the Trademark Resource for Start-Ups, Business Owners, Marketing Professionals, In-House Counsel, and Attorneys


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→

Trademark Crowded Field
Whether trying to overcome a likelihood of confusion refusal by an examining attorney or litigating a Section 2(d) likelihood of confusion claim in an opposition proceeding, arguing that there is no likelihood of confusion due to a crowded field (many similar marks in use for similar goods or services) has pretty much been hit or miss. In other words, there has been little consistency by examining attorneys at the ex parte prosecution level or by the Trademark Trial and Appeal Board (“TTAB”) in oppositions or cancellations. But a pair of recent decisions by the Federal Circuit should help change that—hopefully. It appears that both examining attorneys and the TTAB need to give more careful consideration and afford greater weight to evidence of a crowded field.

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Keep CalmYou filed a trademark application. You overcame the examining attorney’s office actions and got the application past the examination process. The application was approved for publication. Things were moving along swimmingly! You could almost feel that certificate of registration in your grubby little hands (but my hands are not grubby you protest—maybe not yours specifically but I bet there’s at least one person reading this with grubby hands—don’t get mired in my colorful word choices).

Then suddenly with a loud boom, you are rudely awakened from your dream sequence trademark fantasy. The loud boom is the notice of opposition that was just filed and served on you. “Now what? Help! What do I do?” you say to yourself. That’s easy. Just read this blog post. continue reading→