Category: Branding

 

 

I have another article I wrote specifically on Trademark Oppositions you might find helpful.

 

FULL TRANSCRIPT OF Video

Hi everybody, and welcome to Lawyers Rock, your TTAB lawyer.

Today, I am going to talk about a topic that is very specific, but if you’ve gone through one of these before, or if you are going through one right now, you will appreciate the information I have for you.

I’m talking about TTAB proceedings, which are appeal processes that occur during the trademarking process with the United States Patent and Trademark Office (USPTO). They can occur either after the USPTO green-lights your application for registration, during the opposition period, when third parties can challenge registrations, or a third party can discover your registered trademark and they want to have your registration canceled!

So what do you do if you get notice that one of these proceedings has been filed against you?  We’ll go over that in this post, plus I’ll give you a few helpful tips.  Lets Rock!

 

What Exactly Is a TTAB Proceeding?

There are two types of proceedings before the Board, an ex parte (one party) appeal from the denial of a trademark application for registration by an examining attorney, and an inter parties (more than one party) proceeding, primarily oppositions and cancellations. This post focuses on the latter.

 

TTAB Opposition Proceeding

An Opposition proceeding occurs when a third party files a Notice of Opposition during your application’s Opposition Period, which is when the USPTO publishes your application in its Official Gazette after it gives your application its internal blessing.

In general, by a third party filing this notice, they are taking the position that even though the USPTO does not have a problem with your application, they do because approving your mark for registration would cause a conflict with their mark. The most common claim is that the existence of both marks in public would likely confuse people as to the source of the good or service.

For example, if someone wanted to secure a trademark for their fast food restaurant called McDowell’s (where are my Coming To America fans?), or if someone wanted to secure a trademark for their coffee house called Stars and Bucks, guess who would probably file a Notice of Opposition?

You may be alerted beforehand that someone is going to oppose your mark if you receive a Notice of Extension of Time to Oppose. This is pretty much what it sounds like. If someone wants to file an opposition but they need more time to file then they will file a request to extend its time to oppose.

There are guidelines for how many extensions will be granted and how long the extension will be, but as long as the opposing party timely files a request, TTAB will grant the first extension. The first request of thirty (30) days will be granted on request, without a showing of cause. Alternatively, the first request of ninety (90) days will be granted upon a showing of good cause.

 

TTAB Cancellation Proceeding

A Cancellation proceeding occurs after your mark is registered. Yes, even after your mark is registered there is still a chance that someone can come along and cancel your registration. Common claims include the likelihood of confusion, an issue with the registrant’s ownership, or the registrant is no longer using the mark (abandonment).

This can be very detrimental since you have likely started to build your brand.  Basically, someone is saying…wait USPTO, this mark should not have been approved and we missed our chance during the Opposition Period. There are a few reasons why a company would file a Petition To Cancel an existing mark.

I have seen it used by corporations as a strategy to stop a competitor. Winning the proceeding is not always the goal. These proceedings are expensive so an evil petitioner may try to just bleed a smaller mark owner dry with legal fees. Sad but true.

 

What Do You Do When You Receive a TTAB Notice or Petition?

The first thing you really need to do is review the pleading (Notice of Opposition or Petition To Cancel) to understand the claims and issues and see if they are valid. You will need to consider things like:

• Is your mark really similar to the opposing mark?

• Was the opposing party’s mark used in commerce before yours (i.e., were the goods or services related to the opposing party’s mark sold interstate before your good or service?)

• Are the international classes and/or descriptions of services/goods similar or the same?

There are many things that you should analyze to determine whether the opposing party’s claim is valid.

Some companies file these TTAB proceedings to frustrate you or to see if it will go away.  This may be more about business strategy than it is about legal rights, such as an attempt to eliminate competition. You can find out if the filing party has a history of doing this by doing some research.

 

Next, do not miss your deadlines! You have to understand that the filing party really has nothing to lose until you file your answer to the claim. If you fail to file an Answer then the filing party wins by default.

You can either file an Answer on your own, get advice from an attorney who can help you draft it and then you file it on your own name, or you can hire an attorney who files it on your behalf and becomes the attorney on record for the matter. I strongly advise the latter two…secure counsel in some capacity.

Be aware that these proceedings use the Federal Rules of Civil Procedure, Trademark Law, and Trademark Rules and Procedures so these proceedings can get complicated.

There are pleadings, disclosure requirements, discovery (depositions, interrogatories, requests for production of documents and things, and requests for admission), motions, briefs, and a trial.

Also, determine early whether or not to fight a proceeding!  I have seen the gamut…people who have chosen to ignore notices of opposition and they forfeit their application, I have seen people try to defend themselves and get buried by discovery (paperwork) from the filing party’s attorney, and I have seen people get stuck in a fight that lasts 6 or 7 years, which is very costly and leaves the business associated with the mark in limbo.

In my opinion, settling these matters is usually the best solution for both parties, regardless of the stage.

 

How Do You File and Perform Research?

TTAB proceedings are primarily filed, maintained, and viewed online. Documents are filed through the ESTTA system and documents are viewed through the TTABVue system. You may also want to look at prior Decisions by the TTAB.

 

You obviously filed a trademark application to protect your brand so don’t let the TTAB proceeding just automatically derail all your efforts.  Sometimes it is worth fighting for your mark…sometimes the fight is not the best solution for your business as a whole. However, you need to do the analysis to determine that answer.

I hope you find this video helpful.  If you have any questions, please leave me a comment or contact me.

 

So you’ve found the perfect name and branding for your business, registered the trademark with the USPTO, and now you’re ready to register the domain name.

Or perhaps your business is already well established and you’re preparing to finally create a significant online presence.

But wait, what’s this?  Someone has already registered the domain name that matches your trademark in anticipation of your business needs and they won’t release it to you without a hefty fee in return.

Is it back to the drawing board to reinvent your brand?

Are you destined for a long, drawn-out legal battle that could end up costing more than just paying the person the ransom?

Or do you have some other option at your disposal?

“Cybersquatting” has been a problem for businesses of all sizes for as long as the Internet has been around.  It refers to the practice of registering, selling or using a domain name with the intent to profit from the goodwill of someone else’s trademark.

Often, cybersquatters register domain names in bulk to take financial advantage of mark owners, or to create problems for their business competitors.

Fortunately, the Internet Corporation for Assigned Names and Numbers (ICANN) has a solution for businesses whose trademarks have been registered as domain names without their consent: Uniform Domain-Name Dispute-Resolution Policy (UDRP) proceeding.

 

WHAT IS UDRP PROCEEDING? HOW DOES IT WORK?

A UDRP proceeding is an alternative to traditional litigation that has been available to trademark owners since ICANN first launched the alternative dispute resolution program on December 1, 1999.  The National Arbitration Forum (FORUM), an international dispute resolution provider, or the World Intellectual Property Organization (WIPO) handle such disputes.

Since the inception of UDRP proceedings, FORUM has handled over 20,000 such disputes from over 40 countries, while WIPO has handled over 30,000 such disputes among its 188 member states. 

UDRP proceedings apply to legacy top level domains, like .com, .net and .org, some territory code top-level domains, like .asia, .eu, .uk), as well as to the over 400 new generic Top-Level Domains (gTLDs) recently released, such as .aero, .biz, .cat, .coop, .info, .jobs, .mobi, .museum, .name, .pro, .travel and .tel. (ICANN plans to introduce 1300 new gTLDs in the coming years…if you didn’t know it, there is a way for you to essentially own a piece of the Internet by registering a gTLD!).

When a registrant chooses a domain name, organizations like ICANN, NeuStar, IMC Registry, and New.net require that they “represent and warrant” that registering the name “will not infringe upon or otherwise violate the rights of any third party.”

In the event that a third party claims infringement on their mark, the registrant is required to participate in an arbitration-like proceeding to settle the dispute.

In order to have the domain name transferred to the trademark owner, the challenging party must file a complaint with either WIPO or FORUM.  The party that has registered the domain at issue has 20 days to file a response. If no response is filed, then the deciding panel will only consider the challenging party’s submission.

Once a panel is assigned to hear the case, the challenging party must prove the following three elements:

1. Identical and/or Confusingly Similar: The domain name registered is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
2. Right or Legitimate Interest: The registrant has no rights or legitimate interests in respect to the domain name.
3. Registration and Use in Bad Faith: The domain name has been registered and is being used in bad faith.  The panel will consider, among other things, whether the domain name was registered primarily for the purpose of selling or transferring the domain name to the complainant, disrupting the business of a competitor, or to create a likelihood of confusion with the complainant’s mark.

 

WHY SHOULD YOU INITIATE A UDRP PROCEEDING?

In today’s tech-based world, domain names are essential and valuable assets that allow customers to easily identify and interact with your business.  Someone improperly using your mark can create a whole range of problems including customer confusion, damaged reputation, and decreased sales.

 Owners need to take the necessary steps to protect their businesses and profits.  Legal battles can be costly and time-consuming for businesses of any size, but they are especially detrimental to smaller businesses with limited capital so UDRP proceedings are a welcome option.

 UDRP proceedings offer a relatively quick and inexpensive internationally recognized resolution by a panel of neutral experts.  FORUM and WIPO work with all parties, including registrants, to guide them through the process. These proceedings offer many advantages over litigation, such as:

• Claims can generally be initiated for as low as $1300.
• Decisions are often reached in as little as 30-45 days from time of filing.
• Panelists can conduct the proceedings in over a dozen languages including English, French, Japanese, Spanish, Russian, and Chinese.
• The procedures follow established rules and policies, and are decided primarily by intellectual property lawyers with vast experience in trademark, copyright, and e-commerce, and
• In many jurisdictions, parties have the option to end the arbitration proceeding and file a lawsuit if something unexpected or urgent comes up. Parties also have the right to appeal a UDRP decision in a court with competent jurisdiction.

So, if you’re faced with a cybersquatter who is holding up the progress of your online initiatives and you have a strong position  (i.e., you own a registered trademark), you may want to consider initiating a UDRP proceeding and take back what’s yours!

Thank you to Brett Greshko, M.E.T.A.L. Intern, for your help with this blog!