Trademark Opposition & Cancellation Process U.S. Trademark Trial and Appeal Board (TTAB) US Oppositions and Cancellations 2006

Trademark Oppositions Opposition –Timing –Grounds –Process Cancellation –Timing –Grounds –Process Timing –The window for filing an opposition, or extension, is 30 days from Publication –Opposition Deadlines can be extended up to 90 days (totaling 120 days from Publication) –Extensions must be requested before expiration of Opposition Deadline.

Trademark Oppositions Opposition –Timing –Grounds –Process Cancellation –Timing –Grounds –Process Grounds –Likelihood of Confusion Prior use or registration –Distinctiveness Descriptive or Generic or Functional –No Ownership –Fraud in Filing No Use or Specimens of Use

Trademark Oppositions Opposition –Timing –Grounds –Process Cancellation –Timing –Grounds –Process Process –Notice of Opposition Short Statement of Grounds –Answer Due 30 Days After Notice or Default Includes Defenses –Trial Deadlines Set Discovery (6 Months) Testimony (30 Days) Briefs Most TTAB Cases Settle Before Testimony

Trademark Cancellations Opposition –Timing –Grounds –Process Cancellation –Timing –Grounds –Process Timing –Any Time After Registration Issues –If Registration is 5+ Years Old, Check for “Incontestability.” Incontestable Registrations Can No Longer be Challenged on Some Grounds Presumed Distinctive

Trademark Cancellations Opposition –Timing –Grounds –Process Cancellation –Timing –Grounds –Process Grounds –Likelihood of Confusion* –Distinctiveness Descriptive* or Generic or Functional –Abandonment –No Ownership* –Fraud in Filing No Use or Specimens of Use * Not Available For Use Against Incontestable Registrations.

Trademark Cancellations Opposition –Timing –Grounds –Process Cancellation –Timing –Grounds –Process Process –Petition for Cancellation Short Statement of Grounds –Answer Due 30 Days After Notice or Default Includes Defenses –Trial Deadlines Set Discovery (6 Months) Testimony (30 Days) Briefs Most TTAB Cases Settle Before Testimony