The USPTO TTAB (Trademark Trial and Appeal Board) is the organization within the United States Patent and Trademark Office (USPTO) responsible for deciding certain disputes regarding trademark registration.
Administrative law judges working for the TTAB have a limited purview of what they can, and cannot do. Their sole question when examining a case is whether a party has the right to register their trademark with the federal government. The TTAB does not examine questions of trademark infringement or unfair competition, nor can it take into account particulars related to use in the marketplace. These are questions that must be decided through federal trademark litigation.
Instead, there are three main types of cases TTAB will review:
- Appeals from decisions made by trademark examining attorneys
- Oppositions to trademark registration raised by other parties, and
- Cancellation actions, raised by one party to cancel the trademark of another.
Although less common, the TTAB also hears cases regarding:
- Concurrent use registration, where separate parties may use the same trademark in different geographic areas, and
- Interference proceedings, which determine who has priority use over a trademark. This type of proceeding is nearly obsolete.
TTAB proceedings are similar to litigation and are governed by some of the same civil procedure rules as federal courts. They are generally more relaxed than litigation procedures because of the nature of administrative courts.
Unlike litigation, however, there are no court hearings – most arguments are made through written submissions to the TTAB, and witness testimony is submitted in the form of written affidavits or declarations. Parties may request oral arguments, but these are not guaranteed. Moreover, TTAB proceedings do not involve monetary damages or awards for attorneys’ fees and costs. The only question in any decision is whether a trademark can be protected.
The TTAB requires submissions to be filed through its Electronic System for Trademark Trials and Appeals (ESTTA). This system, similar to online federal court filings, is designed to speed up resolution of TTAB cases and eliminate the need for paper documents. Hard copy submissions may be made in certain situations, but require an additional filing fee.
All filings are publicly available, but parties may request certain filings or other submissions be filed under seal so they can be kept confidential. There are three main categories of documents that can be filed with ESTTA:
- Requests for extension of time in which to file an opposition
- Filing a new proceeding – notices of opposition, cancellation petitions, or appeals from refusal to register, and
- Filing documents in an existing board proceeding.
Pleadings submitted to begin a new case, such as notices of opposition or petitions to cancel, must contain a short and brief statement of a claim upon which relief can be granted, as well as a list of facts which, if proven, establish:
- The opposer or petitioner has standing to oppose registration or petition for cancellation, and
- An available legal ground for opposition or cancellation.
Filings must be made in good faith; the parties cannot submit TTAB filings that contain false statements or are designed merely to harass the other party.
In a typical year, the TTAB receives about 30,000 filings. Approximately 60% are requests for extension of time to oppose registration, 20% are notices of opposition, 10% are related to appeals of examiner denials, and 7% are petitions to cancel.
After the trademark examiner approves a trademark, it must be published for 30 days for opposition before it can receive trademark protection. During the publication period, another party may oppose or object to the pending trademark application. Opposition proceedings can only be brought once a trademark application is approved for publication – trademarks that are still with the trademark examiner may never make it to this stage.
To succeed in an opposition case, the party opposing registration will need standing – only parties who have a real interest in the proceedings and a belief they will be damaged by registration may bring this sort of case.
The most common reason for opposing trademark registration is an allegation of likelihood of confusion. To make a case, the burden is on the opposer to demonstrate:
- Similarities between the two trademarks, and
- Priority, i.e. the opposer’s trademark was used first in commerce.
Less commonly, trademarks can be opposed as being merely descriptive, generic or other grounds such as fraud. During opposition proceedings, a three-judge panel will review evidence and arguments presented by both parties.
A potential opposer may also file a request to extend time for opposition. These motions are routinely granted, giving the filer an additional 30 days to research potential objections. Approximately one-third of the requests for extension turn into oppositions to registration.
If the window for opposition closes and a trademark is registered, a party may seek cancellation of the registration instead.
In cancellation proceedings, one party applies to cancel a trademark registration owned by another party.
Reasons for cancellation can include:
- Likelihood of confusion between two trademarks
- Likelihood of dilution by blurring or dilution under tarnishment
- The registrant is not the rightful owner of the trademark
- The trademark in question is no longer being used in commerce
- The trademark is merely descriptive or generic, or it fails to serve as a source indicator for the goods or services.
Cancellation proceedings may be filed at any point after a trademark has been officially registered. However, certain claims must be brought within five years of registration. After this period, a trademark becomes incontestable and gains additional protections.
Once a trademark has been registered for five or more years, it cannot be cancelled due to claims of likelihood of confusion, priority, or that the trademark is merely descriptive or generic.
A notice of opposition or cancellation petition is analogous to a complaint filed in court by a plaintiff in a lawsuit. Once this sort of document is submitted to the TTAB, the owner of the trademark in question must file an answer.
An answer will generally lay out the trademark owner’s defense to each claim raised as well as any applicable affirmative defenses, which can include:
- Unclean hands
Defendants can also raise a Morehouse defense related to prior registration. Specifically, if the defendant already owns an unchallenged, registered trademark for similar goods or services that is substantially similar to the one being challenged, this defense argues that the petitioner cannot be damaged by the existence of the disputed trademark due to the presence of another unchallenged registration.
Additionally, an answer can challenge the registration of the other party’s trademark. If that party’s trademark is invalid, then they may lose standing to bring the action.
Failure to file an answer with the TTAB in a timely fashion will result in a default judgment in favor of the plaintiff.
TTAB proceedings are similar to litigation. First, the complaint is filed, which consists of either a notice of opposition or a cancellation petition. Then, the answer is filed by the owner of the contested trademark. The parties will then meet for a mandatory discovery conference and proceed with discovery, which is typically open for 180 days.
After discovery closes, both parties will have the opportunity to submit testimony to the TTAB. This consists of:
- Pretrial disclosures
- Witness testimony in the form of affidavits or declarations, and
- Other evidence, such as supporting documentation or drawings and photographs of the trademarks in question.
The plaintiff will submit testimony first, followed by the defendant. The plaintiff will then have a chance to present any rebuttal evidence or testimony. Either party may request oral cross-examination of testifying witnesses. Witnesses may include representatives of the company whose brand is being challenged. Expert witness testimony may also be presented, regarding the industry in question, consumer trends, or other analysis beneficial to the presenting party.
Once the testimony period is completed, the parties will then submit trial briefs to the board – first, the plaintiff, then the defendant, followed by another rebuttal brief. Although TTAB oral arguments are not required, they can be requested by either party, allowing both sides to highlight arguments in front of the three-judge panel.
Once all evidence, testimony, and written and oral arguments are submitted, TTAB will issue a decision regarding the contested trademark. Decisions are typically issued within six months of final argument submission. Practically speaking, TTAB cases rarely go beyond the initial stages. Instead, early on in the case typically one party or the other gives up, or a settlement is reached.
TTAB proceedings are laid out in its Manual of Procedure. Although this document is nonbinding, it offers a thorough overview of all TTAB procedures, as well as relevant statutes, regulations, and case law on each important point. The Manual is updated every year to reflect new case law and updates to internal procedures.
TTAB Discovery Conference
Before the parties in a TTAB proceeding can engage in discovery, they must participate in a mandatory discovery conference within 30 days after the answer is due.
During the discovery conference, the parties must discuss:
- The nature and bases of all raised claims and defenses
- Modification of pleadings, and
- Plans for disclosures and discovery.
The TTAB panel of judges may also require the parties to discuss additional matters during the conference. Although certain parts of TTAB discovery are similar to procedures in federal court, there is no requirement for parties to submit a discovery plan after the conference.
Because the discovery conference is mandatory, the parties must discuss each item to conclude the conference, unless they reach a settlement agreement. If the parties believe that settlement is possible prior to the commencement of discovery, TTAB proceedings may be put on hold while the parties continue to speak with each other privately.
Should settlement negotiations fall through, the parties will proceed with discovery in order to obtain information from each other that can bolster claims or defenses, or poke holes in the other side’s arguments.
Within 30 days of the conference, the parties must submit initial disclosures to each other, providing:
- The name and contact information for any individual likely to have discoverable information, and
- A copy of documents the disclosing party has that will be used to support its claims or defenses.
Initial disclosures must be made before discovery requests are submitted or any motions for summary judgment can be filed.
During the discovery period, the parties have limitations on the extent of requests that can be made. Specifically, parties may request up to:
- 75 document requests
- 75 requests for admission (RFA), and
- 75 interrogatories.
Responses to written discovery requests must be returned within 30 days. The TTAB encourages parties to make all discovery requests early, to ensure all responses are completed by the close of discovery.
The TTAB decides about 600 cases a year. Trademark Oppositions are more than twice as common as trademark cancellations.
The TTAB is governed by a number of different rules. They can be found in:
- The Lanham Act, federal legislation governing trademark protections and procedures, and
- The Trademark Rules of Practice, which is a subset of the Code of Federal Regulations.
TTAB judges may also consider precedent from earlier cases. They examine previous TTAB-specific decisions, but also look to case law from the Court of Appeals for the Federal Circuit, the Court of Customs and Patent Appeals, the Director of the USPTO, and the Supreme Court.
The Manual of Procedure is an excellent primary source for relevant TTAB rules. Although it is updated annually, practitioners are cautioned against relying solely on the Manual for assistance with their cases.
The TTAB has a limited jurisdiction over what questions it may answer. Specifically, it only looks at whether a trademark should be, or remain, registered. Decisions will not deal with questions of infringement, unfair competition, damages, or other matters that are heard by federal judges.
Despite their limited scope, TTAB decisions can be extremely important, in that they have precedential value both in the Trademark Office, and in certain situations in front of federal courts. This question of precedential value was decided by the Supreme Court in B&B Hardware, Inc. v. Hargis Industries, Inc.. There, the Court decided that issue preclusion can apply if:
- The issues in both cases are identical
- The issues in prior proceedings were litigated and decided
- There was full and fair opportunity for litigation in the prior proceedings, and
- The issues previously litigated were necessary for a final judgment on the merits of the case.
This decision was important because issues litigated in front of the TTAB could show up at a later point in trademark infringement litigation. As a result, trademark holders should be cautious in their TTAB litigation strategy if they believe their trademarks could be subject to future federal litigation. TTAB decisions may be appealed to a US district court or to the US Court of Appeals for the Federal Circuit. All TTAB decisions are publicly available online.
We have a very active TTAB practice. If you have a TTAB issue, please contact us.