Trademark Opposition and Cancellation Proceedings

Trademark Oppositions and Cancellations are adversarial administrative proceedings before the Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office (USPTO).  Their primary purpose is to defeat the registration of a mark. Trademark Oppositions challenge pending trademark applications while Trademark Cancellations contest trademark registrations. Brand Registry Trademark has extensive experience helping online sellers navigate trademark opposition and cancellation proceedings.

What is a Trademark Opposition proceeding?

At a certain point in federal trademark application—after the USPTO examining attorney has approved of the trademark—she or he publishes the mark in the Federal Register to give interested third-parties the opportunity to oppose the mark.  To explain, even though the USPTO feels that the trademark application should register, affected third parties (usually owners of similar marks or competitors) may disagree.  In response, third parties may extend the opposition period (to consider whether to oppose) or they may formally file a Notice of Opposition.  A Notice of Opposition sets forth the third party’s basic claim as to why the trademark application should not register.  Once a Notice of Opposition is filed, the trademark application is suspended, and a proceeding to decide the dispute begins before the USPTO TTAB.  Trademark Oppositions may be compared to small lawsuits in how they proceed.

What is a Trademark Cancellation proceeding? 

Even though the USPTO grants a trademark registration, affected third parties (again, usually owners of similar marks or competitors) may disagree.  These third parties can dispute and challenge the registration by filing a Petition for Cancellation with the USPTO TTAB.  A Petition for Cancellation sets forth the third party’s basic claim as to why the trademark registration should be cancelled.  Once a Petition for Cancellation is filed, a proceeding to decide the dispute begins before the USPTO TTAB.  Trademark Oppositions may be compared to small lawsuits in how they proceed.

How long to Trademark Opposition and Cancellation proceedings last?

Trademark Opposition and Cancellation Proceedings can last anywhere from weeks to months (on the short end) to 2+ years (on the long end).  Significantly, much like litigation, the vast number of disputes are settled between the parties prior to reaching the conclusion of the proceeding or formal decision by the TTAB.

How expensive are Trademark Opposition and Cancellation proceedings?

Administrative proceedings like Trademark Opposition and Cancellations are generally much less expensive than litigation.  However, if the proceedings go the distance (to a formal decision by the USPTO TTAB), costs may reach into the tens of thousands-, or in rare cases, hundreds of thousands of dollars.  As mentioned above, more commonly, disputes are settled between the parties prior to reaching a formal decision by the TTAB.  In any event, Trademark Opposition and Cancellation proceedings proceed along scheduled milestones, so budgets and estimates can be developed by a party to affordably reach business objectives.

What are some of the advantages and disadvantages of TTAB proceedings?

TTAB proceedings are usually far less expensive and require less time than litigation.  However, TTAB proceedings only decide issues related to the right to trademark registration.  Although litigation is longer and more expensive, parties have more available remedies like monetary damages and/or injunction (immediate action such as a court ordering a party to stop using of mark).

Contact Brand Registry Trademark today for expert trademark attorneys to help you with a Trademark Opposition or Trademark Cancellation before the United States Patent and Trademark Office (USPTO) Trademark Trial and Appeal Board (TTAB).