TTAB Cancellation - The Option a Trademark Attorney May Not Tell You About
In order to file a petition to cancel a trademark registered with the United States Patent and Trademark Office (USPTO), the trademark must be registered.
This may seem obvious and simple enough, but oftentimes attorneys must deal with a particular trademark before it is registered or choose to address an infringing registered mark in another way.
In particular, since registration is a prerequisite to a cancellation proceeding in front of the Trademark Trial and Appeal Board (TTAB), a party who believes it will be damaged by the registration may want to act before allowing the registration to occur.
Once registered, the owner of the allegedly infringing them may benefit from several legal presumptions that a trademark attorney may advise tend to make the matter more difficult.
As such, if the opposition period has already lapsed, and without knowing when the registration of the trademark will actually occur, action may be sought prior to the time when a petition to cancel is possible.
More often than not, the action is a trademark infringement lawsuit.
This option is also an option that is considered even when a trademark is registered and the availability of a cancellation proceeding in front of the TTAB exists.
A successful cancellation proceeding leads to exactly what would be expected: cancellation of a registered trademark.
However, litigation provides the complainant with the opportunity to achieve an injunction against any use of that trademark by the alleged infringer and-or monetary damages for any harm suffered as a result of the infringement.
As such, a trademark attorney may decide that a cancellation proceeding in front of the TTAB is insufficient to address the goals of the client.
Regardless, a TTAB cancellation proceeding should be considered because it could be a less expensive and timely means of addressing the infringing activity than trademark litigation.
That is not to say that a cancellation proceeding doesn't entail many of the same phases as litigation, including, for example, discovery and exchanging of arguments, but the TTAB is indeed different.
Moreover, the filing of a petition to cancel and subsequent notification to the alleged infringer and owner of the trademark at issue from the TTAB may be enough to cause the trademark owner to abandon its use and voluntarily cancel its registration.
Ultimately, the TTAB is simply another forum in which you may seek redress for harm caused by another's use of an infringing trademark.
A TTAB trademark attorney would be remiss to not discuss the option with you, especially since a TTAB cancellation proceeding may coincide with your goals.
This may seem obvious and simple enough, but oftentimes attorneys must deal with a particular trademark before it is registered or choose to address an infringing registered mark in another way.
In particular, since registration is a prerequisite to a cancellation proceeding in front of the Trademark Trial and Appeal Board (TTAB), a party who believes it will be damaged by the registration may want to act before allowing the registration to occur.
Once registered, the owner of the allegedly infringing them may benefit from several legal presumptions that a trademark attorney may advise tend to make the matter more difficult.
As such, if the opposition period has already lapsed, and without knowing when the registration of the trademark will actually occur, action may be sought prior to the time when a petition to cancel is possible.
More often than not, the action is a trademark infringement lawsuit.
This option is also an option that is considered even when a trademark is registered and the availability of a cancellation proceeding in front of the TTAB exists.
A successful cancellation proceeding leads to exactly what would be expected: cancellation of a registered trademark.
However, litigation provides the complainant with the opportunity to achieve an injunction against any use of that trademark by the alleged infringer and-or monetary damages for any harm suffered as a result of the infringement.
As such, a trademark attorney may decide that a cancellation proceeding in front of the TTAB is insufficient to address the goals of the client.
Regardless, a TTAB cancellation proceeding should be considered because it could be a less expensive and timely means of addressing the infringing activity than trademark litigation.
That is not to say that a cancellation proceeding doesn't entail many of the same phases as litigation, including, for example, discovery and exchanging of arguments, but the TTAB is indeed different.
Moreover, the filing of a petition to cancel and subsequent notification to the alleged infringer and owner of the trademark at issue from the TTAB may be enough to cause the trademark owner to abandon its use and voluntarily cancel its registration.
Ultimately, the TTAB is simply another forum in which you may seek redress for harm caused by another's use of an infringing trademark.
A TTAB trademark attorney would be remiss to not discuss the option with you, especially since a TTAB cancellation proceeding may coincide with your goals.
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