Trademark Appeals Procedure & Overview

The good news is that the trademark appeals procedure is available to you if your trademark selection has been turned down by the USPTO – the United States Patent and Trademark Office.  The same is true in most foreign countries.

The bad news is that the same procedure can be used by almost anyone who is opposed to your mark. A trademark attorney, who knows the legal issues that may arise, is your safeguard against the type of devastating losses that a cancelled trademark may generate.

What is a Trademark?

A trademark – or a service mark - can be a phrase, word, device or symbol that identifies a company’s products or services.  A trade or service mark can help:

• Maximize the benefit of advertising
• Increase recognition for the brand
• Increase sales
• Establish a company’s reputation

It all adds up to potentially significant commercial benefit.

These benefits can be lost in three different ways:

1. The existing benefits, built on the acceptance of the trademark, can be lost.
2. The cost of the packaging and advertising materials can be wasted.
3. The matching benefit foregone by the opposing party – holder of a competing similar trademark – may be awarded as damages.

Trademark Appeals Procedure

The TTAB – Trademark Trial and Appeal Board – hears several different types of appeals. 

A denial of a trademark registration by an examiner will be considered but that is less common than three other situations:

1. Opposition to a trademark
2. A petition to cancel a registration
3. A request for concurrent registration of a trademark.

Trademark Opposition

This may occur if another company claims that they have been using a trademark prior to your own use.  They may claim that the public will be confused by similarity between the two.  If their mark is registered, they can claim superior rights to it. Other reasons to oppose a trademark might be that it is hateful, scandalous or was obtained by fraud.

Trademark Cancellation

A petition may be brought against your trademark on the grounds that you have not been using it and it has therefore expired, according to trademark act.  Another common ground for a cancellation request is that it has become generic – like “aspirin”.  By this reasoning anyone should be allowed to use it because the public considers the name to be that of a product rather than a brand.

Concurrent Registration

A petition can be brought to allow the use of a trademark in another geographic area.  If there will be no confusion over who owns the trademark because the companies do not operate in the same area, this appeal may be upheld.

Importance of a Trademark Attorney

The procedure uses rules of evidence that apply in court, including motions and discovery.  A trademark attorney with experience in all the areas of potential difficulty can help avoid many of these situations before they arise.

If you are considering appealing the trademark use of a competitor, are faced with defending an appeal against yours, or may need help with trademark litigation, you are well advised to seek out competent counsel.

The trademark appeals procedure, although open to any affected party, is a complex matter.  Your opponent is likely to be using a trademark attorney who will know the consequences of the many choices that are available, the mindset of the appeals adjudicators and the potential options for settlement.

• If you have more questions or may need legal assistance regarding a Trade Mark matter, Consult Your Case for Free with a local experienced Intellectual Property Lawyer.