Jose Felgueroso
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Trademark Cancellation and Opposition Proceedings before the United States Patent and Trademark Office

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Versión en español

2018-08-16

The purpose of an opposition proceeding is to prevent the registration of an applied-for mark. On the other hand, the purpose of a cancellation proceeding is to eliminate the registration of a mark that has already been registered. Both proceedings take place before the Trademark Trial and Appeal Board (the “TTAB”).

United States Patent and Trademark Office in Alexandria. (Matt Rice/Wikimedia Commons)

The TTAB

The TTAB is an administrative court of the United States Patent and Trademark Office specialized in trademark matters. A panel of three administrative judges is assigned to each opposition or cancellation proceeding before the TTAB.

A cancellation or opposition proceeding cannot be filed before a court, unless an independent basis exists for the jurisdiction of the court and the cancellation or opposition claim is related to that independent basis. In general, proceedings before the TTAB are less expensive and less time consuming than court litigation.

The TTAB is governed by previous cases decided by the former United States Court of Customs and Patent Appeals, the United States Court of Appeals for the Federal Circuit, the TTAB itself, and the Commissioner of Trademarks of the USPTO.

Terms to Refer to the Parties to an Opposition or Cancellation Proceeding

The party that brings an opposition proceeding is known as the “opposer” and the party against whom that proceeding is brought is known as the “applicant.” The party that brings a cancellation proceeding is known as the “petitioner” and the party against whom that proceeding is brought is known as the “registrant.” To simplify the content of the following paragraphs, I will refer to the party that brings an opposition or cancellation proceeding as the “plaintiff” and the party against whom either of the proceedings is brought as the “defendant.”

Commencement of the Opposition Proceeding

During the trademark registration process, once the USPTO has determined that the application meets the requirements for its registration, the mark is published in the Official Gazette of the USPTO. Any party who believes it will be harmed by the registration of the mark may file an opposition during the 30 days after the date of publication.

The opposition proceeding begins with the plaintiff’s filing of a notice of opposition. During the opposition proceeding, the validity of the mark is not presumed, and, in addition, the validity of the trademark examiner’s determination about the registrability of the mark is not presumed. The plaintiff must prove that the defendant is not entitled to the registration.

Commencement of the Cancellation Proceeding

The purpose of a cancellation proceeding is to cancel a mark that has already been registered. The filing of the petition to cancel is not subject to any time limit, but once the mark has been registered for five years it can only be brought for a limited number of reasons.

The proceeding begins with the plaintiff’s filing of a petition to cancel; the plaintiff must be someone who feels harmed by the registration of the mark. A registered mark enjoys a presumption of validity, and the plaintiff must rebut it.

Grounds for the Cancellation or Opposition

The plaintiff can use different grounds to begin a cancellation or opposition proceeding. Several of these grounds may only be used during the five years after the registration of the mark.

The following grounds can be used at any time:

  • the mark is functional;
  • the mark has been abandoned;
  • the registration was obtained by fraud;
  • the registration has been obtained in violation of the rules related to collective marks or certification marks;
  • the mark has immoral or scandalous content;
  • the mark contains deceptive matter;
  • the mark erroneously suggests a connection with live or dead persons, institutions, beliefs, or national symbols;
  • the mark contains a geographical indication in connection with wines or spirits and identifies a place other than the origin of the products;
  • the mark contains insignia of the United States, a state, a municipality, or a foreign country;
  • the mark contains the name, the portrait or the signature of a living person without the person’s written consent or that of a deceased president without his widow’s written consent;
  • the mark is being used in a manner that constitutes a misrepresentation about the origin of the goods or services.

The following grounds can only be used during the period between the publication of the mark and five years after the registration:

  • The mark creates a likelihood of confusion with a registered mark or with an unregistered mark that has not been abandoned;
  • the mark is descriptive;
  • the mark is deceptively misdescriptive;
  • the mark consists mainly of a geographical description;
  • the mark consists primarily of a deceptively false geographic description.

Process

Opposition and cancellation proceedings are similar. An opposition proceeding begins with the notice of opposition, whereas a cancellation proceeding begins with a petition to cancel. Both pleadings must establish why the registration of the mark harms the plaintiff. The defendant must answer the notice of opposition or the petition to cancel.

The evidence phase includes document requests, written questions, interrogatories of the parties, and depositions.

The plaintiff has the burden of proof, and it must show that the evidence is sufficient to determine that it is more likely than not that the plaintiff’s claim is true. The burden of proof is more strict in fraud cases, in which the plaintiff must show that the evidence clearly determines that its claim is more likely to be true.

Toward the end of the process, the parties submit briefs in which they indicate the evidence that supports their position. A party may request an oral argument.

The TTAB’s decision is based on the evidence and the relevant law. The decision is limited to determine whether the mark is entitled to be registered, but it has binding effects on the parties, who must not submit new evidence about the same issues in future litigation between them. If the plaintiff wins an opposition proceeding, the mark will not be included in the trademark register; on the other hand, if the plaintiff loses, the mark will be included in the trademark register. Similarly, if a plaintiff wins a cancellation proceeding, the mark will be removed from the trademark register; on the other hand, if the plaintiff loses, the mark will remain in the register.

Appeals

If one of the parties is not satisfied with the TTAB’s decision, it is entitled to appeal the decision to the United States Court of Appeals for the Federal Circuit or to a federal district court; the parties may only use one of these options. A party may only appeal a final decision of the TTAB, but must not appeal interlocutory decisions or orders.