TRADEMARK OPPOSITION PROCEEDINGS: PRE-TRIAL CONSIDERATIONS

TRADEMARK TRIAL AND APPEAL BOARD: YOU’RE PLAYING WITH THE BIG BOYS NOW

What is critical to understand about the trademark opposition/cancellation process is that it is a “Virtual” analogue to real-world litigation. Thus, despite the fact that in nearly all cases, Trademark Trial and Appeal Board (TTAB) disputes take place without the parties ever actually meeting, the procedural rules and protocols are just as serious and regimented as those found in Civil lawsuits. This is an important concept to understand and internalize because it is easy to get lulled into sloppiness and complacency by the rather informal nature of submitting briefs, motions, and documents online. Don’t be fooled – Trademark Oppositions and Cancellations are very serious matters indeed whose procedural dictates must be followed to the letter.

CORRESPONDENCE & SERVICE

As is the case with the entirety of the Trademark Opposition/Cancellation process, “Pre-trial” considerations in Board inter party cases are very similar to civil suits. Before commencing suit, all parties involved must consider the merits of his respective case, evaluate what claims to make, what their defense/s should be, and which settlement options may or may not be possible. Depending on how this calculus ultimately plays out, it may be more or less prudent to push for a settlement agreement (which, statistically, is what usually happens) rather than pursue the case to its better end.

Nevertheless, there are some Board-specific considerations that don’t necessarily exist in traditional civil suits. Most specifically, prospective opposers must pay close attention to the unique time limits set forth by TTAB procedure for filing and responding to motions in trademark opposition proceedings. The TTAB is enormously strict with timelines and at the beginning of a suit, will release to each party the timeline (Day, Month, and Year.) for the submission of briefs/interrogatories/discovery etc. In the event that a party feels that he cannot meet a certain deadline to file a brief/respond to a motion/discovery etc. (or that it would be strategically advantageous to postpone), he will need to follow the idiosyncratic TTAB steps required for extending the opposition period.

Let’s consider several features of the Trademark Opposition/Cancellation Process issues you should be aware of in the unfortunate event that you’re ever involved in a Board inter partes case.

TTAB SECTION 209.01 – NO SUSPENSION FOR FIING A TRADEMARK OPPOSITION

Under Section 209.01, the TTAB will not suspend the trademark opposition time limits for filing an opposition for any reason. The Board won’t consider the suspension even if:

• All parties agree to the suspension.
• The parties are involved in civil litigation.
• It’s requested to help facilitate settlement.
• It will give the Examining Attorney more time to consider a proposed amendment.

Instead, the theoretical opposer must either file timely requests for extensions of time or file the actual notice of opposition. However, once the notice of opposition is actually filed, the Board will consider the reasons above to suspend the opposition.

THE PRE-TRIAL PHASE IN THE TTAB

The applicant’s attorney will be the representative for the applicant until the application is either cancelled or the registration is approved. Again, no one can file a motion to pause the application process.

If the application is allowed to move forward, the mark is then published for opposition. The Board will let the applicant’s trademark lawyer know if any extensions have been filed and approved. The Board will also certainly let the attorney know if any oppositions to the mark have been filed.

It’s important to note that the notification from the Board to the attorney concerning oppositions that may have been filed is separate and distinct from the notice of opposition that the opposer sends to the applicant or the applicant’s attorney (this is Rule 2.101(b), 37 C.F.R. § 2.101(b)).

JURISDICTION OVER THE TRADEMARK BEFORE/DURING/AFTER OPPOSITION

Perhaps one of the more confusing features of the trademark opposition process is understanding how the TTAB interfaces with the “regular” trademark office of the USPTO. Remember, trademark applications are filed through TEAS and processed by a regular, Examining Attorney. Trademark Opposition Proceedings, conversely, are processed by the Trademark Trial and Appeal Board (TTAB) and it is not entirely obvious when the jurisdiction over the trademark shifts from the USPTO/Examining Attorney to the TTAB.

When you are filing an opposition, or someone if filing an opposition against you, it’s important to realize that the opposition period does not necessarily give the Board jurisdiction over the file.

Under Trademark Rule 2.84, the trademark examining attorney exercises control (and therefore jurisdiction) over the mark up until the date the mark is published in the Official Gazette. However, post publication, the examining attorney may under more limited circumstances (typically with the explicit permission of the Director) exercise control over the trademark application. However, once the Trademark Opposition Proceeding has commenced, Jurisdiction shifts to the TTAB and indeed under Section 2.133, a trademark application already subject to an opposition may not be amended “in substance” without approval from the TTAB.

Please bear in mind, the TTAB will not suspend the opposition simply because a post-publication amendment has been filed with the examining attorney.

CHANGING COUNSEL DURING THE TRADEMARK OPPOSITION PROCESS

It is actually quite common to see a series of attorney representing a single plaintiff/defendant in trademark opposition proceedings simply because these are complex cases and different “specialist attorneys” are required at different stages of the proceeding.  How does one become the trademark attorney of record? Simply by filing the trademark opposition papers. Under trademark Rule 2.17, the filings signed by the attorney ip so facto render the attorney the legitimate representative of the plaintiff defendant.

In the event that the original attorney of record decides to stop representing an applicant during the opposition period, the Board must be notified and grant permission for the original attorney to leave or withdraw.  This is not excessively surprising; The attorney cannot simply to decide to pick up and leave without giving proper notice to the client and the TTAB. To ensure the client is not left without representation (at least for a certain period of time), the TTAB requires the trademark attorney to formally resign and be granted permission to abscond from the case.

If an opposer chooses to hire a new attorney, then there is no need for the prior attorney to contact the Board. The new attorney can just pick up the case from where it was left off by the original trademark attorney. Of course, the new attorney should make all parties aware of his or her address and request all correspondence related to the file be sent to that address.

TRADEMARK OPPOSITION PROCEEDINGS: SERVICE REQUIREMENTS

Throughout the course of the trademark opposition period, there will undoubtedly be many motions and transactions (both procedural and substantive) and depending on the nature of these exchanges, there will be different service requirements. For example, a defendant in a trademark opposition proceeding does not to serve the initial Answer to the opposer although this may be done through email rather than in person (or mail).

However, for specific amendments that each respective party may decide to file, there are not necessarily service requirements. For example, the opposer doesn’t need to supply the applicant with a copy of any extension requests. Likewise, the applicant is not compelled to alert the opposer if an amendment is filed. Still, even though there may not be a specific requirements for either party to supply the other with service copies, there are many pragmatic reasons for doing so anyway. Your trademark attorney can advise you on when such an action may be in your best interest. Be sure to follow Trademark Rule 2.101(b), 37 C.F.R. § 2.101(b), which states that the notice of opposition must be served on the applicant by the opposer and proof of service must be included for the Board at the time the notice of opposition is filed.

This article is the first in a series of articles covering some of the technical nuances involved in the trademark opposition/cancellation process.

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