SHERMAN IP Launches a Cost-Effective Cancellation and Opposition Initiative to Protect Trademarks Rights

In our ongoing commitment to protect clients’ trademark rights, SHERMAN IP LLP is excited to announce the launch of its new initiative designed to help businesses address Trademark Opposition or Cancellation Proceedings at the Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office. This initiative further aligns with SHERMAN IP’s consumer facing, low cost, pay-as-you-go, limited scope legal practice.

This newest Control Legal® product will allow consumers to engage an expert trademark attorney using limited scope, prepaid flat fees in order to appear in and address these Trademark Opposition or Cancellation Proceedings.

What are Petitions to Opposition or Cancellation

Businesses invest large amounts of time and money securing their trademark rights at the United States Patent and Trademark Office (USPTO) to protect their brands and business. The goodwill built up within a brand or business, from the marketing and resulting consumer recognition, can make or break a business’s success. Protecting, policing, and enforcing those trademark rights are key.

The USPTO is charged with ensuring that no trademarks confusingly similar to one being considered are listed on the national “Registers” at the USPTO. Trademark Registrations offer significant rights for enforcing trademarks and the USPTO is charged with removing marks which inappropriately “crowd” the Register, and should not be there. Third parties have the right to object to the registration of a trademark if they feel that they would be unlawfully damaged by that registration.

Likewise, trademark applications may get rejected over a previous, similar registration, but that prior registration might not be used any longer, shouldn’t have the scope or breadth being claimed, or may be otherwise invalid. An Applicant can then file a proceeding to remove the prior, similar registration.

When one of these potential conflicts arise, the quasi-judicial arm of the USPTO, the Trademark Trial & Appeal Board (TTAB), is empowered to decide:

(1) oppositions to the registration of trademark applications, or

(2) cancellations to existing registrations.

(1) An Opposition of a Pending Trademark Application 

An Opposition Proceeding occurs when one party chooses to oppose or “object to” another party’s trademark application, attempting to stop that application from ever becoming a federally registered trademark.

Oppositions to a pending trademark application can happen for various reasons, including:

  • Likelihood of consumer confusion with an Opposer’s trademark application
  • Assertion of Common Law trademark rights where the Opposer feels that their trademark rights would be damaged by the pending registration.
(2) A Cancellation of a Registered Trademark

A Petition for Cancellation occurs when a party attempts to cancel the registration of an already registered trademark from the Federal Trademark Register. Cancellations may also be instituted for a variety of reasons, such as:

  • Likelihood of consumer confusion with a mark that has legally stronger common law rights
  •  Non-use of the federally registered trademark
  • There has been a legal Abandonment of the federally registered trademark in the marketplace
Why This Matters

When a federally registered trademark is cancelled, businesses can face significant risks, including, but not limited to:

  • Loss of some statutorily available trademark rights and brand protection
  • Increased vulnerability to competitors
  • Potential brand confusion in the marketplace by similar marks being used
  • Difficulties in, significantly increased costs of, and limitation of available forums for enforcing trademark rights against infringers.
Our Proactive Approach

When a Notice of Opposition or a Petition for Cancellation is filed against your federal trademark rights, you only have a limited time to respond with filings at the TTAB. Otherwise, you risk your trademark application being abandoned or your Trademark Registration being cancelled.

Recognizing the time sensitivity of the issue, SHERMAN IP LLP has developed a fresh initiative to both reach out to businesses and to provide cost effective services and strategies for urgently addressing the controversy.

Business owners are often intimidated by the litigation tenor or the adversarial nature of these proceedings and the anticipated cost and budget of undertaking the entire proceeding. By using SHERMAN IP’s innovative system and this new initiative, our clients can acquire more time to appropriately evaluate where they stand before really deciding whether they want to prosecute the entire proceeding.

Essentially, SHERMAN IP’s innovation allows our client to delay their “real” decision point further in the process while they evaluate the case, the facts and law supporting both their and the other side’s positions, and the opponent’s temperament in approaching the matter.

Oftentimes, parties in these cases quickly take a cooperative approach towards resolution and are able to negotiate a reasonable settlement. A client will not learn about the likelihood of early resolution if they abandon their application or registration at the first sign of controversy. However, that is exactly what happens in many cases when trademark owners quickly abandon their rights because they fear the complexity and cost of navigating the entire proceeding.

SHERMAN IP will now quickly notify owners that a TTAB proceeding has been instituted against them, and engage in a cost-effective analysis of the proceeding. We also will provide a limited cost system of initial responses and filings. Clients can then undertake that “re-imagined” process at a low cost and with limited risk before they decide if they want to pursue the TTAB process through completion.

SHERMAN IP’s goal is to:

  • Inform affected businesses promptly about their trademark status and that a claim has been filed against their federal trademark rights by a third party;
  • Offer expert guidance on the implications of abandonment or cancellation;
  • Develop cost-effective, tailored strategies to address the issues within the Opposition or Cancellation; and
  • Support businesses in maintaining robust brand protection.

As part of this SHERMAN IP initiative, the initial telephone conference evaluating where clients stand is offered FREE OF CHARGE.

What to Expect

If your business received a Notice from the TTAB regarding Cancellation or Opposition, the Trademark Team at SHERMAN IP LLP will be reaching out to you with messages of assistance. These messages are meant to:

  • Explain the specific situation regarding your trademark rights
  • Offer clear, actionable steps to address the notice received from the TTAB
  • Provide an opportunity for SHERMAN IP’s complimentary consultation with one of our expert trademark attorneys

While legal proceedings can seem daunting, they often happen as part of the trademark registration process. Many oppositions/cancellations are successfully overcome with proper legal representation, such as:

  • Negotiating with Opposing Counsel through a simple phone call or Email
  • Amending and/or deleting the Identification of goods/services listed in the application, or
  • Entering into a Consent-to-Use or Co-Existence Agreement with the opponent

In the event, a matter needs to proceed with a full TTAB proceeding, including discovery, motions and trial, clients can then decide to proceed with SHERMAN IP’s more traditional trademark litigation and trial systems, which will also be offered to you with reduced hourly rates. However you decide to proceed, SHERMAN IP’s expert trademark attorneys and staff are here to help you navigate the entire process through its conclusion.

Take advantage of a FREE consultation with one of our expert trademark attorneys today who will evaluate your matter and provide a proposed strategy to proceed.

 

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