Trademark Opposition and Cancellation Proceedings at the TTAB

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

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Conducted on Tuesday, March 8, 2022

Recorded event now available

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Course Materials

This CLE course will guide trademark counsel in navigating opposition proceedings at the Trademark Trial and Appeal Board (TTAB), opposing the application, or responding to the opposition. The panel will examine issues 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 scope of the proceedings. 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 vital 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?

Faculty

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

Joyal, Jason
Jason Joyal

Partner
Kelly IP

Mr. Joyal focuses his practice on complex trademark, trade dress, copyright, false advertising, and unfair competition...  |  Read More

Littman, Molly
Molly R. Littman

Attorney
Greenberg Traurig

Ms. Littman focuses her practice on intellectual property litigation and enforcement. She has significant experience...  |  Read More

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