Trademark Trial and Appeal Board Proceedings
What Is the TTAB?
The Trademark Trial and Appeal Board (TTAB) is an administrative tribunal within the United States Patent and Trademark Office (USPTO). It decides disputes about whether a mark may be federally registered or whether an existing federal registration should remain in place. It also reviews certain USPTO decisions refusing registration.
The TTAB’s authority concerns registration. It can refuse an application or cancel a registration, but it cannot order a party to stop using a mark or award infringement damages. Those forms of relief must be sought in court. A TTAB decision about registration also does not, by itself, resolve every question about a party’s right to use a mark.
Trademark Opposition Proceedings
An opposition challenges a trademark application before the mark registers. After the USPTO approves an application for publication, a party that believes it would be harmed by registration generally has 30 days from publication to file a notice of opposition or request an extension of time to oppose.
Opposition grounds depend on the facts. They may include an earlier party’s trademark rights and a likelihood of confusion, a claim that the proposed mark is merely descriptive or generic, or other reasons the mark is ineligible for registration. The applicant has an opportunity to defend the application. If the opposition succeeds, the challenged application will not proceed to registration for the goods or services affected by the decision.
Cancellation Proceedings Within Five Years of Registration
A cancellation proceeding challenges a mark that has already registered with the USPTO. During the first five years after registration, a party that believes it is or will be damaged by the registration may petition the TTAB to cancel it on applicable grounds. These may include prior rights and likelihood of confusion, descriptiveness, genericness, abandonment, fraud, or other defects in the registration. The grounds available depend on the registration and the specific facts.
Cancellation can be sought as to an entire registration or, where appropriate, only certain goods or services.
Cancellation Proceedings After Five Years of Registration
A registration can still be challenged after five years, but the grounds for cancellation are narrower. Under Section 14 of the Trademark Act, grounds that may remain available include abandonment, a mark becoming generic, functionality, a registration obtained by fraud, certain statutory prohibitions on registration, and use of the mark to misrepresent the source of goods or services. The statute also permits a challenge, at any time after the third anniversary of registration, based on a claim that the mark was never used in commerce for some or all of the listed goods or services, subject to statutory qualifications.
The five-year distinction matters especially to a party relying on prior rights or likelihood of confusion. Priority and likelihood of confusion grounds generally must be raised in a TTAB cancellation proceeding within the first five years of the registered mark. Reaching the five-year mark does not make a registration immune from every challenge, and the separate requirements for a declaration of incontestability should not be confused with the cancellation deadline.
Appeals From Trademark Office Actions
If a USPTO examining attorney issues a final refusal to register a mark, the applicant may appeal that refusal to the TTAB. This is called an ex parte appeal because it generally involves the applicant and the examining attorney, rather than two private parties disputing a mark. The TTAB reviews the refusal based on the applicable law and the record developed during examination.
Common appeal issues include likelihood of confusion, descriptiveness, failure to function as a trademark, and specimen or other registration requirements. Appeal deadlines depend on the application; for most domestic applications, the initial deadline is three months after the final Office action, with an extension potentially available. A request for reconsideration does not, by itself, extend the deadline to appeal.
Other Matters Before the TTAB
The TTAB also handles concurrent use proceedings, which concern whether more than one party may hold a federal registration for a similar mark with restrictions such as geographic limitations. It hears appeals arising from certain USPTO expungement and reexamination proceedings involving registered marks. Those expungement and reexamination proceedings begin through a separate USPTO process, an appeal from the resulting decision may come before the TTAB.
Torani Law P.C. represents clients in TTAB matters involving trademark oppositions, cancellations, and appeals from refusals to register. We evaluate the parties’ rights, the applicable grounds and deadlines, the evidence, and the client’s business objectives to develop a strategy for pursuing or defending a federal registration.