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How Does the TTAB Handle Cases?

How Does the TTAB Process Cases?

Appeals, Oppositions, and Cancellations Explained

The Trademark Trial and Appeal Board (the TTAB or the Board) is a neutral body that functions like a court for trademark matters at the USPTO. The Board's administrative trademark judges are authorized to determine a party's right to register a trademark with the federal government. The Board is not authorized to determine whether you have the right to use a trademark, just whether you have the right to register it. Additionally, the Board is not authorized to determine questions of trademark infringement or unfair competition or to award money damages or attorney's fees. For anything other than determining the right of federal registration, you must file a case in federal or state court.

Types of Cases TTAB Handles

While the Board is authorized to handle five different types of cases, there are three main categories of proceedings that applicants and registrants should know about: appeals, oppositions, and cancellations.

Appeals

One of the most common Board proceedings is an appeal of the decision of a USPTO Examining Attorney. During the application process, an Examining Attorney may refuse to register a mark for various legal reasons. For example, the Examining Attorney may refuse to register the mark because it merely describes  goods and services as listed in the application or is likely to cause confusion with a registered mark. If TTAB provides a "final" refusal and the applicant disagrees with that decision, the applicant may appeal to the Board. The Board then decides whether the mark may be registered.

The Board's determination is made by a three-judge panel that independently reviews the application file, including all communications between the applicant and the Examining Attorney, and issues a written decision. Because the Board reviews the same legal record and applies the same legal standard as the USPTO Examining Attorneys, it is quite difficult for an applicant to win an appeal.

Oppositions

Another common Board proceeding is an "opposition." In an opposition, a party may oppose (or "object to") the trademark application of another party in order to stop that party from obtaining a federal registration. Before a trademark can register, the mark must be published for opposition in the Official Gazette. Publication starts the opposition period, which initially lasts 30 days, but may be extended. During the original opposition period, any party who believes that it would be damaged if the published mark registers may oppose registration. Although there are many possible grounds for opposition, the most common one is a claim that a likelihood of confusion exists between the trademarks.

In this type of proceeding, a three-judge panel issues a decision after both sides have had an opportunity to present their evidence and make arguments in legal briefs before the Board.

Cancellations

The third type of common Board proceeding is a "cancellation." In a cancellation, one party seeks to cancel a trademark registration owned by another party. There are many possible grounds for attempting to cancel a registration. Some of the more common ones include claims that the registered mark is likely to be confused with the other party's mark, that the registrant is not the rightful owner of the mark, and that the registrant is no longer using its mark.


Rhonda Harper MBA, Likelihood of Confusion Survey Expert, Expert Witness

Rhonda HarperRetained by 100+ law firms since 2005, Ms. Harper is courtroom proven. She has been engaged to provide 65+ surveys, 80+ reports, 30+ rebuttals, 45+ depositions, and serve in 20+ trials. She has provided services to both Plaintiffs (60%) and Defendants (40%) across trademark and trade dress, packaging, merchandising, defamation, licensing, breach of contract, advertising, and commercial reasonableness. She has provided services in virtually every Circuit as well as JAMS and TTAB.

Ms. Harper's 30+ year career includes serving as a Fortune 100 Chief Marketing Officer. Having authored two books, she is a former Adjunct MBA Marketing Professor.

Ms. Harper is routinely retained to formulate expert surveys, conduct rebuttal critiques, or construct rebuttal surveys to show the potential difference in results with properly designed and executed surveys. She has extensive experience and a deep understanding of survey design, sampling, question construction, data analysis, and methodological pitfalls that introduce bias or systematic error.

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