What You Need to Know About U.S. Law: Trademark Opposition and Cancellation Primer
By: Jonathan M. Gelchinsky
Similar to the laws of the EU and its member states, as well as other countries around the world, U.S. trademark law provides a mechanism through which parties with standing can oppose pending third-party applications or seek cancellation of issued registrations. Here we discuss the basics of U.S. trademark opposition and cancellation procedures.
Bases for Opposition and Cancellation
The most frequently asserted bases for opposition and cancellation in the U.S. are likelihood of confusion with a prior registered or used mark, dilution of a famous mark, descriptiveness, fraud, abandonment, and lack of a bona fide intent to use the mark. Multiple bases may be asserted in a single proceeding, which can be initiated against one or more applications or registrations owned by the respondent party.
Many of these same bases are available to parties challenging applications and registrations in other countries, though a challenge for lack of a bona fide intent to use a mark is something unique to the United States, born out of the U.S. law’s requirement that a party have a demonstrable bona fide intent to use a mark in U.S. commerce if an application is based on intent to use or on a “foreign” application or registration.
It is further noteworthy that a claim for dilution is reserved for famous marks that are “widely recognized by the general consuming public of the United States,” a difficult standard for most challengers to meet.
Standing
A party must have legal standing to bring an opposition or cancellation action before the USPTO’s Trademark Trial & Appeal Board (TTAB), meaning that the party bringing the claim has been or will be damaged by the registration of the respondent’s mark. A party need not allege likely confusion in order to establish standing. For example, if a party whose own use of a phrase it deems descriptive or generic is threatened by the respondent’s mark being registered or maintained on the register, may seek to have the mark removed.
When to File?
Oppositions are due within 30 days after publication of a mark in the Trademark Official Gazette. The deadline is extendible for up to 90 days upon request, and the opposer can obtain an additional 60 days with the applicant’s consent. It is not possible to extend the deadline further than 180 days after publication.
Cancellation actions, on the other hand, can be filed any time after a mark is registered. However, a number of the grounds for cancellation are time-barred at the registration’s fifth anniversary, including likelihood of confusion, dilution, and descriptiveness. These grounds become unavailable regardless of whether the registrant files an incontestability affidavit after the fifth anniversary. A registration may be cancelled for fraud, abandonment, and genericness at any time.
Procedures
The procedures of the TTAB are the characteristic that most significantly sets U.S. opposition and cancellation practice apart from analogous proceedings in other countries. In essence, the TTAB follows the same rules of procedure applicable to federal civil court proceedings. The result is a process that includes discovery, motion practice, optional expert witnesses, a trial to present evidence, and briefing, all of which looks very much like a U.S. civil litigation.
The case commences with the filing of a Notice of Opposition or Petition for Cancellation, setting forth the grounds, challenger’s standing, and pertinent facts relevant to the claims. The responding party has 40 days to file an Answer to the claims and, if applicable, assert counterclaims. Thereafter, the parties are required to hold a conference to discuss how they will conduct discovery, whether to voluntarily streamline any of the processes applicable to their case, and whether there is room for settlement.
The case then enters a six-month discovery period, during which each party can request documents and information from the other relating to the asserted claims and defenses, and can take depositions of individuals and corporate representatives on those subjects. If a party is located outside of the U.S., the deposition procedure is more complicated because the TTAB cannot compel a foreign party to appear at a deposition. In that situation, the deposition will be taken by written questions.
Often, parties in a TTAB case disagree on matters relating to discovery of documents and other information, and the parties may resort to motion practice in order to compel the other to produce documents or answer interrogatories. Such issues often take substantial time and resources to handle, and the TTAB encourages the parties to try to resolve their differences themselves if possible. If either party plans to rely on expert testimony, the experts’ reports must be disclosed and the experts made available for deposition.
Once discovery has closed, the proceedings enter the four-month trial phase. Unlike U.S. federal court practice, however, TTAB litigants present their trial evidence on paper through declarations, notices of reliance, and transcripts from testimony depositions of their own witnesses. The TTAB applies strict evidentiary rules to these proceedings, and it is easy for a litigant to get tripped up by some of the nuances. The consequences of having evidence excluded from consideration can be serious.
Following the trial phase, each party must submit a brief arguing the merits of its position, citing to evidence and testimony in the record, and addressing its adversary’s arguments and evidence. The TTAB limits the parties’ briefs to 55 pages each. The party in the position of plaintiff has the option to file a reply brief responding to the defendant’s arguments, and gets the “last word.”
The TTAB will hear oral arguments only if requested by one of the parties. Otherwise, the case will proceed to a decision on the papers alone.
The time from commencement of a proceeding through the end of the briefing period is roughly 18 months, at a minimum, and it could take the TTAB many additional months before it issues a decision on the case.
The TTAB rules also offer an alternate track, called accelerated case resolution. In ACR, the parties can agree to streamline many of the usual procedures, place limitations on discovery, dispense with certain evidentiary formalities, and stipulate to undisputed facts, all in order to obtain determination of their claims and defenses in a shorter time period. ACR approximates a summary bench trial or the use of cross-motions for summary judgment, as might happen in a federal suit. Utilizing ACR can significantly reduce the parties’ costs in litigating a matter before the TTAB and it can considerably shorten the time to a decision. Participation is completely up to the parties, and the ACR procedures applied in one case may differ from those of another.
The ultimate issue to be decided by the TTAB is whether a mark may be registered or remain on the register. The TTAB cannot award monetary damages or issue injunctions pertaining to the use of trademarks. A successful opposition or cancellation proceeding, moreover, will not prohibit the respondent from using the disputed mark in the marketplace, nor from owning “common law” rights in the mark. That said, the U.S. Supreme Court held in 2015 that a TTAB decision may have preclusive effect in a later case brought before the federal courts if the ordinary elements of issue preclusion are met. Federal courts have since applied that holding in trademark infringement cases involving issues of priority of use and fraud. Parties considering bringing opposition or cancellation proceedings in the United States should thus consider how issue preclusion might impact a later court proceeding involving the same parties.
This article is part of our series, "What You Need to Know About U.S. Law." Attorneys from a variety of Pierce Atwood practice groups are authoring articles on a variety of topics to educate our overseas colleagues on U.S. law. Please feel free to contact the author(s) directly if you wish to comment on this article or suggest topics for future installments in this series.