Beginning an Inter Partes Proceeding Before the Trademark Trial and Appeal Board: Nature, Grounds and Initial Pleadings
I. Challenges to Registrability v. Challenges to Use
The Trademark Trial and Appeal Board ("TTAB" or "Board") has jurisdiction over four types of inter partes proceedings: oppositions, cancellations, interferences, and concurrent use proceedings. TBMP §102.02; Lanham Act Sections 13, 14 and 24, 15 U.S.C. §§ 1063, 1064 and 1092. In an opposition proceeding, the opposer challenges a mark to prevent it from reaching registration on the Principal Register. Opposition proceedings are instituted only after a mark has been published for opposition in the Official Gazette of the United States Patent and Trademark Office ("USPTO"). Since applications to register marks on the Supplemental Register are not published for opposition, opposition proceedings are not available for these types of applications.
A cancellation proceeding involves a mark that already has achieved registration. In a cancellation proceeding, any person who believes that he is or will be damaged by the registered mark may petition to cancel the registration. Thus, a petition for cancellation may be filed only after the issuance of the registration (whether on the Principal or the Supplemental Register).
An interference is a proceeding in which the Board determines which, if any, of the owners of conflicting applications (or of one or more applications and one or more registrations that are in conflict) is entitled to registration. In a concurrent use proceeding, the Board determines whether one or more applicants are entitled to a concurrent registration, each subject to conditions and limitations fixed by the board. TBMP §102.02. Since interferences and concurrent use proceedings are rarely brought before the TTAB, this paper will only discuss opposition and cancellation proceedings.
Since the Board can determine only the right to register, it is not authorized to determine the right to use, nor may it decide broader questions of infringement or unfair competition. Similarly, the Board has no authority to declare any portion of the Lanham Act, or any other act of Congress, unconstitutional. See Enterprise Rent-A-Car Co. v. Advantage Rent-A-Car Inc., 62 USPQ2d 1857, 1858 (TTAB 2002), aff'd, 300 F.3d 1333, 66 USPQ2d 1811 (Fed. Cir. 2003) (no jurisdiction to decide issues arising under state dilution laws); Person's Co. v. Christman, 900 F.2d 1565, 1571, 14 USPQ2d 1477, 1481 (Fed. Cir. 1990) (cannot adjudicate unfair competition issues); Paramount Pictures Corp. v. White, 31 USPQ2d 1768, 1771 n.5 (TTAB 1994) (no jurisdiction over claims of trademark infringement and unfair competition); Yasutomo & Co. v. Commercial Ball Pen Co., 184 USPQ 60, 61 (TTAB 1974) (no jurisdiction to address anti-trust issues); and American-International Travel Service, Inc. v. AITS, Inc., 174 USPQ 175, 179 (TTAB 1972) (no jurisdiction to determine whether opposer violated criminal statute); Harjo v. Pro Football Inc., 30 USPQ2d 1828, 1832-33 (TTAB 1994) (no authority to declare provisions of the Act unconstitutional nor to determine whether Section 2(a) is overbroad or vague) and Harjo v. Pro-Football, Inc., 50 USPQ2d 1705, 1735 n.88 (TTAB 1999), rev'd on other grounds, Pro-Football Inc. v. Harjo, 68 USPQ2d 1225 (DC DC 2003); and Zirco Corp. v. American Telephone and Telegraph Co., 21 USPQ2d 1542, 1544 (TTAB 1991) (no jurisdiction to determine whether Section 7(c) of the Act, the constructive use provision, violates the Commerce Clause of the Constitution).
Therefore, an important disadvantage to filing an opposition or a cancellation proceeding is that the proceeding, regardless of its outcome, does not affect any common law rights the party in the position of the defendant may have. Since oppositions and cancellations are brought solely against federal trademark or service mark applications and registrations, respectively, any rights acquired by common law use or state registrations will not be encompassed or affected by the decision of the Board. Thus, even if the party in the position of the plaintiff is successful in the opposition and/or cancellation, and registration is refused or cancelled under federal law, the party in the position of the defendant may still have common law rights existing in the mark.
Any person who believes he or she is or will be damaged by registration of a mark, can show a "real interest" in the proceeding, and has a "reasonable basis for its belief of damage" has standing to file an opposition or cancellation proceeding. Ritchie v. Simpson, 170 F.3d 1092, 1095, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999) and Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 1028, 213 USPQ 185, 189 (CCPA 1982); see also Lanham Act Sections 13 and 14, 15 U.S.C. §§1063 and 1064, and TBMP §303(b). The party in the position of the plaintiff must allege a "direct and personal stake" in the outcome of the proceeding in order to have a "real interest" and the allegations in support of plaintiff's belief of damage must have a reasonable basis "in fact." Ritchie v. Simpson, 50 USPQ2d at 1026-1027. Actual damage need not be pleaded or proved in order to establish standing or to prevail in an opposition or cancellation proceeding, and the party in the position of the plaintiff need not assert proprietary rights in a term in order to have standing. Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 492, 2 USPQ2d 2021, 2024 (Fed. Cir. 1987), on remand, 5 USPQ2d 1622 (TTAB 1987), revâ€™d on other grounds, 853 F.2d 888, 7 USPQ2d 1628 (Fed. Cir. 1988); TBMP §303.03.
III. Oppositions, Cancellations and the Compulsory Counterclaim Rule
When a mark is published in the Official Gazette of the U.S. Patent and Trademark Office, the mark becomes vulnerable to opposition by interested third parties; all of whom have the opportunity to challenge the mark's registrability for a period of 30 days. If, during the 30 day opposition period, a third party decides to challenge the mark but is not yet ready to file a Notice of Opposition, the potential opposer can file a Request for an Extension of Time to file a Notice of Opposition. A written Request for an Extension of Time must be filed within thirty days after the date of publication in the Official Gazette, or within an extension period granted by the Board. 15 U.S.C. §1063; 37 C.F.R. §2.102(c); TBMP §§202 et seq.
A first extension of time for not more than thirty days will be granted on request, without a showing of good cause. TBMP §207.01. If a showing of good cause is submitted, the potential opposer may seek an extension of more than 30 days in a single request. The Board will not grant an extension of time to oppose aggregating more than 120 days from the date of publication unless the potential opposer submits, in addition to the showing of good cause required for all extensions of time beyond the first thirty days, one of the following: (1) a written consent or stipulation signed by the applicant or the applicant's attorney; (2) a written request by the potential opposer or its authorized representative stating that the applicant or the applicant's authorized representative has consented to the request; or (3) a showing of extraordinary circumstances. 37 C.F.R. §2.102(c); TBMP §207.03. As noted in Section VI. below, under recent changes to the Trademark Rules of Practice, an extension of time for filing an opposition will not be granted beyond 180 days from the date of publication.
Even after a mark has reached registration, the mark is not immune from attacks from third parties. Any person who believes he or she is or will be damaged by the registered mark can file a petition to cancel the mark with the TTAB. As noted in Section III.B. below, there are time limits for bringing certain claims for cancellation.
In addition to standing, the party in the position of the plaintiff must plead (and later prove) a statutory ground or grounds for opposition or cancellation. The most common ground for opposition or cancellation is likelihood of confusion. As discussed in greater detail below (See Section IV.), an opposition or cancellation against the registrability of a mark also can be based on descriptiveness, functionality, deceptiveness, genericness, that the mark is primarily merely a surname, that the party in the position of the defendant is not the owner of the registered mark, or that there was no use of the mark or a bona fide intent to use the mark in commerce to support the original application. TBMP §309.03(c).
Lanham Act Section 13 provides:
Any person who believes that he or she would be damaged by the registration of a mark on the Principal Register may oppose registration by filing a notice of opposition with the Trademark Trial and Appeal Board, and paying the required fee within thirty days after the date of publication or within an extension period granted by the Board for filing an opposition.
See Lanham Act Section 13; 15 U.S.C. §1063; 37 C.F.R. §§2.101 through 2.107; TMEP §§1503.01, 303 et seq.
After a mark is published for opposition, the inter partes proceeding before the TTAB begins with the filing of a Notice of Opposition and the required fee. The opposer must include in the Notice of Opposition a concise statement of how it would be damaged by the registration of the opposed mark, and must state the grounds for opposition. 37 C.F.R. §2.104(a); TBMP §§1503.01, 312.01. Once the Notice of Opposition is filed, the Board assumes jurisdiction over any and all applications subject to the Opposition.
Marks that have achieved registration are subject to cancellation by third parties.
Lanham Act Section 14 provides:
A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any person who believes that he is or will be damaged, including as a result of dilution under section 43(c), by the registration of a mark on the principal register established by this Act, or under the Act of March 3, 1881, or the Act of February 20, 1905:
(1) Within five years from the date of the registration of the mark under this Act.
(2) Within five years from the date of publication under section 12(c) hereof of a mark registered under the Act of March 3, 1881, or the Act of February 20, 1905.
(3) At any time if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or is functional, or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of section 4 or of subsection (a), (b), or (c) of section 2 for a registration under this Act, or contrary to similar prohibitory provisions of such said prior Acts for a registration under such Acts, or if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used. If the registered mark becomes the generic name for less than all of the goods or services for which it is registered, a petition to cancel the registration for only those goods or services may be filed. A registered mark shall not be deemed to be the generic name of goods or services solely because such mark is also used as a name of or to identify a unique product or service. The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used.
(4) At any time if the mark is registered under the Act of March 3, 1881, or the Act of February 20, 1905, and has not been published under the provisions of subsection (c) of section 12 of this Act.
(5) At any time in the case of a certification mark on the ground that the registrant (A) does not control, or is not able legitimately to exercise control over, the use of such mark, or (B) engages in the production or marketing of any goods or services to which the certification mark is applied, or (C) permits the use of the certification mark for purposes other than to certify, or (D) discriminately refuses to certify or to continue to certify the goods or services of any person who maintains the standards or conditions which such mark certifies:
Provided, That the Federal Trade Commission may apply to cancel on the grounds specified in paragraphs (3) and (5) of this section any mark registered on the principal register established by this Act, and the prescribed fee shall not be required.
See Lanham Act Section 14; 15 U.S.C. §1064; 37 C.F.R. §§2.111 through 2.115.
A cancellation proceeding is a useful tool for persons seeking to eliminate an interfering registration. An owner of a pending mark that has been refused registration based on its confusing similarity to a previously registered mark would seek to cancel the registered mark based on a variety of reasons. For example, if the registered mark is no longer in use, or has not been used for a period of three consecutive years, a claim for cancellation may be brought based on abandonment. Lanham Act §§14(3), 45, 15 U.S.C. §§1064(3), 1127.
Unlike oppositions, the grounds for which a cancellation proceeding are based depend upon the age of the registration. Lanham Act Section 14, 15 U.S.C. §1064, limits the grounds that a third party can raise in a petition to cancel a mark registered on the Principal Register when the petition is filed more than five years from the date of registration or publication under Lanham Act Section 12(c); 15 U.S.C. §1062(c). See also TMEP §1605.06. This limitation of grounds does not depend on the filing of a §15 affidavit of incontestability. TBMP §308.02(b).
For marks that have been registered less than five years, a petitioner may base the Petition for Cancellation on essentially all of the statutory grounds found in the Lanham Act, including, descriptiveness, functionality, deceptiveness, genericness, that respondent's mark is primarily merely a surname; that respondent is not the owner of the registered mark, that there was no bona fide use of respondent's mark in commerce to support the original registration, that the mark causes dilution and/or that the registration was obtained and/or maintained through fraud. TBMP §309.03(c). For registrations subsisting for more than five years, the petitioner is limited to the grounds of fraud, abandonment, functionality and genericness. See Person's Co. v. Christman, 900 F.2d 1565, 1568, 14 USPQ2d 1477, 1479 (Fed. Cir. 1990); 15 U.S.C. §1065; TBMP §307.02(a); TMEP §1605.
Registrations over five years old may not be cancelled on the ground of likelihood of confusion. However, under Lanham Act Section 18, 15 U.S.C. §1068, a petitioner may seek to partially cancel a registration over five years old by restricting the goods or services therein in order to avoid a likelihood of confusion. TBMP §§307.02(a), 309.03(d).
After a mark has been registered, the inter partes proceeding before the TTAB begins with the filing of a Petition for Cancellation and the required fee. The petitioner must include in the Petition for Cancellation a concise statement of how it would be damaged by the continued registration of the mark sought to be cancelled, and must state the grounds of cancellation. 37 C.F.R. §2.112(a); TBMP §309.03(a)(2). Once the Petition for Cancellation is filed, the Board assumes jurisdiction over any and all registrations subject to the cancellation proceeding.
C. Compulsory Counterclaims
Another disadvantage to filing an opposition and/or petition to cancel is that the party in the position of the defendant may file a counterclaim to cancel the registration asserted by the party in the position of the plaintiff. According to the Federal Rules of Civil Procedure, a party in the position of the defendant who fails to file a timely counterclaim may lose certain valuable rights in defending its own mark. Fed.R.Civ.P. 13(a); 37 CFR §§2.106(b)(2)(i), 2.114(b)(2)(i); TBMP §313.04. Thus, a party in the position of the plaintiff could put the validity of its own registration in jeopardy by bringing an opposition or cancellation proceeding.
Rule 13(a), Fed.R.Civ.P., provides:
A pleading shall state as a counterclaim any claim which at the time of serving the pleading the pleader has against any opposing party, if it arises out of the transaction or occurrence that is the subject matter of the opposing party's claim and does not require for its adjudication the presence of third parties of whom the court cannot acquire jurisdiction. But the pleader need not state the claim if (1) at the time the action was commenced the claim was the subject of another pending action, or (2) the opposing party brought suit upon the claim by attachment or other process by which the court did not acquire jurisdiction to render a personal judgment on that claim, and the pleader is not stating any counterclaim under this Rule 13.
Under 37 CFR §§2.106(b)(2)(i), 2.114(b)(2)(i) and TBMP §313.04, if the party in the position of the defendant knows of grounds for a counterclaim to cancel a pleaded registration when the answer to the notice of opposition or petition for cancellation is filed, the counterclaim must be pleaded with or as part of the answer. If the facts supporting those grounds are discovered during the course of the proceeding, the counterclaim must be pleaded promptly after those facts are learned. Marshall Field & Co. v. Mrs. Fields Cookies, 11 USPQ2d 1355, 1359 (TTAB 1989) (counterclaim pleaded promptly after obtaining the information necessary to assert counterclaim during discovery and before discovery had closed); See also 37 CFR §§2.106(b)(2)(i), 2.114(b)(2)(i) and TBMP §313.04.
If the party in the position of the defendant fails to timely plead a compulsory counterclaim, it cannot thereafter assert the counterclaim grounds in a separate petition to cancel. If it does, the separate Petition will be dismissed on motion, on the ground that the substance of the petition constitutes a compulsory counterclaim in another proceeding that was not timely asserted. Consolidated Foods Corp. v. Big Red, Inc., 231 USPQ 744, 746 (TTAB 1986) (Petitioner cannot avoid effect of its failure to timely assert Counterclaim at time it filed its answer as defendant in prior Opposition since grounds existed and were known to Petitioner at that time); TBMP §313.04
During the opposition proceeding, questions of priority do not arise against a registered mark until the defendant files a counterclaim against the validity of the Opposerâ€™s registration. Ultratan Suntanning Centers Inc. v. Ultra Tan International AB, 49 USPQ2d 1313, 1314 (TTAB 1998) (opposer's prior use of the registered mark need not be established unless the applicant files a counterclaim for cancellation of the pleaded registration).
IV. Grounds for Opposition or Cancellation
Below is an exemplary, but not exhaustive, list of grounds on which an opposition or cancellation proceeding may be brought. TBMP §309.03(c); 15 U.S.C. §1052.
1. Priority of rights and likelihood of confusion under Lanham Act Section 2(d), 15 U.S.C. §1052(d), is the most common statutory ground presented to the Board for opposition or cancellation. In In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973), the Court of Customs and Patent Appeals discussed the following factors relevant to a determination of likelihood of confusion: the similarity or dissimilarity of the marks in their entireties; the similarity or dissimilarity of and nature of the goods or services; the similarity or dissimilarity of established, likely-to-continue trade channels; the conditions under which and buyers to whom sales are made; the fame of the prior mark (sales, advertising, length of use); the number and nature of similar marks in use on similar goods; the nature and extent of any actual confusion; the length of time during and conditions under which there has been concurrent use without evidence of actual confusion; the variety of goods on which a mark is or is not used (house mark, "family" mark, product mark); the market interface between the applicant and the owner of a prior mark; the extent to which applicant has a right to exclude others from use of its mark on its goods; the extent of potential confusion, i.e., whether de minimis or substantial; any other established fact probative of the effect of use.
2. The grounds specified in Lanham Act Section 2(e), 15 U.S.C. §1052(e) include, for example, that the party in position of the defendant's mark, when used on or in connection with the goods or services of the party in position of the defendant, is merely descriptive or deceptively misdescriptive of them,or that the mark is primarily geographically descriptiveor primarily geographically deceptively misdescriptive of them; or that the mark is primarily merely a surname. See Lanham Act Sections 2(e)(1), (2), (3) and (4); 15 U.S.C. §1052(e)(1), (2), (3) and (4); In re California Innovations, Inc., 329 F.3d 1334, 66 USPQ2d 1853 (Fed. Cir. 2003); In re Save Venice New York, Inc., 259 F.3d 1346, 59 USPQ2d 1778 (Fed. Cir. 2001); In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001);In re Abcor Development Corp., 588 F.2d 811, 813, 200 USPQ 215, 217 (C.C.P.A. 1978).
3. The grounds specified in Lanham Act Section 2(a), 15 U.S.C. §1052(a) include, for example, that the mark of the party in position of the defendant is geographically deceptive,that the mark disparages members of a particular group,or that the mark falsely suggests a connection with the name or identity of the party in position of the plaintiff. See Consorzio del Prosciutto di Parma v. Parma Sausage Products, Inc., 23 USPQ2d 1894, 1901 (TTAB 1992) (mark's geographic deceptiveness must be established as of the time the registration issues); Boswell v. Mavety Media Group Ltd., 52 USPQ2d 1600, 1606 (TTAB 1999); Internet Inc. v. Corporation for National Research Initiatives, 38 USPQ2d 1435, 1437 (TTAB 1996); Pro-Football Inc. v. Harjo, 68 USPQ2d 1225 (DC DC 2003).
The tests for rejecting geographically deceptive marks and geographically deceptively misdescriptive marks under Lanham Act Sections 2(a) and 2(e)(3), 15 U.S.C. §§1052(a) and 1052(e)(3), recently have been revised by the Court of Appeals for the Federal Circuit. In In re California Innovations, Inc., 329 F.3d 1334, 66 USPQ2d 1853 (Fed. Cir. 2003), the Court ruled that geographically deceptive marks and geographically deceptive misdescriptive marks are no longer available for registration on either the Principal or Supplemental Registers. Prior to this decision, and as a result of the North American Free Trade Agreement ("NAFTA"), geographically deceptive and geographically deceptively misdescriptive marks were allowed registration on both the Supplemental and Principal Registers. Upon a showing of distinctiveness, these marks could acquire a place on the Principal Register, otherwise the marks were allowed on the Supplemental Register. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001). A mark acquires distinctiveness or "secondary meaning" when "in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself." Inwood Labs., Inc. v. Ives Labs., 456 U.S. 844, 851 n.11, 214 USPQ 1, 4 n.11 (1982).
However, California Innovations established a new standard under Lanham Act Section 2, 15 U.S.C. §1052, in which geographically deceptively misdescriptive trademarks are treated the same as geographically deceptive trademarks. Like geographically deceptive trademarks, the analysis for primarily geographically deceptively misdescriptive trademarks under Lanham Act Section 2(e)(3), 15 U.S.C. §1052(e)(3), focuses on deception of, or fraud on, the consumer. Thus, under the new 3-prong test established in California Innovations,trademarks are considered geographically deceptively misdescriptive and/or geographically deceptive and refused registration if: (1) the primary significance of the trademark is a generally known geographic location; (2) the consuming public is likely to believe the place identified by the trademark indicates the origin of the goods bearing the trademark, when in fact the goods do not come from that place; and (3) the misrepresentation was a material factor in the consumer's decision. 15 U.S.C. §1052(e); In re California Innovations, Inc., 66 USPQ2d at 1856-1858.
In In re Les Halles de Paris J.V., 67 USPQ2d 1539 (CAFC 2003), the Federal Circuit Court of Appeals further defined prongs (2) and (3) established in California Innovations, as they apply to service marks. Under In re Les Halles de Paris, the second prong of the test requires some additional reason for the consumer to associate the services with the geographic location invoked by the service mark. For example, it must be shown that patrons will likely be misled into making some meaningful connection between the services and the relevant place named in the service mark. Furthermore, the third prong of the test requires a showing that some heightened association between the services and the relevant geographic denotation in order to raise an inference of deception or materiality for a service mark. Without such an inference, direct evidence of materiality must be presented. In re LesHallesde Paris, 67 USPQ2d at 1542.
4. A challenge can be asserted that there was no bona fide use of defendant's mark in commerce prior to the filing of a use-based application seeking registration under Lanham Act Section 1(a), 15 U.S.C. §1051(a). See, e.g., International Mobile Machines Corp. v. International Telephone and Telegraph Corp., 800 F.2d 1118, 1120, 231 USPQ 142, 143 (Fed. Cir. 1986).
5. A challenge also can be asserted that there was no bona fide intent to use the mark in connection with the identified goods/services as of the filing date of the intent-to-use based application seeking registration under Lanham Act Section 1(b); 15 U.S.C. §1051(b); see, e.g., Lane Ltd. v. Jackson International Trading Co., 33 USPQ2d 1351, 1352 (TTAB 1994) and Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 USPQ2d 1503, 1504 (TTAB 1993).
6. If the challenged mark consists of "trade dress" (for example, a product's configuration or its packaging) that is de jure functional, or that has not acquired distinctiveness, it is not registrable. Lanham Act Sections 2(e)(5) and (f), 14(3), 23(c), 33(b); 15 U.S.C. §§1052(e)(5) and (f), 1064(3), 1091(c) and 1115(b). Utilitarian functional features are those that are "essential to the use or purpose of the product or ... affect  the cost or quality of the product." Furthermore, if a designâ€™s "aesthetic value" lies in its ability to "confe[r] a significant benefit that cannot practically be duplicated by the use of alternative designs," then the design is aesthetically functional. Restatement (Third) of Unfair Competition 17, Comment c, pp. 175-176 (1995). The "ultimate test of aesthetic functionality," it explains, "is whether the recognition of trademark rights would significantly hinder competition."TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23, 32, 58 USPQ2d 1001, 1006 (2001); Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 165, 34 USPQ2d 1161, 1163 (1995); Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850 n.10, 214 USPQ 1, 4 n.10 (1982); Wal-mart Stores, Inc. v. Samara Bros. Inc., 529 U.S. 205, 210, 54 USPQ2d 1065, 1068 (2000).
7. Registration of a mark may be cancelled if the mark has been abandoned. Lanham Act Sections 14(3), 45; 15 U.S.C. §§1064(3), 1127; Rivard v. Linville, 133 F.3d 1446, 1448, 45 USPQ2d 1374, 1376 (Fed. Cir. 1998).
8. Registration of a mark may be opposed or cancelled if the mark is or has become generic. Lanham Act Sections 2(e)(1), 14(3); 15 U.S.C. §§1052(e)(1), 1064(3). Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services. TMEP §1209.01(c); In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1345, 57 USPQ2d 1807, 1811 (Fed. Cir. 2001).
9. Registration of a mark may be opposed or cancelled if the mark dilutes the distinctive quality of plaintiff's famous mark. Lanham Act Sections 13, 14, 43(e); 15 U.S.C. §§1063, 1064, 1125(c); see, e.g., Toro Co. v. ToroHead Inc., 61 USPQ2d 1164 (TTAB 2001) (unsuccessful dilution claim); Nasdaq Stock Market v. Antartica, Opp. 91/121,204 (TTAB June 30, 2003) (successful dilution claim).
Upon the timely filing of an opposition in proper form (with the required fee), the Board obtains the file of the opposed application and prepares an opposition proceeding file. 37 CFR §2.105; TBMP §310.01. When a timely petition to cancel is filed in proper form (with the required fee), the Board obtains the file of the registration sought to be cancelled and determines the current owner of the registration. A title search will be conducted by the Board to determine the current assignee of the mark. Once a search has been completed, the cancellation proceeding file is set up. 37 CFR §§2.105, 2.111(a) and 2.113; TBMP §310.01.
The Board will then notify both the party in the position of the plaintiff and party in the position of the defendant of the formal institution of the proceeding. The Institution Notice and Trial Order identifies the title and number of the proceeding, the application or registration involved, and designates a time, not less than thirty days from the mailing date of the Notice, within which an answer must be filed. The Notice will also specify the opening and closing dates for the parties' discovery period and each parties' time for taking testimony. 37 CFR §§2.105, 2.113 and 2.120(a); TBMP §310.01. A party in the position of the defendant does not have to file an answer to the complaint in an opposition or cancellation proceeding until it receives the Board's Institution Notice and Trial Order setting the time for filing an answer, which is generally 40 days from the mailing date of the Notice. 37 CFR §2.113; TBMP §310.03(a). Upon stipulation by both parties and approved by the Board, or upon motion filed by one of the parties and approved by the Board, the time for filing an answer may be extended or reopened. Fed. R. Civ. P. 6(b); TBMP §§310.03(c) and 509.
After an answer and any counterclaims are filed by the parties, and on the date specified by the Board in the Institution Notice and Trial Order, the discovery period opens to allow each party the opportunity to ascertain the facts underlying its adversary's case. Through the use of discovery depositions, interrogatories, requests for production of documents and things, and requests for admissions, the litigants can "discover" the facts on which the adversary's case is based. Discovery also is an essential tool to prepare for presenting evidence at trial. Discovery additionally is useful in determining facts that may lead to a settlement of the case, facts on which a motion for summary judgment may be based, or grounds for additional claims (in the case of a plaintiff) or additional defenses or counterclaims (in the case of a defendant). 37 CFR §2.120; TBMP §401.
On or before the closing date of the discovery period as originally set or as reset by the Board, all discovery depositions must be taken, and interrogatories, requests for production of documents and things, and requests for admission must be served on the adversary. 37 CFR §2.120(a); TBMP §403.02. After receiving discovery requests from the adversary, the receiving party has 30 days after the date of service of the discovery to file its responses to the interrogatories, requests for production of documents and things, and requests for admissions. Fed. R. Civ. P. 33(b)(3), 34(b), and 36(a); 37 CFR §2.120(a); TBMP §403.03. Upon stipulation of the parties and approved by the Board, or upon motion filed by one of the parties and approved by the Board, the discovery period may be extended for a defined period a time beyond the initial six months. 37 CFR §2.121(a)(1); TBMP §403.04.
After the testimony period ends, the parties are allowed time in which to file briefs on the case. The brief is a party's "opportunity to present, in a systematic and coherent manner, and in a form which is permanent and can be referred to, a discussion of the facts in light of the law," its strongest affirmative arguments, and a rebuttal of its adversary's arguments. TBMP §801.01.
The party in the position of the plaintiff must file its brief no later than sixty days after the date set for the close of rebuttal testimony. The party in the position of the defendant's brief, if filed, is due no later than thirty days after the due date of the first brief. A reply brief by the party in the position of plaintiff, if filed, shall be due not later than fifteen days after the due date of the defendant's brief. 37 CFR §2.128(a)(1); TBMP §801.02.
At this point in the inter partes proceeding, an oral hearing may be scheduled if timely requested by a party to the proceeding. A party to a proceeding that covers complex issues or a complex record may find an oral hearing beneficial, since it allows the party the opportunity to emphasize its strongest arguments, and to refute its adversary's arguments. The party in the position of the defendant also may find an oral hearing useful in responding to arguments made for the first time by the party in the position of the plaintiff's reply brief. TBMP §802.01.
After the due date for filing the last reply brief has passed or an oral hearing has been held the case is set down for final decision. TBMP §803. A panel of at least three Board members renders the final decision. In those cases where an oral hearing has been held, the panel that heard the arguments normally renders the final decision. When a final decision has been made signed by the panel, a copy is mailed to every party to the proceeding. Lanham Act Section 17, 15 U.S.C. §1067; TBMP §§803and802.04
Requests for rehearing, reconsideration, or modification of a decision issued after final hearing made be made by any party. However, this request must be filed within one month from the date of decision and a responsive brief, if any, is due within 15 days of the date of service of the request. 37 CFR §2.129(c); TBMP §804.
After an inter partes proceeding before the Board is finally determined and all appeals, if any, have been terminated, the Board closes out the proceeding file and gives effect to the judgment.
All final decisions of the TTAB are posted on the USPTO web site, at the URL http://www.uspto.gov/web/offices/com/sol/foia/ttab/ttab.htm.
VI. Effect of the Madrid Protocol and Implementing Rules Changes
On November 2, 2003, the U.S. became a member of the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the "Madrid Protocol"). The Madrid Protocol is a new central filing system available to U.S. trademark owners interested in protecting their marks abroad. Also, foreign trademark owners are able to add the U.S. as a designated country in their Madrid Protocol applications or in connection with existing Madrid Protocol registrations. Foreign mark owners wishing to obtain protection in the U.S. through the Madrid filing system under Lanham Act Section 66(a) must file a request for extension of protection to the U.S. Once a foreign trademark owner files its request for extension of protection and it is forwarded to the USPTO, the application enters USPTO jurisdiction and is examined by the USPTO in the same manner as any basic U.S. application. Likewise, applications filed through Madrid under a §66(a) basis are subject to oppositions and cancellations before the TTAB.
To accommodate accession of the United States to the Madrid Protocol, some of the rules pertaining to practice before the TTAB recently have been changed. The Rules of Practice for Trademark-Related Filings Under the Madrid Protocol Implementation Act, published on September 26, 2003 in the Federal Register, implemented the new Madrid filing system rules into parts 2 and 7 of the Code of Federal Regulations. Fed. Reg.Vol. 68, No. 187 at 55,748 (Sept. 26, 2003); 37 C.F.R. §§2 and 7.
Within 18 months of the filing date of the request for extension of protection to the U.S., the USPTO must notify the International Bureau of the World Intellectual Property Organization of: (1) a notification of refusal based on the filing of an opposition, or (2) a notification of the possibility that an opposition may be filed after expiration of the 18-month period. Lanham Act Section 68(a)(2); 15 U.S.C. §1141h(a)(2). Thereafter, any notification of refusal based on the opposition must be received by the International Bureau within 7 months after the beginning of the opposition period or within one month after the end of the opposition period, whichever is earlier. Section 68(c)(2) of the Lanham Act, 15 U.S.C. §1141h(c)(2); Article 5(2)(c)(ii).
As discussed in Sections II. and III. above, any person who believes that he, she or it is or would be damaged by the registration of a mark on the Principal Register may file an opposition against the application or petition to cancel a registration. An opposition must be filed within thirty days after publication of the application being opposed or within an extension of time for filing an opposition. 37 C.F.R. §§2.101(c), 2.102(a), 2.111(a) and (b); 68 Fed. Reg. 55,765 (Sept. 26, 2003). If extensions of time are requested, the total time for filing an opposition shall not be extended beyond 180 days from the date of publication. The requests to extend must be filed before the expiration a previously granted extension of time. 37 C.F.R. §2.102(c); 68 Fed. Reg. 55,766 (Sept. 26, 2003).
Although Petitions for Cancellation, or Notices of Opposition against applications filed under Lanham Act Sections 1 or 44, 15 U.S.C. §§1051, 1126, may be filed by paper or electronically through the Electronic System for Trademark Trials and Appeals ("ESTTA"), an opposition to an application filed through the Madrid filing system, §66(a), and any requests for extensions of time to oppose a §66(a) application must be filed through ESTTA. The Board will not accept oppositions through ESTTA that are not accompanied with sufficient fees to cover all named party opposers and all classes opposed. 37 C.F.R. §2.101; 68 Fed. Reg. 55,756-55,757 (Sept. 26, 2003).
Neither an opposition nor petition to cancel will be accepted unless all fees are included with the opposition to cover each party plaintiff to oppose or cancel the registration of a mark in each class specified in the opposition or cancellation. 37 C.F.R. §§2.101(d)(2) and 2.111(c); 68 Fed. Reg. 55,765-55,766 (Sept. 26, 2003).
Once filed, grounds for an opposition proceeding against a Lanham Act Section 66(a) application may be amended in the same manner and to the same extent as in a civil action in a United States district court, except that, once filed, an opposition against a Lanham Act Section 66(a) application may not be amended to add to the grounds for opposition or to add to the goods or services subject to the opposition. An opposer may make amendments to grounds asserted in the notice of opposition, for example, for clarification purposes. 37 C.F.R. §2.107(b); 68 Fed. Reg. 55,766 (Sept. 26, 2003). A Notice of Opposition filed against an application under Lanham Act Sections 1 or 44 may not be amended to add other goods or services recited in the application after the period for filing the opposition has closed. 37 C.F.R. §2.107(a); 68 Fed. Reg. 55,766 (Sept. 26, 2003). Pleadings in a cancellation proceeding may be amended in the same manner and to the same extent as in a civil action in a United States district court. 37 C.F.R. §2.115.
The Board's Electronic System for Trademark Trials and Appeals ("ESTTA") is located at the following URL: http://estta.uspto.gov/.
Attached are: Model Notice of Opposition and Model Petition to Cancel; Excerpts from Federal Register Notice of September 26, 2003 pages 55,762-55,770 and Excerpts of the TTAB's ESTTA website.