Tag: Trademark Proceeding

What is concurrent-use?

There are many different types of proceedings you may encounter as you try to register your trademark application or assert your rights as a trademark owner. One such is a Concurrent-Use proceeding. This a proceeding in regards to multiple registrations being issued to separate parties. This is done as a result of dividing areas of trade as ordered in court or decided by Trademark Trial and Appeal Board (TTAB). Generally, such registrations are issued when the trademarks are used in different territories and thus it is not likely to cause confusion. The first registered concurrent users will be notified. An answer may be entered within forty days, however no answer is necessary. The first registered user will usually be granted nationwide use and the second registered user will be restricted to only his area of use. Parties can work out agreements amongst themselves if they so decide. If this is done the TTAB must still accept it as to ensure there will be no likelihood of confusion.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

What is a cancellation proceeding?

If you are trying to cancel an existing registered trademark, or someone is attempting to do this to your trademark, then you will likely be subject to a cancellation proceeding before the USPTO. The party seeking cancellation has the burden of proof and must demonstrate evidence and that they are damaged by the registered mark. It is possible for the TTAB to issues a partial cancellation if it finds that cancellation is only appropriate for a portion of the registered trademark. It is more difficult to cancel a trademark which has been in continuous use for at least five years after registration. Prior to the five-year mark many of the standard arguments can apply such as likelihood of confusion, descriptiveness, genericness, misdescriptiveness, deceptiveness, abandonment, and fraud. After the five-year mark likelihood of confusion and descriptiveness issues cannot be grounds for cancellation. In addition, falsely suggesting a connections or misrepresenting source both can be grounds for cancellation at any time.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Considerations for USPTO Proceedings

USPTO proceedings are complex matters and there are many things you should be aware of before making a decision. As far as motions are concerned the Trademark Trial and Appeal Board (TTAB) generally complies with Federal Rules, however there are exceptions. There are special motions to dismiss due failure to provide testimony or evidence and there are other rules differences regarding response time and what happens when no response is entered. Such proceedings usually use accelerated case resolution (ACR) in order to speed up the process. What this means is the TTAB can resolve genuine issues of fact and issue final rulings. It also means that if agreed, the parties can skip discovery, oral hearing, expert testimony, and trial. If after a USPTO proceeding you are still not satisfied with the outcome and have grounds to appeal, then a petition for consideration can be filed within one month of the decision. Know what you are getting into before the proceeding begins and ensure you are complying with all rules.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.

Discovery Procedure for USPTO Proceedings

Before getting involved in proceeding before the USPTO make sure to familiarize yourself with the process. As the proceeding begins a number of evidentiary presumptions and rules will be factors. Such presumptions can involve the basis of the application, dates regarding use, and continuous use amongst others. There are other rules that both parties will have to follow. Rules govern nearly every aspect of the process and apply to, but not limited to, amendments to marks, withdrawal of the application or opposition, deposition, discovery, what material is evidence, third-party use, and what evidence is considered admissible. Pleadings must be filed according to such rules. During the discovery phase all prescribed deadlines must be followed. The discovery period, along with disclosures and the trial, will be covered by a standard protective order. Discovery will include a conference, initial disclosures, interrogatories, document requests, and depositions. If a party is failing to comply with an aspect of discovery a motion for sanctions can be filed.

This blog is not legal advice and is not specific to your application. You should always consult an attorney.