Filing an Opposition or Cancellation Proceeding
To file an Opposition or Cancellation with the Trademark Trial and Appeal Board (The "Board" or "TTAB"), a complaint is filed along with the required fee. Filings are made through the online electronic filing system known as ESTTA. In order to determine the timeliness of the TTAB filings, Eastern time will control. For more information on ESTTA see the Trademark Trial and Appeal Board Manual of Procedure "TBMP" §110.
Any person who believes that they could be damaged by the registration of a mark on the Principal Register can file a complaint. This damage can include dilution by blurring or dilution by tarnishment. The term "damage" as used in §§ 13 and 14 of the Trademark Act concerns a party's legal standing to file an action. One's "standing" to file an Opposition or Cancellation can be established by demonstrating the party has a real interest in the mark. The plaintiff should allege a "direct and personal stake" in the outcome of the proceeding. To learn more about standing, see our web page entitled, The Standing Requirement For Opposition And Cancellation Proceedings. Conversely, marks registered on the Supplemental Register are not published prior to registration or subject to opposition. However, such marks will be published upon registration in the Official Gazette of the Trademark Office.
An Opposition to a trademark on the Principal Register must be filed within 30 days after publication of the mark or within an extension of time to oppose. If you miss either period described herein there is no allowance for extension, either by agreement of the parties, waiver by the Board or by petition to the Director. These filing requirements are statutory and must be adhered to as described in the statute.
With respect to filing a Cancellation proceeding, certain grounds for cancellation are available at any time after the mark registers (See Trademark Act Section 14(3) or 14(5)) and other grounds may only be used as a basis to cancel within five years of registration. See our webpage entitled, Challenging Trademark Rights After Five Years Of Registration for the specific grounds that may be asserted after the five-year period. The Petition for Cancellation does not have to be verified, but must be signed by the petitioner or the petitioner's attorney. A Petition to Cancel may be filed at any time for a mark on the Supplemental Register and any grounds may be asserted.
The statutory provision barring certain attacks after five years of registration is not dependent on filing a Declaration under Section 15 of the Trademark Act (the Affidavit of Incontestability). In other words, should the Section 15 Affidavit not be filed for a particular trademark registration, one still would be barred from bringing certain claims against a trademark after five years. In addition, to pleading standing, a plaintiff must also plead a statutory ground for Opposition or Cancellation. A plaintiff must properly plead each claim. If a claim is not properly pleaded, the complaint must be amended. This includes pleading any registration a plaintiff will rely on.
Regarding service of the complaint (the Notice of Opposition or the Petition to Cancel), the rule changes of January 14, 2017 shifted the burden to the Board. Once filed, the Board will serve the complaint on the defendant in the form of a link to view the complaint and to access the electronic proceeding record. The service by the Board will be by email if the defendant authorized email communication with the USPTO. The Trademark Rules require all applicants and registrants to update the USPTO with proper correspondence information (physical address or email address). Except for the Notice of Opposition or the Petition to Cancel, every other submission filed with the Board must be served by the filing party on the other party or parties in inter partes cases. The filing fee for a Notice of Opposition or a Petition to Cancel is $400 per class. The Board will also file an Institution Order once the complaint is filed and it will include the due date for filing an answer along with the other trial dates. If you have additional questions pertaining to Opposition or Cancellation proceedings, please feel free to contact our office for a courtesy consultation.