About the Trademark Trial and Appeal Board
The Trademark Trial and Appeal Board (the TTAB or the Board) is a neutral body that functions like a court for trademark matters at the USPTO. The Board’s administrative trademark judges are authorized to determine a party’s right to register a trademark with the federal government. The Board is not authorized to determine whether you have the right to use a trademark, just whether you have the right to register it. Additionally, the Board is not authorized to determine questions of trademark infringement or unfair competition or to award money damages or attorney’s fees. For anything other than determining the right of federal registration, you must file a case in federal or state court.
While the Board is authorized to handle five different types of cases, there are three main categories of proceedings that applicants and registrants should know about: appeals, oppositions, and cancellations. Please be aware that if you file a case at the TTAB or if someone files a case against you at the TTAB, you will be a party to a legal proceeding.
One of the most common Board proceedings is an appeal of the decision of a USPTO Examining Attorney. During the application process, an Examining Attorney may refuse to register your mark for various legal reasons. For example, the Examining Attorney may refuse to register your mark because it merely describes your goods and services as listed in your application or is likely to cause confusion with a registered mark. If you receive a “final” refusal and you disagree with that decision, you may appeal to the Board. The Board then decides whether your mark may be registered.
The Board’s determination is made by a three-judge panel that independently reviews the application file, including all communications between the applicant and the Examining Attorney, and issues a written decision. Because the Board reviews the same legal record and applies the same legal standard as the USPTO Examining Attorneys, please be aware that it is quite difficult for an applicant to win an appeal. Also be aware that procedures for appeals can be very complex.
Another common Board proceeding is an “opposition.” In an opposition, a person may oppose (or “object to”) the trademark application of another party in order to stop that party from obtaining a federal registration. Before a trademark can register, the mark must be published for opposition in the Official Gazette. Publication starts the opposition period, which initially lasts 30 days, but may be extended. During the original opposition period, any party who believes that it would be damaged if the published mark registers may oppose registration. Although there are many possible grounds for opposition, the most common one is a claim that a likelihood of confusion exists between the trademarks.
In this type of proceeding, a three-judge panel issues a decision after both sides have had an opportunity to present their evidence and make arguments in legal briefs before the Board. The issues and procedures can be very complex and the experience is similar to a civil court case.
The third type of common Board proceeding is a “cancellation.” In a cancellation, one party seeks to cancel a trademark registration owned by another party. There are many possible grounds for attempting to cancel a registration. Some of the more common ones include claims that the registered mark is likely to be confused with the other party’s mark, that the registrant is not the rightful owner of the mark, and that the registrant is no longer using its mark. Like oppositions, cancellation proceedings are highly complex and involve time-consuming and detailed presentations of evidence and legal arguments.
All of the above proceedings require you to follow strict rules, meet multiple deadlines, and pay necessary filing fees. In addition, oppositions and cancellations are governed by rules of procedure and rules regarding evidence that are similar to those used in federal courts. As such, if you are involved in a case at the Board and are unfamiliar with trademark law and the rules and requirements for appearing before the Board, you may find it difficult to properly conduct your case without legal counsel. Hiring an attorney experienced in Board matters is strongly recommended.
Although neither the USPTO nor the TTAB can provide the name of an attorney for you to use, you can find one by searching the Internet, telephone directories, and by consulting with your local or state attorney bar association. These resources should help you find an attorney who is experienced in trademark law and who, ideally, has experience appearing before the Board.
If you cannot afford an attorney, you may wish to consider the USPTO’s Law School Clinic program. Through this program, law school students (working under the guidance of qualified faculty members) provide assistance in proceedings before the Board to individuals and small businesses that meet income eligibility requirements.
To learn more about the program, go to USPTO.GOV and search for the term “Law School Clinic.” The website has a list of participating schools, Frequently Asked Questions, and contact information about how to become a client.
If you do decide to file on your own, you are encouraged to use the TTAB’s on-line tools. You can file documents with the TTAB by using the Electronic System for Trademark Trials and Appeals (ESTTA). Also, you can view TTAB documents on-line by using TTABVue.
Other TTAB-related resources are available on the TTAB page, including Frequently Asked Questions and information about what filing fees are required.