Trademark Oppositions / Cancellations
When your business is at risk due to a trademark dispute, our firm is prepared to aggressively protect your trademark rights. We have extensive experience representing both plaintiffs and defendants before the Trademark Trial and Appeal Board (TTAB). We also recognize that litigation can be costly and time-consuming, and we try to resolve disputes whenever possible—for example, by a co-existence agreement, license agreement, or purchase of trademark rights, when appropriate.
Oppositions
One can oppose another's trademark application to prevent the mark from registering. An opposition can be based on a number of grounds, including prior use of the trademark before the applicant. Commencing an opposition involves filing a complaint at the Trademark Trial and Appeal Board (TTAB). The Applicant must file an "answer" or default and lose the application. After the complaint and answer are filed, the parties conduct "discovery"—the formal exchange of information and documents to be used as evidence at trial. After trial, the case is decided by a panel of three trademark judges. Opposition proceedings can be time consuming and costly to litigate, although the vast majority of oppositions result in a default judgment (applicant does not respond to the complaint) or a settlement agreement before trial.
Cancellations
Similar to an opposition, a registered trademark can be cancelled on a number of grounds, such as prior use of the mark by the complainant or non-use (abandonment) of the mark by the registrant. The procedures are very similar to an opposition. Likewise, most cases terminate in a default judgment or settlement agreement.
Our trial lawyers have an impressive track record of litigation victories and favorable settlements in both federal courts and at the TTAB, including many published decisions. We have handled over 200 Trademark Trial and Appeal Board proceedings (oppositions, cancellations, ex parte appeals).
Sample of our opposition, cancellation, and ex parte appeal victories:
| Team International Marketing, N.V. v. JMM Lee Properties, LLC, Cancellation No. 92057196 (TTAB 2017) Successfully cancelled CALORIC registration based on a finding of likelihood of confusion with multi-national appliance producer’s KALORIK mark for cooking appliances. Read Decision |
| Terry Nazon v. Charlotte Ghiorse, 119 USPQ2d 1178 (TTAB 2016) (precedential) Successfully dismissed opposition by showing opposer’s mark SEXSTROLOGY is merely descriptive and lacks acquired distinctiveness. Read Decision |
| Alexander Kronik v. Sayed Najem, Cancellation No. 92058162 (TTAB 2016) Successfully cancelled ALIKEU registration based on a finding of likelihood of confusion with client’s prior mark ALIKE for a social networking mobile software. Read Decision | Red Bull vs. Andale Energy TTAB Opposition No. 91210860 Successfully dismissed opposition on the grounds that the marks at issue were simply too dissimlar to cause a likelihood of confusion. Read More |
| Delta Air Lines, Inc. vs. Delta Van Lines, Inc. TTAB Opposition No. 91168554 Successfully defended our client's mark against an opposition filed by Delta Air Lines. Read More |
| Exxon Mobil Corporation vs. Jaya Medical Supplies, Inc., TTAB Opposition No. 91185716 Successfully defended our client's mark against an opposition filed by Exxon Mobile Corporation. |
| Choice First Distribution, LLC v. John L. Brown TTAB Opposition No. 92044116, Successfully cancelled the trademark CHRONIC 187 with a showing that the registration was void ab initio due to the registrant’s mere token use of its trademark. Read More |
