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Cancellations

TTAB causes of action: lining up the chess pieces

Systems are incredibly powerful in the practice of law. By system, I mean a set of detailed methods, procedures, and routines used to perform an activity. When it comes to filing a notice of opposition or petition for cancellation or counterclaims in a Trademark Trial and Appeal Board ("TTAB") proceeding, I have a very simple system that I use to make sure that I am not omitting any causes of action. OK - it's really just a checklist, but it is very effective. At the end of this blog post, you'll have an opportunity to download a copy of the checklist. Let's review the available causes of action in TTAB proceedings. continue reading→

Image of person jumping into 2017 with text The New TTAB Rules

On January 14, 2017, the Trademark Rules of Practice were amended. The 2017 amendments are the first major set of changes since 2007. Many of the changes emphasize electronic filing and service, discovery limitations, and simpler introduction of evidence by way of declarations.

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Back in the Medinol days, a claim for fraud on the U.S. Patent and Trademark Office ("USPTO") was a player in Trademark Trial and Appeal Board ("TTAB") proceedings. Parties were alleging fraud left and right: the applicant or registrant knew or should have known this or that. But as we all know, the Federal Circuit put that all to bed when it issued In re Bose on August 31, 2009, holding that "should have known" is not the appropriate standard for fraud on the USPTO. Rather, there has to be subjective intent to deceive—regardless of how difficult that may be to prove. Oh, and don't forget that a party alleging fraud bears a heavy burden of proving fraud "to the hilt" with clear and convincing evidence. In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009). continue reading→