What is the Trademark Trial and Appeal Board?

The TTAB, a neutral body within the USPTO, decides appeals, oppositions and cancellations

The Trademark Trial and Appeal Board (TTAB) is a neutral body within the United States Patent and Trademark Office (USPTO) consisting of 26 highly qualified judges. The TTAB functions as a court that hears appeals regarding the registrability of trademarks, opposition cases, and cancellation proceedings. TTAB decisions can be appealed to a United States district court or the United States Court of Federal Appeals for the Federal Circuit. All initial proceedings and additional filings before the TTAB can be filed online through the Electronic System for Trademark Trials and Appeals (ESTTA).

Screenshot of the ESTTA filing page where new proceedings or additional documents can be filed

Appeals of USPTO Examining Attorney Decisions (ex parte)

A trademark applicant can appeal a decision by the Examining Attorney when the Examining Attorney issues a Final Office Action or if the Response to a Final Office Action is not successful and the Examining Attorney refuses registration of the trademark. Trademark applicants can appeal regardless of the reasoning the Examining Attorney did not approve the trademark for registration. For example, appeals can be brought based on an improper specimen or a likelihood of confusion refusal. Unlike oppositions or cancellations cases before the TTAB, appeals of Examining Attorney decisions are ex parte, meaning there is only one party involved, i.e. the trademark applicant.

Opposition Cases Against Published Trademark Applications (inter partes)

When an Examining Attorney approves a trademark application, before it can be registered, it is published for opposition in the Official Gazette. During the thirty day period a trademark application is published, any third party who believes registration of the trademark will cause them harm can file an opposition to the registration of the trademark with the TTAB, usually on the grounds it is likely to cause confusion with their trademark. Opposition proceedings are considered inter partes, latin for “between the parties,” because there are two separate parties pleading why and why not the applied for trademark should proceed to registration. Along with cancellation cases, opposition proceedings before the TTAB are governed by the TTAB Manual of Procedure, which are similar to the rules of procedure and evidence used in federal courts.

 The online Tradeemark Trial and Appeal Board Manual Procedure can be seen here

Cancellation Cases Against Registered Trademarks (inter partes)

After a trademark is registered, any third party who believes they are harmed by the trademark registration can file a cancellation proceeding at the TTAB seeking to cancel the trademark registration. Most often, cancellations are filed based on the party bringing the proceeding believing there is a likelihood of confusion issue with the registered trademark and a trademark they own. Similar to opposition proceedings, cancellations are inter partes cases heard by the TTAB and governed by the TTAB Manual of Procedure. Cancellation cases are harder for the plaintiffs bringing the case than oppositions because there is a higher standard for showing a trademark should have its registration cancelled than for showing a trademark application should not proceed to registration. For this reason, it is important for trademark owners to monitor when trademarks are published for opposition and prevent any likelihood of confusion issue in the application process rather than after a trademark is registered.

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