TTAB Proceedings
We are highly experienced in handling Trademark Trial and Appeal Board (TTAB) cases. Our extensive experience in TTAB cases has allowed us to perfect strategies that win TTAB cases quickly. As a result, we win TTAB cases that other attorneys would settle or lose. To view the over 400 Trademark Trial and Appeal Board cases that we have handled, you may click here.
Like any other legal proceeding, actions heard by the TTAB have requirements based on USPTO TTAB rules and procedures. Such actions involve one party filing a Trademark Opposition to a pending trademark application, or the filing of a Trademark Cancellation to an existing trademark registration. In either situation, the respondent must file an answer in the TTAB. It is imperative that you adhere to the deadlines and other requirements of the process set out by the TTAB. Many TTAB decisions are defaults because an answer is not even filed.
Our experience in these cases is that having an attorney with a long track record of success in the TTAB will dramatically increase your chance of success. From the very outset, we telegraph strength to the other side which we think goes a long way to a positive outcome. If you choose to hire us, opposing counsel will see our extensive experience in the TTAB and our track record of success and they will know that they cannot take advantage of the situation. Instead, they will be forced to confront the possibility of losing the case.
Settlement Negotiations
Please keep in mind that the majority of TTAB cases settle very quickly.
Settlement negotiations can take place at any time during the case. At times, all it takes is the filing of an answer for a party to agree to a settlement. In other situations, merely issuing comprehensive discovery requests motivates a party to settle. So every case is a little different.
Regardless of the situation, we think our track record of success combined with our aggressiveness motivates the other side to settle. We frequently have the other side give up soon after our entry into the case. So even if your goal is to quickly settle the case, we believe that an aggressive litigation law firm like us will get you the best result.
TTAB Case Chronology
The following is a brief overview of the chronology of a TTAB case.
Step 1 – A Notice of Opposition or Petition to Cancel Is Filed
The party opposing the trademark initiates the case by filing a Notice of Opposition or a Petition to Cancel —similar to a complaint—with the TTAB, stating the grounds for its opposition.
Step 2 – Answer Is Filed
Within 40 days of the initial complaint, the trademark applicant or owner must file a response—an answer refuting the claims in the complaint. Failing to file an answer on time will end in a default judgment and the abandonment of the trademark. For various reasons that we think are important, our goal is to file the Answer as soon as possible.
Step 3 – Discovery Period
A TTAB discovery conference among trademark attorneys is scheduled shortly after an answer is filed. This is a brief call to discuss discovery calendars, stipulations, and possible settlement options. The discovery process first involves each party serving initial disclosures to the other in accordance with the Federal Rules of Civil Procedure and as set out in the Trademark Trial and Appeal Board Manual of Procedure.
Then, the discovery period begins and the parties may request information from the other side by serving interrogatories, requests for admission, and requests for documents. With think that this is the crucial stage of the case. Unlike most law firms, we serve discovery requests to the other side on the very first day possible. We think this sends a strong message to the other side that we are serious about defending the case. We have been involved in dozens of cases where merely serving discovery requests wins the case. For one reason or another, it is very rare for a TTAB case to go any further than the discovery period. Usually at this stage one side or the other simply gives up or a settlement is reached.
Step 4 – Testimony Period
For rare cases that go beyond the discovery period, the next stage is a testimony period. Similar to a live civil trial, parties will take turns submitting testimony. However, the TTAB does not sit for a live trial, and instead, testimony is given by each party during alternating testimony periods. First, the party opposing the trademark will submit pretrial disclosures, witness testimony, documents, and other supporting evidence during its 30-day testimony period. Then, the applicant has a 30-day testimony period to submit evidence in its defense. Finally the opposer has a final 15-day period to rebut.
Step 5 – Trial Briefs
After receiving all testimony, the opposer must file a Trial Brief to the Board, followed by the applicant’s brief, and then followed again by the opposer’s rebuttal brief.
Step 6 – Oral Arguments (optional)
Either party may request oral argument to the Board to be considered in addition to the written record already amassed. These are similar to oral arguments in civil cases and will take place before a panel of three TTAB members.
Step 7 – TTAB Decision
After examining the written record and oral arguments (if applicable), the TTAB usually takes about six months to issue its written decision on whether the plaintiff has met its burden or proof to block the trademark. There are additional deadlines and procedures that the losing party must follow if it wishes to file an appeal of the decision.
TTAB Results
We don’t just win TTAB cases, we regularly win David vs. Goliath type TTAB cases against billion dollar companies. Below are some examples of our wins.
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- Bumble Bee Foods, LLC v. Station Casinos, LLC in the U.S. Trademark Trial and Appeal Board (TTAB) – Representing plaintiff against a billion dollar company we successfully cancelled defendant’s trademark
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- Volvo Trademark Holding AB v. Xiamen Elite Sporting Goods Co., Ltd. in the U.S. Trademark Trial and Appeal Board (TTAB) – Representing defendant against a billion dollar company we successfully defended our client’s trademark and had the case dismissed
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- Eden Beauty Concepts‚ Inc. v. Botica Comercial Farmaceutica Ltda in the U.S. Trademark Trial and Appeal Board (TTAB) – Representing plaintiff against a billion dollar company we forced defendant to file for summary judgment against itself resulting in all three of its conflicting trademark applications to abandon
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- RH US, LLC (Restoration Hardware) vs. Wade Morrison in the U.S. Trademark Trial and Appeal Board (TTAB) – Representing defendant against a billion dollar company we successfully defended our client’s trademark and had the case dismissed
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- LeVecke Corporation v. Sazerac Company, Inc. in the U.S. Trademark Trial and Appeal Board (TTAB) – Representing plaintiff against a billion dollar company we successfully opposed defendant’s trademark which was withdrawn
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- LendingTree vs. M. Beard in the U.S. Trademark Trial and Appeal Board (TTAB) – Representing defendant against a near billion dollar company we successfully defended our client’s trademark and had the case dismissed
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- Campari America LLC vs. LeVecke Corporation in the U.S. Trademark Trial and Appeal Board (TTAB) – Representing defendant against a billion dollar company we successfully defended our client’s trademark and had the case dismissed
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- Kirin Company, Limited v. Shanghai LIN MAO Trade Co., Ltd. in the U.S. Trademark Trial and Appeal Board (TTAB) – Representing defendant against a billion dollar company we successfully defended our client’s trademark and had the case dismissed
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- Steve Aoki, S. v. Dimmak Herbs in the U.S. Trademark Trial and Appeal Board (TTAB) – Representing defendant against celebrity Plaintiff we we successfully defended our client’s trademark and had the case dismissed
Contact Us
If you have further questions or are ready to proceed, please feel free to contact us.
The results mentioned above are dependent on the facts of the case, and results of cases differ based on the differing facts. Thus the above statements do not constitute guarantees‚ warranties‚ or predictions regarding the outcome of your legal matter.
