Challenging a Mark: Trademark Opposition & Cancellation Proceedings

Trademark oppositions and cancellations are adversarial proceedings before the Trademark Trial and Appeal Board (TTAB) of the USPTO to defeat a mark. Opposition proceedings involve pending trademark applications while cancellation proceedings involve trademark registrations. Since they are adversarial, these proceedings are basically lawsuits and can certainly be as costly as any other type of litigation. All arguments, pieces of evidence, testimonies and so forth are submitted primarily on paper for the TTAB to consider, though the parties have the option of requesting an oral hearing at the conclusion of the submission of their legal briefs.

Each type of proceeding includes its own standards. In a cancellation proceeding involving a registered mark, the plaintiff (known as the cancellation petitioner) may have certain legal presumptions to overcome which would not attach to a pending application which has not yet registered.

Just as there may be advantages for a plaintiff in an opposition or cancellation proceeding, there may also be advantages for the defendant in each type of action. In an opposition proceeding where the mark is not registered, for example, the applicant may have opportunities to remedy certain defects which would not be available to a registrant in a cancellation proceeding.

Since these proceedings can become quite expensive in a short amount of time, a defendant (i.e., applicant or registrant) may be tempted to simply forfeit the case without putting up a fight. It would be prudent, however, to consider any potential legal preclusive effects of such a surrender.