Westchester Women's Bar Association

Trademark Trial and Appeal Board Proceedings

The Trademark Trial and Appeal Board is the administrative tribunal of the United States Patent & Trademark Office ("USPTO"). Often, the Trademark Trial and Appeal Board is referred to as the "Board" or the "TTAB". The Board mostly hears trademark opposition and cancellation proceedings. The proceedings are filed by parties who are either objecting to a trademark application or to the continued registration of a trademark. The party in the position of the plaintiff must have a personal stake and a reasonable basis to believe that either the trademark application or trademark registration will damage its rights. For more on this topic, see our webpage entitled, The Standing Requirement For Oppositions And Cancellation Proceedings. The Board also has jurisdiction to hear concurrent use and interference proceedings and ex parte appeals.

Concurrent use occurs if two parties use similar or identical marks in different geographic regions of the U.S. Under this circumstance, it is not likely that the trademark use will cause confusion in the marketplace. Therefore, either party can initiate a proceeding with the Board requesting a registration that will restrict its rights to a certain geographic territory. The other adversarial matter heard by the Board, interference proceedings (which allow determinations of trademark rights between parties) are uncommon and in reality, they are no longer needed. Essentially, Opposition and Cancellation proceedings can effectively deal with determinations involving the trademark rights of various parties. Lastly, an ex parte appeal involves the applicant and the Examining Attorney. An ex parte appeal may be filed if the Examining Attorney issues a final refusal of the trademark application.

Various rules govern the proceedings at the TTAB. For example, the Rules of Practice in trademark cases are found in Title 37 of the Code of Federal Regulations (called the "Trademark Rules"). These rules are adopted from the Federal Rules of Civil Procedure and the Federal Rules of Evidence. Regarding evidentiary matters the following rules apply, the Trademark Rules, the Federal Rules of Evidence, the Federal Rules of Civil Procedure, and certain provisions of Title 28 of the United States Code. Moreover, case law governs Board procedures as well. The case law comes from several sources, Board decisions, the United States Court of Appeals for the Federal Circuit and its predecessor, the Court of Customs and Patent Appeals and the Director of the Patent & Trademark Office.

It is important to keep in mind that the issues the Board determines only pertain to trademark registration and not to use. If a party is dissatisfied with the result it receives from the Board, there are options for appeal. One is to file an action in U.S. District Court for review. The benefit of filing in District Court is that new evidence will be allowed into the record. The other option is to appeal to the United States Court of Appeals for the Federal Circuit, but this option limits the party to the record developed by the Board. It should be noted that the Federal Circuit is not bound by the Board's decision. Conversely, a decision of the Federal Circuit is binding on the Board.

Lastly, if a party believes that there has been a clear error made by the Board or by an Examining Attorney, the party may be able to file a Petition to the Director of the Patent and Trademark Office. There are several circumstances where a petition may be appropriate: (1) if a Request for an Extension of Time to File the Notice of Opposition is denied; (2) if a party is dissatisfied with a non-final order of the Board; or (3) if a party wishes to have the requirements of certain trademark rules waived or suspended. Petitions to the Director are uncommon. Trademark owners need to be mindful that litigation is costly and there is no guaranteed result, regardless of whether it is before a federal court or before the Board. Therefore, it is prudent to consider settlement options before proceeding with litigation. See our webpage entitled, Resolving Trademark Disputes Without litigation, and review several options available that may facilitate resolution of a trademark conflict. If you have additional questions, please contact our office for a courtesy consultation.

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