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Oppositions and Cancellation Proceedings

In the United States, you don’t need to have your trademark registered. But trademark registrations are powerful and often worthwhile. Among other things, a registration certificate is (rebuttable) proof that your trademark is valid and that you own it. This makes your trademark much easier to enforce.

Because registrations are so powerful, there are special legal procedures for either blocking them before they can become registrations (oppositions) and for knocking them out later (cancellations). These procedures are handled by a branch of the United States Patent and Trademark Office (USPTO) known as the Trademark Trial and Appeal Board (TTAB).

Even though they have different names, opposition and cancellation proceedings are procedurally identical. The only difference is that a cancellation proceeding takes place only after a registration has been issued, and an opposition proceeding takes place before. Opposition proceedings can be initiated only during a short window (which can be extended) between the USPTO’s approval of the application to register the trademark and the issuance of the registration.

Somewhat counterintuitively, it’s no more difficult to cancel a registration than it is to oppose an application, provided the registration isn’t five years old or older. Thus, if you miss your chance to oppose an application, you can try to cancel the resulting registration. After five years, however, registrations become “incontestable” (something of a misnomer), which makes cancellation much more difficult.

Opposition and cancellation proceedings are like streamlined lawsuits. The rules of evidence are relaxed but still fairly strict. There are still the three phases of litigation (pleadings, discovery, trial), but everything is done “on the papers.” Instead of a normal trial, the parties take turns submitting documents and written testimony. Having said that, there are some very strange procedural wrinkles that can trip up even experienced litigators.

Even though they look and feel like normal litigation, opposition and cancellation proceedings can only resolve questions of whether the trademark should be registered. Even if the a registration is denied or cancelled, the trademark itself can live on, just without the (considerable) benefits of registration. If the problem with the applicant or registrant goes beyond that, you’ll need to consider filing a normal lawsuit. Only a court can actually stop someone from using a trademark, for example. Lawsuits are, of course, more expensive. Courts can cancel registrations, but they cannot be used to oppose applications—only the TTAB can do that.

Because of a (controversial) 2015 Supreme Court ruling, a decision by the TTAB against an applicant or registrant can sometimes be used in court to prove invalidity or likelihood of confusion. This has raised the stakes because an applicant or registrant can’t just accept a defeat before the TTAB without risking its right to keep using the trademark in a later follow-on lawsuit.

An odd feature of opposition and cancellation procedures is that national jurisdiction of the TTAB. Because everything is “on the papers,” from across the country—even around the world—may litigate against each other without ever leaving home. Your lawyer doesn’t even have to be very close by.