Is Your Trademark Being Opposed or Cancelled?
Prompt action on your part may be necessary when confronted with third-party challenges to your mark.
TTAB Opposition Proceedings
If you have received a notice of opposition or an extension of time to oppose after the publication of your mark, you have a time frame of 40 days to file an answer to the complaint. Any defenses you might want to raise in your answer depend on the type of claims made by the opposer. In addition, you might be able to assert a counterclaim against the other party and thus challenge the validity of its registration. Your strategy in defending the opposition depends in large part on the facts of the case and on how meritorious the other side’s arguments are.
Trademark opposition proceedings may take more than two years to conclude. Depending on both parties’ willingness to enter into an agreement regarding the registrability of the opposed mark, an opposition may settle earlier in the development of the case. The length of the proceeding also determines its cost in terms of legal fees to the parties. Please note that monetary damages are not awarded in Trademark Trial and Appeal Board (TTAB) proceedings.
TTAB Cancellation Proceedings
Trademarks registered on both the Supplemental and Principal Registers are subject to cancellation by parties that may be damaged by the said registrations. For example, an applicant whose trademark has been refused because of likelihood of confusion with a prior registered mark may attempt to cancel the conflicting registration based on one or multiple grounds. Some possible grounds for cancellation include abandonment, descriptiveness, genericness, and likelihood of confusion. The grounds for cancellation become more limited after the fifth anniversary date of a registration, meaning that registrations five years or older become immune from certain attacks.
Cancellation proceedings before the Trademark Trial and Appeal Board (TTAB) may take more than two years to complete. However, it is possible that such cases be resolved faster through settlement or alternative arrangements before reaching trial. To prevent costly cancellation proceedings based on non-use or fraud, trademark owners must keep precise records showing use of their marks in commerce, and they must submit accurate application and maintenance documents during the registration process.
Cease and Desist Letters
Trademark owners who believe that their trademark rights are being damaged by another person’s use of its mark may send the alleged infringer a “Cease and Desist Letter,” demanding that the alleged violation be discontinued lest a more serious legal action ensue. Sending such a letter is not a requirement for initiating litigation in California, so owners of allegedly infringing marks may not receive any warning before being sued, or they may receive a cease and desist letter simultaneously with being served with a complaint.
If you have been put on notice that the use of your mark on or in connection with some or all of your goods and services is unauthorized, you should carefully evaluate the validity and strength of the claims made against you before deciding how to proceed. If you choose to ignore claims of infringement or dilution, which a court later finds meritorious, you may be held liable for willful violation of another person’s rights and subjected to monetary damages and penalties. On the other hand, you may opt to challenge the allegations made against you by means of negotiation or initiation of an administrative or court proceeding.