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  • Writer's pictureTamara Pester

So you got a Trademark Trial and Appeal Board Opposition Notice? Now what?

Updated: Mar 21

Note: The following is an edited version of the transcript from Tamara Pester's chat with Aiden Durham of 180 law CO in Colorado. The original video can be found on her YouTube channel, All Up in Yo' Business.

Fun with Aiden on her YouTube channel discussing trademark oppositions and cancellations!

Aiden: So on this episode of all up a new business, we're going to be joined by my good friend and colleague, Tamara Pester who is a great and very experienced trademark and intellectual property attorney in the Denver, Colorado area. Tamara and I are going to be talking about trademark opposition's and cancellations and the TTB or trademark and trial appeal board proceedings. So if you've ever wondered, what do I do if someone says that I'm stealing or infringing on their trademark, or if someone tries to prevent me from registering a trademark? Or what do I do if I find somebody who's trying to register a trademark that's similar to mine or tries to use a trademark that's similar to mine? We're going to be answering all those questions and talking about really exciting course that Tamara has developed to help all of you non lawyers learn trademarks. I'm excited to talk about cancellations and oppositions and basically what to do if someone tries to steal your trademark or thinks that you've stolen theirs or other issues come up. Welcome, Tamara.

Tamara: Thank you. I'm excited to be here!

Aiden: Just give a brief introduction of yourself. Tell us a little bit about you.

Tamara: I've been practicing law for more than 20 years, I've had a variety of different legal experiences, I started at a really big firm. There were like 800 people and all I would do were trademark applications day in and day out. After a couple years of that I went in house to a software company where I got a lot wider exposure to different areas of law, like employment law, business contracts, offer licensing, and then pretty much continued with those couple areas, business contracts and software licensing and trademark prosecution and defense. For most of my career, I did work for another company after my company got acquired. And then I started my own practice about 15 years ago.

As you know, Aiden, I know you and I've worked together on a couple Trademark Trial and Appeal Board opposition proceedings, that's probably about a quarter of my practice, I would say. And the rest of the time, I'm helping people register their trademarks, I'm helping them write cease and desist letters, or I should say, I'm writing cease and desist letters on their behalf. And I help them negotiate various types of business contracts, you know, vendor agreements, customer group and stuff like that.

Aiden: and you've recently developed a course on how to learn trademarks!

Tamara: Yes, I also recently started a class called learn trademarks,, to help people who might not otherwise be able to afford a full fledged attorney, holding their hand through the whole application registration process. The Learn Trademarks class is four modules, it's about an hour and a half in length. The various modules are designed to give people an overview of intellectual property. That's the first module, kind of the difference between trademarks copyrights, trade secrets, and patents. In the second module, we take a deep dive into what a trademark is what it can and cannot do. In the third module, we discuss common myths and misperceptions about trademarks, which I'm sure you and I will talk about during this session. And then the last module, I think you also have a class similar in the last module, we're actually going through the trademark application, the US Patent and Trademark Office application for registration of a new trademark, and I'm interactively discussing the different steps and what you should fill in and what you should not fill in. And you know, the little trick to not include your personal home address for public view, stuff like that.

Aiden: Perfect, perfect. Yeah. And I think it's, it's great because my, my course brandish focuses just on the application process itself. But a big part of that is understanding what a trademark is and what we're even dealing with, which is why I think yeah, of course, is great, because it really gives that overview.

Tamara: You do a great job on social media, they probably could learn a lot from that. This is designed more for people who just want to kind of get a quick and dirty overview of intellectual property, make sure they're not wasting their money on the trademark application fee and doing it the right way. And applying for something that's actually registrable.

Aiden: I will talk a little bit about it again, at the end of this video and give people info on how to sign up and, and all of that awesome. So if you guys have been watching my videos, I'm sure you've heard me talk about trademarks, and the application process. And part of the process of getting a trademark registered is this opposition period where after the examining attorney with the USPTO, they vet your application, do all their checks and balances, and then it gets published for 30 days in the TMG trademark Official Gazette. And this is an opportunity for kind of the general public to oppose the registration if they think it might somehow step on their own trademark in some way. And the way that Tamra and I really got to have some fun working together was I was filing an application, and someone filed an opposition against the trademark. And this was my first time dealing with an opposition. So I had pretty much no idea what to do. So of course, I reached out to Tamara, and that was to get some additional help and have her, you know, kind of guide me through that process. Tell us if, from the applicants point of view, what what's the opposition proceeding? Like, what should we expect to encounter if someone files an opposition against our application?

Tamara: Well, hopefully, if you've done your searching correctly, and there's no one else out there with a similar name, or mark, design mark, or you know, in the weird trademarks, like, smell color sound, then there won't be any opposition's but you know, maybe your client is more open to risk. And they know that there is a risk that someone will oppose them or that there's something else out there that might conflict and they've decided to go ahead and apply anyway. And then voila, the opposition period comes and lo and behold, someone filed in opposition against them.

Well, first, we'll get a notification from the trademark trial and appeal board that an opposition has been filed. And if there's an attorney on record, that attorney will get the notification and it will be directed to the attorney who's on record for the file. If they've applied on their own, they will receive it and whatever correspondence address they have indicated, they will then have 30 days to respond, oh, let's back up for a second though, it's kind of unusual for someone to just go ahead and file an opposition parties do have these requests for extension of time to oppose, you can file a 30 day extension for time to oppose at no cost.

So if someone's been monitoring their trademarks, and they see that someone else has applied and the opposition period has opened up, usually what they'll do unless they're super aggressive, which does happen sometimes. But usually what they'll do is just file the extension and then contact the applicant and be like, hey, we saw that you applied for this mark you might not be aware about we actually have rights in a very similar mark, and you need to stop using it. Otherwise, we will file for an opposition if the people don't respond, or if they're still in communications about that, and the application hasn't been withdrawn yet, then the opposing party can file a second and third request for extension of time to oppose. And by the way, these are almost always automatically granted, it's not like there's someone at the trademark trial and appeal board, examining it and thinking oh, I don't know, should I let them extend or not, it's pretty much always automatic, as long as you're filling out the correct checking the right boxes, you know, on the form. So you have a while ,over 100 days, to continue filing these extensions. And then finally, at the end, you either need to file an opposition or you lose your chance to do that. And then you'll have to wait until the trademark gets registered and then either file the cancellation proceeding or sue them in federal court.

Okay, so back to your original question. When someone gets an opposition, they they're pretty freaked out. If they're not represented by an attorney. That's when we get the call, as you know, and then you need to respond pretty quickly. And the initial response to the opposition can just basically be like, yes, no, yes, no, yes, no, unless you want to file a counterclaim, you need to do a little bit more research, but it is important to file a response in a timely manner. Otherwise, they get default judgment.

Aiden: Right. Okay. So it's, it sounds like we get we get some heads up in a lot of cases that they file these extension requests. Now potentially an opposition will be coming and we have an opportunity to maybe resolve it or avoid that from happening one way or the other.

Tamara: These extension requests can also give you a pretty good indication of what resources they're willing to devote to it. If it's a letter on law, firm letterhead, then generally they're more serious. If it's a law firm, in general, that means they've engaged in the attorney to write this letter and give the other party a heads-up. If it's just someone doing it on their own, then it could be that either they don't have the funds to engage an attorney, or they just want to do something a little bit simpler and more, you know, approach it from a more like alternative dispute resolution standpoint, where they're not necessarily going to go ahead with a full opposition, but they do want to get your attention and communicate with you and see if they can work something out about concurrent use of the similar marks or just get you to kind of back down without a fight.

Aiden: The TTAB, the trademark trial and appeal board, if you're not familiar, it might sound like this is, you know, we're going to trial, this is a serious legal thing that we're getting into. But it's not exactly that. There's no, trial exactly, we're not appearing in front of a judge. There's no jury that we have to talk to. What's the what's the TTB process look like?

Tamara: The trademark trial and appeal board is definitely a unique process. Because you have these TTAB interlocutory attorneys who are like judges, you have paralegals there, you have a lot of the things that look like a lawsuit. But it's really not, even if you ultimately go to trial, which is pretty unusual. Usually, they settle at some point during discovery, the "trial" is like a conference call. And you know, you get the opportunity to write briefs and research and write motions, like you would in a normal court case, but it is generally a lot less expensive, because you're only focusing on the issue of whether or not the trademarks are likely to cause confusion, that's the most frequent opposition proceeding is an opposition based on confusing similarity. Sometimes you'll do a cancellation proceeding.

The cancellation proceedings can vary a little more, it's not only the confusing similarity, but sometimes it could be cancellation based on fraud or non use. And as you know, the under the Trademark Modernization Act towards the end of the year, I think they're finally going to give us the opportunity to request for expungement of a mark without going through the whole cancellation proceeding. So I'm looking forward to that. Because I feel like there are a lot of trademarks on the register where people aren't really using it, or at least aren't using it for this long list of goods and services that they have registered for.

Aiden: Right? Absolutely. Yeah, I encounter that pretty frequently, where you know, we do the we do the search before we submit the application. And maybe there's a trademark that comes up that would be confusingly similar, but digging into it, it looks like this, this business has been dissolved for four years. There's no record of them on the internet anymore. Exactly. So hopefully giving us an easier way to to deal with those situations. So the modernization act.

Tamara: Yeah, so more about the process. So other than generally, just having like a lot of the same steps, you also have a generally shorter timeframes, like discovery starts pretty quickly into the process and is limited in time period unless the parties agree otherwise. There have been a few instances where I thought the accelerated case resolution would be a great way to speed some things through the process. Sadly, it's not totally uncommon when you're dealing with larger companies that just have a lot of money, to outspend you.

Aiden: Yeah. Well, speaking of the discovery, and the exchange of information, an interesting experience that Tamara and I had working together on that case where I had her helping me with an opposition. So my client had filed an application, somebody wanted to oppose it. And that the marks were were very similar, practically identical. And so in discovery, it kind of came down to who dates of first use who use the trademark first in which jurisdictions and which, which geographic areas, and that was kind of going to be the crux of this dispute was was first use of the mark. And then some interesting things follow. Do you want to tell people?

Tamara: Oh, my gosh, yeah, I will never forget that one. Because this has never happened. It never happened to me before. And it has not happened since. Although, I did have a client kind of question disclosure of the data first use recently also. But yeah, I remember that case very well. So it was two companies, actually, the ladies knew each other in the same community. They both had schools to teach students about one particular type of aesthetics, they both had rather descriptive marks, which, you know, I'm sure you counsel them that they should have just chosen a better mark to begin with. But unfortunately, our client and the other side both had marks that were pretty descriptive of this service that they're teaching people how to do properly. And our client, by the way, was like, super skeptical from the beginning. Pretty much anything that came in from the other side, she'd question. And then when it did finally come down to who was using it first, I remember the other side sent an invoice for the room they were renting to teach their class in, or I don't know, something related to their first class that they held. We asked their attorney opposing counsel for more proof of that date.

Wellllll, opposing counsel sent back a document like an email chain that included an email from the his client to their graphic designer, saying, Hey, can you guys edit this invoice and make it look like I was actually using it a year earlier? Mm hmm. And I remember I called you and I was like, Oh my gosh, did you see what just came across? And we were both astounded because clearly this person was committing fraud. I don't remember there when we had a phone call with you opposing counsel, or whether we just like sent his email back to him and we're like, do you realize what's in this attachment? Your client is committing fraud. And then he had a "noisy withdrawal" where not only did he withdraw from representing them, I think he also filed something with the trademark trial and appeal board saying that he was withdrawing because of fraud. Haha. And then of course after that, the other party, stop fighting it and just let our client have the trademark but oh my gosh, that was crazy. Right?

Aiden: Yeah. It's, you know, you talk to people in there. They're skeptical about, you know, someone fudging evidence or fudging documents. And rarely is there actually some substance behind that. But in this sense, yes, that was exactly what it was. They were just faking the date. And we got we got pretty clear proof of that. And yes, and I mean it, you know, in the end, it ended up working out great for our client. And she, I think, was very vindicated in her feelings. definitely getting to, but yeah, that was a pretty crazy experience.

And I think the big key takeaway for people watching is be truthful on your trademark applications, and be truthful with your attorney and be, you know, truthful in all regards in any kind of any kind of legal proceeding you're entering into. Because if you don't, it's usually going to come out one way or another. And, yeah, that's terrible with those governors. Yeah, right. Yeah. So let's say, let's say we are a trademark owner, and we find someone that we think is infringing, or using a trademark, that's the same as ours, or something similar. What options do we have as far as or let's say they even have a registered trademark themselves? What options do we have for enforcing our rights, whether it's canceling their trademark or or suing for infringement or something like that? That's a good question.

Tamara: So as you know, it all depends on the data first use. So assuming that we were using the mark first, there are a couple of options, I usually start with a cease and desist letter and just give them the opportunity to resolve it informally. Not everyone responds to those. So then you have the the opportunity to either file a cancellation proceeding, and get their registration cancelled based on your prior rights, or you can sue them in federal court.

People get confused sometimes about what the true effects of a Trademark Trial and Appeal Board proceeding is. And it's a little bit funky, because Trademark Trial and Appeal Board proceedings really are like nothing else, and people can end up kind of spinning their wheels a little bit. So even if you have a successful cancellation or opposition proceeding, it only relates to the right to have that trademark on the US Patent and Trademark Office register. It doesn't necessarily affect us in real life. However, due to case law, trademark trial and appeal board proceedings do have a persuasive effect on later filings in federal court. Does that make sense? know, it makes sense to you. Let's make sure it makes sense to the audience. What we're saying is, if you file or if you're defending a Trademark Trial and Appeal Board proceeding, it doesn't mean that if you win, that the other party's going to stop using their trademark. Or if you lose, that you need to stop using your trademark. That's what's a little bit frustrating to people. And what a lot of people don't fully understand is that winning or losing a trademark trial and appeal board proceeding really doesn't necessarily affect your use in real life. It only affects your rights to get that registration.

Aiden: Right. Exactly. And that's, that goes for the registration all together, too. I explained to a lot of clients that, you know, even if even if we don't get the trademark registered in the end, that doesn't mean that the USPTO isn't telling you you can't use this trade for your business. Same thing with TTB proceedings. That's it, you may not have the actual trademark registration, but you still are able to continue using it in your business or for whatever purposes, unless some other, you know, legal proceeding comes up where you're actually ordered.

Tamara: Yeah, exactly. That is one of the biggest trademark myths. And that's actually something I talked about in the module of the Learn trademarks class where I talk, I think it's Module Three, where I talk about common myths and misperceptions. People sometimes think that they need to register a trademark before they can start using it. But as you know, people have "common law" rights and their trademarks in the geographic area where they've been using it and beginning on the date of first use in connection with those particular goods and services. And these days, you know, the geographic area is pretty frequently, if not worldwide, at least throughout the United States due to the internet. So if you're selling goods or services and you have a sale across interstate commerce between two states or between the United States and another country. There you go.

Aiden: Is there one thing that you see happen often? Or if you have one tip or suggestion for someone that is looking to get a trademark registration? what's what's the number one thing that you can tell someone to? So?

Tamara: That's a great question. I think the number one tip, is that I cannot emphasize enough, is the importance of doing a comprehensive search before you apply and making sure that your mark truly is clear for registration and use because a lot of people think that if they just do a quick knockout search, if they look in the Patent and Trademark Office for that exact trademark, that it's available, they can go ahead and register, they won't have any issues. But as you know, Aiden, there could be a lot of other companies or individuals lurking out there who using the same or similar mark for the same or similar services that will only be revealed through a comprehensive search through additional databases, like Secretary of State records, or state trademark registrations, or Dun and Bradstreet records, or even the internet or social media. So before people apply, well, first of all, of course, they should take my class! But if they don't either take my class or work with one of us or another reputable trademark attorney, they should at least do their own very thorough search before they even think about applying.

Aiden: Absolutely, yeah. And that's that's something people don't often realize is just because your exact trademark doesn't show up doesn't mean that you're in the clear, and you're going to be good to go to get that trademark registered. Yeah, the very first when I first my very first trademark application, I was still learning all this stuff. I was brand new to it. Luckily, this was a friend that I was doing it for. So I did a direct hit Search, didn't see anything come up. And I was like, Alright, I think we should be good. Turns out it wasn't. And the issue was, my trademark included the word pooch in it. And there was another one which was the same except for pooch. It was the word dog and poach. And dog. They mean the same thing, even though they're very different words. But that was that was close enough that the USPTO thought they were confusingly similar. And we ended up having to let the trademark application and that's too bad.

Tamara: So then your friend wasted the application fee as well as the time spent waiting for the application to get to assign to an examining attorney, which when you first started out probably was still like two to three months, these days. I mean, is it taking forever? It's Yeah, like five or six months? Until applications to get assigned?

Aiden: Yeah. It's crazy. It's crazy. I have I have a few that I've filed at the end of last year that are still not assigned.

Tamara: Yeah, same. Yeah. So if someone doesn't do their search properly, then not only are they throwing away their $250 or $350 filing fee, depending on whether they do TEAS or TEAS+, they're also just like sitting on the edge of their seat for more than six months waiting to see what happens. And, hopefully not investing too much in branding or marketing by then without knowing that their mark truly is registrable and not conflicting with something else.

Aiden: Well, thank you so much, Tamara. tell people how they can find you. If they want more help or how they can learn about your Learn Trademarks Class.

Tamara: We're on LearnTrademarks.Com. On Instagram, we're also @Learntrademarks. I believe that you have a link to it. Or go the website or reach out to me through @learntrademarks or @TamaraPesterlaw . Aiden, maybe we can co counsel again. I sure had fun as last couple times we did it. And I know our client was really happy that last one especially. Thank you for having me. I really feel like we could go on for like hours and hours. But people might get a little bored. And I tend to overwhelm people with all the information so we should parse it out.

Aiden: That's all for this episode. Folks. I hope you enjoyed my conversation with Tamara. I hope this learning something about the opposition cancellation proceedings was helpful and educational for you guys. Like we said, check the description for links to her learn trademarks course, or if you want to get in touch with Tamara, all of her info will be down in the description. Thank you all so much for watching!

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