Opposition and Cancellation Proceedings

In some instances, litigation about trademark rights takes place at the Trademark Trial & Appeal Board (“TTAB”). This forum will handle “Opposition” or “Cancellation” proceedings. An opposition is a proceeding that attacks an application to register a trademark after it has been published. A cancellation proceeding is filed after a trademark has been registered, and an offended party wants to cancel the registration.

Both proceedings are launched by aggrieved parties who are removed from the application process, which is normally just between the applicant and Trademark Office. The Petitioner is usually a person or business who claims a prior interest in the trademark in question, or claims that he or she will be damaged by registration of the trademark. Common issues are the scope of the use in commerce and who had the “first use” in commerce. The TTAB does not have the right to award damages for infringement, or ability to issue injunctions to stop infringements, but they can cancel a trademark or not allow a registration. The proceedings can both be useful for handling trademark disputes. There is a limited ability with TTAB proceedings to gather evidence through “discovery” and to take sworn depositions to support arguments to the Board.

Importantly, sophisticated trademark counsel will look at the TTAB proceedings in context of the larger picture of trademark rights. The results of the proceedings can be used to influence federal litigation and there is concurrent jurisdiction to resolve issues that also arise in federal litigation. It is not uncommon for one forum to “stay” a proceeding to allow the other to proceed. The timing of requesting such a stay is important and must be carefully weighed to make the right strategic choice.

Buche & Associates, P.C. has considerable experience handling trademark opposition and cancellation proceedings. Do not hesitate to contact us for a free initial consultation to see if we will be a good fit for your business in the event you have an issue with a trademark cancellation or opposition proceeding.