Whether I am representing a trademark owner or a trademark infringer, my clients want to know what to expect in a trademark dispute. And every trademark dispute has distinct stages that plays out pretty similarly. Disputes that I handle commonly involve the following stages:
Stage 1. A trademark owner discovers an infringer/An alleged infringer receives a cease and desist letter
Before sending out a cease and desist letter or responding to one, I always require clients to conduct an infringement analysis. Doing an infringement analysis allows me to: 1) validate my client's claim or the opposing party's claim; and 2) conduct a brief investigation to gather information about each party's usage of the trademark in question. The initial investigation also allows me to gauge whether to fight the claim or cooperate and advise my client accordingly.
Stage 2. Draw Up a Plan
If an infringement claim is valid and I am representing a senior user who is also a registrant, I am generally aggressive about enforcing my client's rights to exclusively use and maintain the trademark in question- and I will outline this in my cease and desist letter. If the infringer has an application pending, I recommend filing an opposition to prevent the registration of a competing mark. If the infringer claim is valid and I am representing a junior user who is not a registrant, I am generally cooperative and may offer to prepare a coexistence agreement to start the negotiation process. I also try to negotiate as much as I can when I know that the opposing party has enough resources to file a petition to cancel or oppose without a hesitation.
Stage 3. Try to Negotiate
Negotiating is a crucial step to prevent doing more work than necessary. Even when I am on the "winning" side and am representing a senior user that is a registrant, I don't like to get involved in a cancellation proceeding (or in any kind of proceeding) if I don't have to. So this is when I may give a last warning to the opposing party before filing a petition to cancel or a petition to oppose. If I have a coexistence agreement in hand or prepared, I try to come to an agreement as soon as possible (especially if there is a pending deadline to start a cancellation or an opposition proceeding).
Stage 4. File a Petition to Cancel or Oppose
If I cannot reach an agreement before I have to file a petition to oppose or cancel, I go ahead and file the appropriate petition. Sometimes I file a request to extend time to file but I normally go ahead with a petition to expedite the entire process if I know that I'm going to file eventually. This is particularly important if you want to file a petition to cancel right at year 5 post-registration because you cannot raise a "likelihood of confusion" claim after year 5 post-registration. Additionally, between year 5 and 6 post-registration, the registrant can file for Section 15 Incontestability.
* Note that if there is an application pending for examination, I would call the examiner to make sure that the application is suspended pending the cancellation/opposition proceeding. The examiner will not know immediately whether you're involved in a proceeding and it's generally a good idea to keep him/her in the loop.
Stage 5. Continue Negotiating
Just because there is a cancellation or opposition proceeding pending does not mean that parties cannot continue negotiating. In fact, I've heard that many judges at the USPTO (like judges in other courts or tribunals) want the parties to come to a decision on their own (less work for them). If parties reach an agreement before the proceeding is over, the petitioner can withdraw the petition to cancel or oppose.
Stage 6. File Appropriate Motions
If the parties can't come to an agreement, that means the proceeding must go on. Once the petition for cancellation/opposition is filed, the TTAB will automatically issue a trial schedule (in both electronic and paper format) that you must strictly follow. The schedule generally looks like this:
As you can see, a cancellation/opposition proceeding is no joke. All this will take about a year and a half, assuming that neither party files for any extensions.
It's important to be mindful of specific requirements before filing certain motions. For example, if you want to file a motion for summary judgment, you have to make initial disclosures first. Otherwise, your motion may be denied despite its merits. Rules for pleadings for TTAB proceedings are found in Trademark Trial and Appeal Board Manual of Procedure (TBMP) Chapter 300.
Stage 7. End the Cancellation or Opposition Proceeding
A cancellation or an opposition proceeding can end in one of three ways: 1) the Board reaches a decision; 2) the petitioner withdraws the petition; or 3) the registration or the application in question is withdrawn. At this stage, if I have a trademark application pending, I would call the trademark examiner to let him/her know that the proceeding is ending and then keep my eye out for a notice from the Board confirming that the proceeding is over.
Stage 8. Continue Prosecution
If I have an application pending, I would see the application through. Normally this happens if I am representing an applicant and I had an office action pending before a cancellation or an opposition proceeding was instituted. If I was able to successfully reach a coexistence agreement, I would submit the agreement with a response as an exhibit. If the Board did not rule in favor of my client (the applicant) or I did not reach a coexistence agreement, it might be time to rethink the application.