Litigation & Your Mark: Understanding the TTAB
As a trademark attorney, a good portion of my work for clients is administrative, such as working with the Examiners in the U.S. Patent & Trademark Office (PTO) to obtain or maintain a trademark registration. But the most observable value in what I do comes in protecting a client’s mark, which often involves litigation. While IP law is not dramatically represented in episodes of Law & Order®, trademark enforcement is absolutely critical to ensuring that your brand remains yours and only yours.
The most obvious form of an IP dispute is a case filed in federal or state court. But some disputes are more suited to resolution through proceedings at the Trademark Trial and Appeal Board, also known as TTAB.
The TTAB is an administrative judicial body, a part of the U.S. Patent & Trademark Office (PTO) created to resolve certain disputes. Among other responsibilities, they handle disputes between parties as to priority and/or potential confusion between competing marks on the Federal Register. The goal in such an action is to either prevent a third party from obtaining or keeping a federal registration, or to defend an application/registration against a third party objection. These are accomplished through either an Opposition or Cancelation Proceeding.
TTAB is definitely not represented in any Hollywood production, and so most clients are unaware of how disputes are managed. This can lead to the misconception that TTAB is not “real” litigation. Because it’s an administrative board, rather than a judge and jury, the proceedings can lack the perception and gravity of the traditional courtroom setting. But trademark disputes are not something to take lightly. The work our team does for a TTAB proceeding is very similar to that of any other litigation procedure.
There are some key differences between a TTAB proceeding and civil court action that many are more familiar with:
Dispute Types: The TTAB only resolves disputes regarding PTO applications and registrations on the Federal Register. It does not resolve infringement issues, such as unauthorized use of a mark.
Damages: The TTAB cannot award damages, monetary sanctions or attorneys’ fees to a prevailing party. Each side must pay their own fees and expenses.
Manner: The TTAB proceeding is conducted almost entirely through documents. Although there is an opportunity for a hearing, there are generally no live witnesses and no jury. An administrative judge makes the decisions regarding the proceedings.
It’s important to note that, just as in federal court, the TTAB follows the Federal Rules of Civil Procedure, and can include the taking of sworn testimony, the exchange of discovery documents, arguments over procedure and admissibility of evidence, preparing and submitting legal briefs, reports by expert witnesses and depositions. These are all part and parcel of our work as an IP law firm. It can be a bit much for a business to attempt on their own.
The takeaway here is that the TTAB proceeding is like any civil trial in terms of procedure, and especially in terms of potential costs. The PTO recently noted that the average cost of a TTAB proceeding from start to finish is around $100,000, and can last two years or more. This number can increase significantly, depending on how adversarial the parties are, and how much evidence is involved.
Clients should not be misled into thinking that TTAB is a simple DIY administrative process. It’s easy to miss critical deadlines, fail to properly file required documents or simply get overwhelmed by the process. Clients may start working on a TTAB proceeding, either as the plaintiff or defendant, only to find out they have dug a deep hole from which it is difficult to recover.
If served with a Notice of Opposition or Petition to Cancel, consult with an attorney who has experience in TTAB matters to get an overall sense of strategy and cost. You’ll likely find that you’ll save yourself time, money and resources, and have a much better chance of achieving your desired outcome with professional counsel on your side.
Our firm has extensive experience in TTAB proceedings. Please feel free to contact us about your matter and how we can help.
