Board Basics to Know in TTAB Proceedings (TBMP § 102)
Imagine that you own and operate a restaurant named FreshPalate. You started the business twenty years ago. You learned that another, much newer restaurant, located on the other side of the country successfully registered name and logo trademarks for FlavorsPalate. Concerned about potential customer confusion, you consider filing a petition with the United States Patent and Trademark Office (USPTO) to cancel FlavorsPalate's trademark registrations. You allege that the similarity between FRESHPALATE and FLAVORSPALATE is likely to cause confusion among consumers, leading them to believe that the two restaurants are related or affiliated. You also assert that you have prior use and a strong reputation in the restaurant industry, and the use of a similar mark by FlavorsPalate infringes upon your rights.
This situation, among others concerning trademark applications and registrations, are not uncommon for brand owners. The USPTO’s Trademark Trial and Appeal Board (TTAB) oversees proceedings concerning the right to register trademarks, and they involve various types of disputes between parties, including oppositions, cancellations, interferences, concurrent use proceedings, and ex parte appeals. If you find yourself in or considering a TTAB proceeding, you should familiarize yourself with the process and the different types of proceedings. This blog post discusses several of the proceedings available and how they are addressed in TBMP § 102.
Section 102.01 Jurisdiction of the TTAB
The TTAB's jurisdiction is limited to issues related to the right to register trademarks. It does not possess the authority to determine broader questions of trademark infringement, unfair competition, or the right to use a trademark. The Board's focus is on determining the registrability of trademarks, and its decisions revolve around whether a trademark should be registered on the Principal Register or the Supplemental Register.
For instance, if a company believes that another entity's pending trademark application, if registered, would damage its interests, it can file an opposition proceeding. However, the Board does not have the power to decide matters related to trademark use, infringement, or the constitutionality of acts of Congress. That is, the other party could continue using the mark, even if the first company prevailed. If the first company wins, it simply prevents registration (not use) of the pending application(s). It's essential to note that the Board does not possess the authority to declare any part of the Trademark Act or other acts of Congress unconstitutional, but parties can raise such claims in their pleadings for the Board's consideration.
Additionally, the TTAB lacks jurisdiction to award damages or attorney’s fees.
It is also worth noting that federal courts have concurrent jurisdiction to handle questions of cancellation. Federal courts rarely have jurisdiction to address opposition issues. The latter is reserved for the TTAB. However, federal courts are able to address questions of questions of trademark infringement, unfair competition, or the right to use a trademark, issue injunctions, and award damages and attorney’s fees.
Section 102.01 Types of Board Proceedings
The TTAB has jurisdiction over four types of inter partes proceedings, each addressing distinct aspects of trademark disputes:
Opposition Proceedings: In an opposition proceeding, a party seeks to prevent the registration of a mark on the Principal Register. This proceeding can be initiated by any entity that believes it would be damaged by the registration. However, the opposition must be filed within a specific time frame after the mark's publication in the Official Gazette of the USPTO. For further discussion of the Trademark Official Gazette, see here. In the hypothetical above, FreshPalate could have opposed the then pending FLAVORSPALATE application during the thirty-day period following the publication date.
Cancellation Proceedings: A cancellation proceeding aims to cancel an existing trademark registration, either in whole or in part. Similar to oppositions, any party that believes it will be damaged by the registration of a mark can file a petition for cancellation after the registration has been issued. Because FreshPalate missed the deadline to oppose the FLAVORSPALATE application discussed above, FreshPalate petitioned to cancel the registration for FLAVORSPALATE.
Interference Proceedings: In interference proceedings, the Board determines the rightful owner of conflicting applications or registrations. These proceedings are less common and are initiated based on extraordinary circumstances presented in a petition to the USPTO Director.
Concurrent Use Proceedings: A concurrent use proceeding addresses whether one or more applicants are entitled to a concurrent registration on the Principal Register. This type of registration comes with conditions and limitations, often related to the mode or place of trademark use. With businesses increasingly selling their goods and services nationally, if not globally, concurrent use proceedings are becoming less common.
Ex Parte Appeals: Ex parte appeals involve appeals from a final refusal of trademark application by an examining attorney. It is a shorter and simpler procedure compared to inter partes proceedings (e.g., oppositions) and involves briefs and, if requested, an oral hearing.
Section 102.03 General Description of Board Proceedings
TTAB proceedings share similarities with civil actions in federal district courts, including pleadings, motions, conferencing, disclosures, discovery, trial, briefs, and the option for an oral hearing. However, due to its administrative nature, the Board's procedures differ in some aspects from those in federal courts. Proceedings are conducted in writing, with all testimony taken out of the presence of the Board and submitted as written transcripts and exhibits.
Parties are not required to physically appear before the Board unless an oral hearing is requested or a pretrial conference is scheduled. Parties can stipulate to expedite proceedings using Accelerated Case Resolution (ACR) if both parties agree. Additionally, some matters not dispositive of the case can be decided by a single Board judge or an interlocutory attorney. However, decisions on the merits and complex motions are made by a panel of at least three Board judges.
In conclusion, TTAB proceedings are a crucial component of trademark law in the United States. They provide a framework for resolving disputes related to the right to register trademarks, ensuring the integrity of the trademark registration process and protecting the interests of trademark holders and applicants. Understanding the nature and scope of TTAB proceedings is essential for anyone navigating the world of trademarks and intellectual property rights.
If you find yourself confronting a trademark dispute—especially concerning a pending application or existing registration—you should contact an experienced trademark lawyer.
