Trademark Trial and Appeal Board (TTAB) Proceedings
The Trademark Trial and Appeal Board (TTAB) is an administrative board of the United States Patent and Trademark Office that is empowered to determine whether a party has the right to register a particular trademark. The TTAB has two inter partes proceedings to challenge another person’s registration of a mark: opposition proceedings and cancellation proceedings.
Opposition and cancellation proceedings before the TTAB are similar to a civil action in a federal district court. There are pleadings, disclosures, discovery, trial briefs, and, in some cases, an oral hearing. However, the procedures differ from civil litigation. The most significant difference is that proceedings before the TTAB are conducted primarily in writing, and the Board’s decisions are based upon the written record of the case.
An opposition is a proceeding in which a party seeks to prevent the issuance of a registration of a trademark. Any person who believes that he would be damaged by the registration of a mark may file an opposition. However, an opposition, or a request to extend the time to oppose, must be filed within 30 days after the publication of the mark in the USPTO’s Official Gazette, which is published weekly.
A cancellation proceeding is a proceeding in which a person seeks to cancel an existing trademark registration. A petition for cancellation may be filed by any person who believes that he is or will be damaged by the registration of the mark. A petition for cancellation may only be filed after the issuance of the registration.
A petition to cancel a trademark registration within the first five years after registration may be based on any reason that the mark could have been precluded from registration in the first place, including: (1) likelihood of confusion with petitioner’s mark, (2) descriptiveness, (3) genericness, (4) abandonment, (5) fraud, and (6) misdescriptiveness and deceptiveness.
If a trademark has achieved incontestible status, the mark can no longer be canceled on the basis that the mark lacks distinctiveness or creates a likelihood of confusion with a prior-registered mark. However, the mark can still be canceled for a number of reasons, including: (1) genericness, (2) abandonment, and (3) fraud.