What is the secret shadow court where rejected and contested trademark claims go? Who comprises this mysterious body? And what powers do they wield in their never ending quest for justice and determining the rights of millions of trademark owners?
Well, it’s actually a bit less melodramatic than that, even if it is a bit unknown. The name of this group is the Trademark Trial and Appeal Board, located in Alexandria, VA, and is a body within the United State Patent & Trademark Office. TTAB is comprised of 25 judges, appointed by the Secretary of Commerce.
Disclaimer: The following information does NOT constitute legal advice and is only for general educational purposes. Each situation is different and specific legal issues usually require additional research and investigation, so do not rely on this article to address a particular legal issue; use this as a starting point to gain a general understanding. This article, although educational in purpose and substance, nevertheless, might be deemed attorney advertising, and prior results do not guarantee future success.
Two kinds of cases find their way to this court. The first type are USPTO final decisions that rejected an Application for a trademark Registration. The second type are inter-party opposition proceedings by one party that either (1) oppose a proposed trademark (2) seek cancellation of a registered trademark or (3) an application for a Concurrent Use.
To Register a trademark, an Applicant must apply to the United States Patent Trademark Office, which can reject it for reasons such as (1) likelihood of confusion with an existing trademark (2) being too generic or descriptive (3) or too ornamental. This appeal would be an ex-parte proceeding (i.e. by only one party) by the Applicant, appealing the decision of USPTO’s Examining Attorney.
On the other hand, there are three types of proceedings before the TTAB, each of which involves at least two parties besides the TTAB.
Opposition: The step before Registration in the application process is “Publication” whereby another party can protest the Registration on grounds that it will harm the other person’s existing trademark, usually through Confusion. Also, the challenging party can cite other grounds such as the Mark being too descriptive or mis-descriptive, or too generic.
Cancellation: Or, if the “offending” trademark already has been registered, a challenging party can begin a procedure to Cancel it for similar reasons. And there isn’t a timeline although after five years, the grounds become narrower.
Concurrent Registration: A Concurrent Use is where one or more Applicants seeks a restricted registration, with conditions and limitations fixed by the Board, as to the mode or place of use of the Applicant’s Mark or the goods and/or services on or in connection with which the mark is used; restrictions are generally to claimed geographic areas of use. This can happen when two people have or want the same trademarked name, for the same type of goods or services but they limit one or both of them to how or where they can use it.
What TTAB Does and Does Not?
TTAB does not award damages. TTAB does not determine trademark infringement claims. TTAB does not award damages or attorney fees. TTAB does not "advance to go or collect $200 dollars" (anyone remember Monopoly?).
So what does it do? TTAB *only* determines who gets to Register the trademark; it doesn’t even make a decision on who gets to use it. That’s it.
Don’t like the TTAB’s decision? You’re in luck! You can appeal to either to a United States District Court or the United States Court of Appeals for the Federal Circuit.
And now you know the gist of it. Remember, there is always a USPTO involvement of some kind beforehand, even if it was several years before you seek action through the TTAB. If the USPTO didn’t act on the subject matter at hand, chances are you don’t belong in TTAB.