Trademark Opposition & Cancellation Proceedings Salumeh Loesch January 12, 2016

Trademarks Source identifier Brand Name

Problem with Trademark Litigation Damages are hard to prove Focus on injunction Cost of litigation is high

Trademark Litigation Costs At RiskStageCost Less than $1MMEnd of discovery$150K Total$325K $1-$10MMEnd of discovery$263K Total$500K $10-$25MMEnd of discovery$400K Total$720K

Oppositions/Cancellations – An Alternative? Depends… On your goals… On the situation… And it’s a lot less expensive…

B&B Hardware, Inc. v. Hargis Industries, Inc. 135 S. Ct (2015) Supreme Court held that issue preclusion should apply to TTAB adjudication on the issue of likelihood of confusion if: 1.Other ordinary elements of issue preclusion are met; and 2.Usages adjudicated by the TTAB are materially the same. Result: More TTAB ?? OR More money spent on TTAB ??

Opposition/Cancellation Costs StageCost End of Discovery$50K Total$95K

Oppositions/Cancellations – An Alternative? 1.What are trademark oppositions and cancellations? 2.Client counseling on whether to pursue an opposition or cancellation. 3.Opposition and cancellation procedures (TBMP).

Opposing application NOT registered mark (15 USC 1063) Mark that has been published for proposed registration on Official Gazette 30-day window from date of publication to oppose or file an extension (15 USC 1063(a)) Max extension of 180 days (37 CFR 2.102; TBMP 303) Trademark Oppositions

Cancelling registered mark (15 USC 1064) 5 years from the date of registration – any ground After 5 years, only if generic, functional, abandoned, fraud, misrepresents source of goods At any time if certification mark Supplemental register mark (15 USC 1092) Trademark Cancellations

Why the trademark should not be registered/have been registered Trademark dilution Infringement No acquired distinctiveness Descriptive Likelihood of confusion Deception or fraud Ownership issues No use No intent to use Abandonment Grounds for Opposition

Likelihood of confusion most common 1.Show priority 2.LOC factors No need for actual confusion Look only at the registration Grounds for Opposition

A party may establish its standing to oppose or to petition to cancel by showing that it has a “real interest” in the case, that is, a legitimate personal interest in the outcome of the proceeding and a reasonable basis for its belief in damage. (TBMP , ) “Direct and personal stake” in outcome No requirement of actual damage Reasonable belief in damages Who can file Oppn/Cancel?

Real interest and reasonable belief in damages Claim of likelihood of confusion with mark Plaintiff couldn’t register mark because of defendant’s mark Plaintiff is about to file an intent-to-use application to register a similar mark Plaintiff is a potential purchaser who might be disparaged by defendant’s mark If arguing descriptive or generic, can have standing by alleging sales of similar or related goods or services Who can file Oppn/Cancel?

“The Board is an administrative tribunal that is empowered to determine only the right to register; it may not determine the right to use, or broader questions of infringement or unfair competition.” TBMP (a)(1). Limitations of TTAB

Remedies (15 USC 1068) Refuse to register mark Cancel registration Modify application or registration Plaintiff can seek to partially cancel or oppose Limitations of TTAB

Extensions of time to oppose: 17,132 Oppositions: 5,290 Cancellations: 1,763 Compared to 3,149 TM district court filings How often used?

123 trials weeks 1,297 motions How far do they go?

Registered mark or application Police your mark Costs low Other side likely to cave In advance of litigation To avoid litigation To tell others that you’re willing to police When to file Oppn/Cancel?

Practical Considerations Client Expectations Budget and Merits

Opposition/Cancellation Procedures TBMP GENERAL INFORMATION GENERAL INFORMATION EXTENSIONS OF TIME TO OPPOSE EXTENSIONS OF TIME TO OPPOSE PLEADINGS PLEADINGS DISCOVERY DISCOVERY STIPULATIONS AND MOTIONS STIPULATIONS AND MOTIONS WITHDRAWAL; SETTLEMENT WITHDRAWAL; SETTLEMENT TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE TRIAL PROCEDURE AND INTRODUCTION OF EVIDENCE BRIEFS ON CASE, ORAL HEARING, FINAL DECISION BRIEFS ON CASE, ORAL HEARING, FINAL DECISION

Notice of Opposition/Cancellation Like district court complaint (37 CFR 2.116(c)) Specific rules for format of Notice (TBMP (a)) Service – listed address of defendant Short plain statement of: 1.Standing to proceed 2.Grounds for opposition Identify the class of goods/services Opposition/Cancellation Procedures

Answer TTAB sends the notice of filing of opposition/cancellation and date answer is due (37 CFR 2.105; 2.113) days after notice Compulsory counterclaim – attacking validity of plaintiff’s asserted registration Opposition/Cancellation Procedures

Amending Application/Registration Before opposition filed and after publication on Official Gazette, can amend (TBMP 219) Once opposition filed, have to move (15 USC 1068; 37 CFR 2.133) Consent of parties and approval of TTAB, or by motion (TBMP 514) Opposition/Cancellation Procedures

Default If no answer, TTAB issues notice of default (FRCP 55(a)) Defendant has 30 days to show cause why default shouldn’t be entered Opposition/Cancellation Procedures

For an opposition filed 10/27/15 Time to Answer 12/6/2015 Deadline for Discovery Conference 1/5/2016 Discovery Opens 1/5/2016 Initial Disclosures Due 2/4/2016 Expert Disclosures Due 6/3/2016 Discovery Closes 7/3/2016 Plaintiff's Pretrial Disclosures 8/17/2016 Plaintiff's 30-day Trial Period Ends 10/1/2016 Defendant's Pretrial Disclosures 10/16/2016 Defendant's 30-day Trial Period Ends 11/30/2016 Plaintiff's Rebuttal Disclosures 12/15/2016 Plaintiff's 15-day Rebuttal Period Ends 1/14/2017 Sample TTAB Dates

Discovery Similar to FRCP Governed by 37 CFR But with emphasis on less burdensome, more focused discovery Focus on cooperation Opposition/Cancellation Procedures

Duty to Cooperate (TBMP ) “The Board expects parties … to cooperate with one another in the discovery process, and looks with extreme disfavor on those who do not. Each party … has a duty not only to make a good faith effort to satisfy the discovery needs of its adversary, but also to make a good faith effort to seek only such discovery as is proper and relevant to the issues in the case. Opposition/Cancellation Procedures

What does this mean? Less Costly Less Info

Discovery Conference (TBMP ) 1.Nature of and basis for respective claims and defenses, 2.Possibility of settling or at least narrowing scope of claims or defenses, and 3.Arrangements for disclosures, discovery and introduction of evidence at trial, if parties are unable to settle. Opposition/Cancellation Procedures

Discovery Requests (TBMP 403) Get 30 days + 5 days if served by mail 5 days doesn’t apply to service Can serve requests on last day of discovery period Opposition/Cancellation Procedures

Depositions (TBMP 404) Non-parties: May consent and don’t need subpoena If subpoena, TTAB has no juris to enforce If person located outside of US, have to use depo on written question Discovery depositions vs. Testimony depositions Opposition/Cancellation Procedures

Interrogatories (TBMP 405) Get 75, rather than 25 (FRCP 33) But subparts may be more scrutinized Example: Describe fully the facts and circumstances surrounding Applicants first use of the mark, including, date of first use of the goods listed in the application and date of first use of the goods in commerce.  3 interrogatories, not 1 Opposition/Cancellation Procedures

Requests for Production (TBMP 406) Can’t serve on non-party “Responding party has a duty “to select and produce the items requested [and to avoid] simply dumping large quantities of unrequested materials onto the discovering party along with the items actually sought under [Fed. R. Civ. P. 34].” (TBMP ) Opposition/Cancellation Procedures

Requests for Admission (TBMP 407) Can’t be used against party in any other proceeding Opposition/Cancellation Procedures

Protective Orders (TBMP 412) Default PO – applies to all cases Three classes of protection: 1.Confidential 2.Highly Confidential 3.Trade Secret/Commercially Sensitive Opposition/Cancellation Procedures

Discovery Motions (TBMP 410, 411, 523) Telephone conference before filing motion Sanctions limited Opposition/Cancellation Procedures

Motions Generally No oral argument on motions (TBMP ) Telephone conference on Board’s initiative (502.06) Opposition/Cancellation Procedures

Motions Dismiss for failure to state a claim Summary judgment Judgment on the pleadings More definite statement Amend Extend time Suspend Reconsideration Involuntary dismissal for failure to take testimony Opposition/Cancellation Procedures

Trial (TBMP 700) Testimony periods: 30-day testimony period for plaintiff 30-day testimony period for defendant 15-day testimony period for plaintiff Notices of reliance (TBMP 704) FRE apply Opposition/Cancellation Procedures

Trial (TBMP 700) In writing Written transcripts - filed No evaluation of truthfulness Objections to evidence Argument before TTAB panel Opposition/Cancellation Procedures