strict rules, meet multiple deadlines, and pay necessary filing fees. In addition, oppositions and cancellations have additional rules that are similar to those used in federal courts. As such, if you are unfamiliar with trademark law and the rules and requirements for appearing before the Board, you may find it difficult to properly conduct your case without hiring legal counsel. Hiring an attorney experienced in these matters is strongly recommended.
Although neither the USPTO nor the TTAB can provide the name of an attorney for you to use, you can find one by searching the Internet, telephone directories, and by consulting with your local or state attorney bar association. These resources should help you find an attorney who is experienced in trademark law and who, ideally, has experience appearing before the Board.
If you cannot afford an attorney, you may wish to consider the USPTO's Law School Clinic program.
Through this program, law school students (working under the guidance of qualified faculty members) provide assistance in proceedings before the Board to individuals and small businesses that meet income eligibility requirements.
To learn more about the program, go to USPTO.GOV and search for the term "Law School Clinic." The website has a list of participating schools, Frequently Asked Questions, and contact information on how to become a client.
If you do decide to file on your own, use the TTAB's on-line tools. File documents with the TTAB using the ESTTA system ("E-S-T-T-A") and view TTAB documents on-line by using TTABVue.
Both of these tools are available through the TTAB page of the USPTO.GOV website.
Other TTAB-related resources are available on the TTAB page, including Frequently Asked Questions and information about what filing fees are required.
So, remember, the TTAB is the Trademark Trial and Appeal Board and it handles various trademark law proceedings involving federal trademark applications and registrations. These proceedings include oppositions, cancellations, and appeals of Trademark Examining Attorneys' final decisions.
Feel free to replay this video, read the printable transcript, and check out the TTAB page on USPTO.GOV for more information. And keep an eye out for more of these broadcasts throughout the website.
I'm Sandhya Mahajan, Trademark Information Network.