Trademark Opposition and Cancellation Proceedings at the TTAB

An encore presentation with live Q&A.

A 90-minute premium CLE video webinar with interactive Q&A


Tuesday, June 29, 2021

1:00pm-2:30pm EDT, 10:00am-11:30am PDT

Early Registration Discount Deadline, Friday, June 4, 2021

or call 1-800-926-7926

This CLE webinar will guide trademark counsel in navigating opposition proceedings at the Trademark Trial and Appeal Board (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 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 instead of 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 future trademark concerns between the parties.

Counsel for the opposer or petitioner and 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.

Listen as our authoritative panel of trademark attorneys examines the grounds for filing an opposition or cancellation action, timing, and the proceedings' scope. The panel will also discuss challenges related to discovery and the trial phase of an opposition or cancellation action and the differences between these phases in a TTAB proceeding and 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 important issues:

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

An encore presentation with live Q&A.

Faculty

Baird, Stephen
Stephen R. Baird

Shareholder
Greenberg Traurig

Mr. Baird works with clients to address their most difficult trademark problems. He provides strategic guidance on...  |  Read More

Chambers, Tucker
Tucker A. Chambers

Attorney
Greenberg Traurig

Mr. Chambers works with clients on a variety of intellectual property matters, focusing on trademark issues. He handles...  |  Read More

McLeod, Linda
Linda K. McLeod

Partner
Kelly IP

Ms. McLeod’s unique experience makes her one of the most sought-after lawyers to handle cases before the...  |  Read More

Attend on June 29

Early Discount (through 06/04/21)

Cannot Attend June 29?

Early Discount (through 06/04/21)

You may pre-order a recording to listen at your convenience. Recordings are available 48 hours after the webinar. 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:

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