Examination of Trademark Applications and the Trademark Trial and Appeal Board (TTAB)

Once your trademark application is filed, it is circulated for examination with a Trademark Examining Attorney who reviews the application for accuracy and determines whether the mark is entitled to registration according to strict rules developed by the USPTO in accordance with federal law. During the course of the Ex Parte Examination of the trademark application, the Trademark Examining Attorney may issue Official Actions asking the applicant to comment on their claims of trademark rights or inviting argument as to why the application should be allowed over obstacles to registration which the Trademark Examining Attorney alleges exist. Among these obstacles are prior similar registrations, or the trademark application was incorrectly or incompletely filed. SHERMAN IP attorneys are well versed in responding to these Office Actions as well as the specific rules and guidelines by which the Trademark Examining Attorney’s opinions can be sustained or overturned. SHERMAN IP attorneys regularly overcome positions taken by Trademark Examining attorneys through argumentation and amendment to the application. Most often, SHERMAN IP attorneys work with the Trademark Examining Attorneys to collaboratively resolve any issues and obtain an allowance of your trademark application.

On occasion, however, the Trademark Examining Attorney will adhere to their position in a manner which your SHERMAN IP attorney feels is incorrect. On that occasion, SHERMAN IP attorneys are skilled in appealing your rejection to the Trademark Trial and Appeal Board (TTAB).

The TTAB is an administrative court within the USPTO which acts as a neutral party for certain trademark matters. The TTAB’s main function is to determine whether an applicant is authorized to register a trademark on the Federal Trademark Register. There are three types of proceedings that are pursued within the TTAB: Appeals, Oppositions and Cancellations.

Appeals are the most common proceedings handled by the TTAB. During the registration process, the Trademark Examining Attorney may decide to not grant federal registration to an applicant for various reasons. Once a Final Office Action is issued by the Trademark Examining Attorney who refuses to alter their position, the available vehicle to reverse that decision is by appealing to the TTAB.

SHERMAN IP attorneys have extensive experience practicing before the TTAB and are specially qualified to represent you before the Trademark Trial and Appeal Board. In addition to appeals which are Ex Parte Proceedings, the TTAB also has the power to settle controversies between parties, Inter Parte Proceedings, about whether a trademark should be recorded on the United States Trademark Register.

Although the TTAB does not have the power to award any monetary compensation to parties, Oppositions to trademark registration and Petitions for Cancellation of existing trademark registrations are routinely fought between parties before the TTAB. An Opposition Proceedings occurs when one party chooses to oppose or “object to” another party’s trademark application and attempts to stop someone from obtaining federal trademark registration. Similarly, a Cancellation Proceeding occurs when a party attempts to cancel registered trademark from the Federal Trademark Register.

SHERMAN IP attorneys have extensive experience representing our clients through all matters before the Trademark Trial and Appeal Board (TTAB). Our success and track record allows us to effectively guide you in your strategy to not only obtain their trademark rights, but to also protect them in all facets of the law as well.