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Archived updates for Sunday, January 21, 2007

Basic Information About Trademark Oppositions

A trademark Opposition proceeding at the U.S. Patent and Trademark Office is much like a small-scale law suit, except that there is no "live" testimony. Rather, all testimony is taken by oral deposition and portions of the written transcripts are submitted to the U.S. Trademark Trial and Appeal Board, or "TTAB." With the exception of an optional oral hearing at the end of the proceeding, there is no "trial" before the TTAB as one generally thinks of a trial before a judge and jury.

All types of discovery provided by the Federal Rules of Civil Procedure may be taken during the discovery period, including written interrogatories, oral depositions, requests for production of documents, and requests for admission. At this stage, the discovered evidence is shared between the parties but not submitted to the TTAB. This gives the parties an opportunity to assess the strength of each other’s case at an early stage in the proceeding, and for this reason proceedings are often settled during the discovery period.

The testimony periods commence thirty days following the close of the discovery period. It is during the testimony periods that each party presents its evidence to the TTAB. The Opposer has the first thirty-day testimony period in which to present its case in chief. The Applicant’s thirty-day testimony period opens after the close of the Opposer’s testimony period. Thereafter, the Opposer has a further fifteen-day rebuttal testimony period in which it may present additional evidence to rebut the Applicant’s evidence.

Each party must then file a Brief upon the conclusion of the testimony period, the Opposer having the opportunity to file a main Brief as well as a Reply Brief in response to the Applicant’s main Brief. Either party may request a one-hour oral hearing, although the hearing is optional and the TTAB can decide the case solely on the Briefs.

The TTAB will also entertain dispositive pre-trial motions, such as motions to dismiss and motions for summary judgment. The filing of such a motion generally will result in suspension of the proceeding while the TTAB considers the motion. The TTAB is currently taking about 8-10 months to decide motions for summary judgment.

The cost of a opposition proceeding can be quite high, depending upon how actively and aggressively it is pursued by the parties. Also, opposition proceedings sometimes last several years, depending on the amount of discovery required, difficulties that may be encountered in obtaining discovery from a party, the number of motions filed by the parties, backlogs at the TTAB in deciding motions, and the like. If an opposition proceeding is settled, the costs are often significantly less than a full-scale proceeding, although it will depend on what stage the proceeding is in when it settles, how protracted the settlement negotiations are, etc.
Generally speaking, if the parties are able to negotiate a settlement prior to conducting any discovery, we would expect the charges to be in the range of $5,000-10,000, or less. A full opposition proceeding could easily run as high as $100,000, and significantly more if aggressively litigated.
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