US—opposition and cancellation proceedings in TTAB litigation—procedural considerations
US—opposition and cancellation proceedings in TTAB litigation—procedural considerations

The following IP guidance note provides comprehensive and up to date legal information covering:

  • US—opposition and cancellation proceedings in TTAB litigation—procedural considerations
  • Overview of opposition/cancellation proceedings
  • Filing an answer
  • Common defenses
  • Morehouse defense
  • Discovery
  • Motions
  • Pretrial disclosures
  • Testimony period
  • Trial briefs and oral hearing
  • more

Produced by Paul C. Llewellyn, Arnold & Porter Kaye Scholer LLP

This Practice Note was originally written for Lexis Practice Advisor®, in the US.

Trademark owners that believe they may be damaged by a pending trademark application may challenge the application by filing an opposition proceeding before the US Patent and Trademark Office (USPTO) Trademark Trial and Appeal Board (TTAB or Board) pursuant to 15 U.S.C. § 1063. Similarly, trademark owners that believe they may be damaged by an existing trademark registration may challenge the registration by filing a cancellation proceeding before the TTAB pursuant to 15 U.S.C. § 1064. This Practice Note discusses the procedural steps of opposition and cancellation proceedings, including filing an answer (and common defenses), conducting discovery, filing and responding to dispositive motions, serving pretrial disclosures, taking testimony and presenting evidence during the testimony period, filing trial briefs, and seeking reconsideration or an appeal of a final Board decision.

Overview of opposition/cancellation proceedings

Opposition and cancellation proceedings commence once a notice of opposition or petition to cancel is filed and are conducted much like litigation, albeit with no live trial. The parties can conduct written and deposition discovery, file dispositive and non-dispositive motions, submit evidence, and elicit witness testimony. The proceeding can last several months or years depending on extensions, the scope of discovery, counterclaims, motion practice, whether