Trademark Opposition and Cancellation Proceedings at the TTAB

Please note: this webinar begins at noon (EST)

Recording of a 90-minute CLE webinar with Q&A


Conducted on Tuesday, December 12, 2017

Recorded event now available

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Program Materials

This CLE webinar will provide trademark counsel with guidance to navigate opposition proceedings at the TTAB, whether opposing the application or responding to the opposition. The panel will examine issues related to and offer strategies for filing the opposition, discovery and the trial phase.

Description

Inter partes proceedings before the TTAB are a valuable part of a brand owner’s overall trademark enforcement and protection strategy. The TTAB’s jurisdiction is limited to determining the right to register, as opposed to the right to use.

Due to the TTAB’s lack of authority to determine infringement or issue injunctive relief or monetary awards, trademark opposition and cancellation proceedings can result in a less aggressive and more cost-effective venue for resolving existing and avoiding future trademark concerns between the parties.

Counsel for the opposer or petitioner and for the applicant or registrant must be able to navigate the opposition or cancellation proceeding to succeed, whether or not the case concludes with a final trial on the merits or a negotiated coexistence agreement. Counsel must understand the differences between TTAB proceedings and civil litigation in the federal courts and the TTAB process and evidentiary requirements. Counsel must be prepared to handle these specialized proceedings.

Listen as our authoritative panel of trademark attorneys examines the grounds for filing an opposition or cancellation action, timing and the scope of the proceedings. The panel will also discuss challenges related to discovery and the trial phase of an opposition or cancellation action, as well as the differences between these phases in a TTAB proceeding and in civil litigation. The panel will offer strategies for opposing a trademark application, responding to an opposition, petitioning to cancel a registration, and responding to a cancellation action.

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Outline

  1. Filing an opposition or cancellation action
    1. Grounds
    2. Timing
    3. Scope of proceedings
  2. Discovery
    1. When opposing an application or petitioning to cancel a registration
    2. When responding to an opposition or a cancellation proceeding
  3. Trial phase
    1. When opposing an application or petitioning to cancel a registration
    2. When responding to an opposition or a cancellation proceeding

Benefits

The panel will review these and other key issues:

  • What are the grounds for opposing a trademark application or cancelling a trademark registration?
  • How should counsel for the party respond to the opposition or cancellation action during discovery?
  • What are strategies for the party opposing the application or petitioning to cancel the registration during the trial phase?

Faculty

Baird, Stephen
Stephen R. Baird

Shareholder
Winthrop & Weinstine

Mr. Baird heads the Intellectual Property and Trademark and Brand Management Practice Groups, and his practice...  |  Read More

Hudis, Jonathan
Jonathan Hudis

Partner
Quarles & Brady

Mr. Hudis counsels clients in trademark, copyright, unfair competition and trade secrets matters and is well...  |  Read More

McLeod, Linda
Linda K. McLeod

Partner
Kelly IP

Ms. McLeod's practice focuses on litigation before the Trademark Trial and Appeal Board and the courts, trademark...  |  Read More

Other Formats
— Anytime, Anywhere

Strafford will process CLE credit for one person on each recording. All formats include program handouts. To find out which recorded format will provide the best CLE option, select your state:

CLE On-Demand Video

48 hours after event

$297

Download

48 hours after event

$297

DVD

10 business days after event

$297 + $9.45 S&H