Months or years ago, you experienced the satisfaction and relief of obtaining a federal registration of your trademark. Now someone is asking the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board to take that away from you.
The aim of this paper is to help you through the process of responding to a petition to cancel your trademark registration. We believe that knowledge is power and we want you to understand how these suits typically play out before the Trademark Trial and Appeal Board. We also think you should be prepared for the challenges that you are going to encounter as you or your lawyers respond to the demands of the Board and the party that filed the cancellation action. You should also get an idea when there may be an opportunity for you to ask the court to dispose of the case. Finally, we discuss when it might logically make sense to reach out to the other side and explore settling the matter.
As you know, registering your trademarks can give you valuable practical and legal advantages. Practically, a registration goes a long way toward dissuading big companies from adopting an identical or similar mark for goods or services like yours. Sophisticated companies hire lawyers to search the USPTO’s records for similar marks before deciding to adopt a mark and sink thousands or millions of dollars on marketing campaigns based around the mark. By registering your mark, a big company’s lawyers will find your registration and they will advise their client to use a different mark. If you have already have a registration, the USPTO will cite your mark in a likelihood-‐of-‐confusion objection and refuse to register the company’s mark. So the lawyer will advise the company to use a different mark, one they can register with the USPTO.
Legally, a registration, gives you the right to recover attorneys’ fees, should you need to sue an infringer or counterfeiter. Then, five years after registration, several issues become incontestable. No one can claim your mark is merely descriptive or primarily geographically descriptive—and therefore a weak mark entitled to little legal protection. Others can’t claim in a court case that your mark is likely to cause confusion with their registered mark. And no one can claim in a lawsuit that your mark is primarily a last name, immoral, or a state flag or insignia—none of which can be registered as trademarks.
Cancellation actions begin with the other side figuring out a way to either obtain their own registration for a mark they use or want to use or a way to keep you from claiming trademark rights in a word, design, or a combination of words and design elements. For example, you’ve registered ACME for bicycles. But some one else also wants to use ACME as a mark for bikes. They won’t be able to register their mark unless they can cancel your registration.
First, their attorneys will look into who used their marks first. Regardless of who first filed a trademark application, it’s the first party to use the mark in commerce who has superior rights. (But an exception to this rule is when one files an intent-‐to-‐use application. That filing date sets a priority date, which will give them priority over someone who later starts using the mark.)
Second, their attorneys will explore whether your mark shouldn’t have been registered in the first place. Is the mark generic for the goods or services listed in the application? The other side will look into whether the examining attorney failed to catch this issue. Is the mark primarily geographically descriptive? Perhaps someone wants to use a mark including a geographically descriptive term, such as Napa for wine, and is concerned about you later suing them for infringement over their use of the term. Did your application list the wrong party or business entity? There are over fifteen grounds to challenge a registration and rest assured that the other side’s attorneys will look into every one.
Third, the other side’s attorneys will closely examine you registration and see if you’re really using your mark in connection with all the good or services listed in the registration. They may claim you’ve abandoned the registration because you stopped using the mark in connection with all of the goods or services listed in the registration. Or they may seek to partially cancel your registration, claiming you never used or you stopped using your mark in connection with some of the goods or services listed in your registration. If the other side has a pending application, they will claim that by partially cancelling your registration, their application may overcome a likelihood-‐of-‐confusion objection.
When you receive the petition for cancellation and the first notice from the Board, it triggers an important obligation: you must calendar the date when a response is due and prevent the Board from entering your default. A default can lead to an automatic cancellation of your registration and can be entered if you do not formally respond to the petition by the 40-‐day deadline set by the Board.
A word about choosing a lawyer. Trademark registrants often look to the lawyer who faithfully assisted them in handling the trademark application. This may not be wise, depending on whether the lawyer has experience litigating matters before the Board. We recommend interviewing alternative counsel. It is also wise to ask for an estimate of the fees and expenses that are contemplated, understanding that many factors can impact the costs of handling a cancellation action. Many law firms, including the Law Offices of Derek A. Simpson, are pleased to discuss alternative fee arrangements, including flat fees or performance-‐based fees, to help manage expenses and make them more predictable or bring them in line with your business objectives.
At this stage, it may also be necessary to search for emails, invoices, marketing materials, earlier versions of your website, and other documents regarding the issues raised by the cancellation action. If you’re a large organization, a “litigation hold” memo may be necessary, instructing certain employees to preserve documents concerning the subject of the action. Preserving these documents can be crucial to defending an action, and a hold that is followed will help protect you against being criticized or punished by the Board for failing to preserve documents that could be evidence. If followed, the instructions in the hold will help ensure these documents are preserved in the event the company periodically purges emails and other files from its servers.
Depending on the nature of the claim in the petition, your lawyers will prepare and file a response. If the petition is insufficient in some crucial aspect, they may file a challenge to the petition and ask the Board to review it in light of the relevant law.
Or, if the petition is adequate, your lawyers will file a response called an “answer,” which admits or denies the allegations in the petition. The answer also identifies known “defenses” you expect to rely on. If you prove a defense, it could win the case for you.
Once the petition and the answer have been filed, the “discovery” phase of the action typically begins. “Discovery” refers to both parties’ chance to gather the information and documents necessary to prove or rebut the facts relevant to the case. Responding to discovery can be tedious, expensive, and time-‐consuming. Although it can shape the outcome of a case, some peopleand companies involved in Board actions try to cut corners in responding to discovery. This is a huge mistake.
For instance, a common discovery method is a request for production of documents. Attorney representing the other side send “requests” for certain categories of documents. Your attorney will work with you or contacts within your company to find the requested materials or conclude that they are not in your possession. The responsive documents are copied, numbered, and provided to the other side. If any of the materials being sought would infringe on your privacy rights or reveal company secrets, they may be protected from disclosure outside the action by a “protective order.”
Trouble often occurs when initial efforts to find documents are half-‐ hearted. Exhaustive searches can be tedious, and they may have to include electronic storage devices such as servers, workstations, cell phones, and cloud-‐based storage services. If this task is performed by people unfamiliar with the issues relevant to the action, they may fail to grasp the significance of certain documents. This can result in game-‐changing or smoking-‐gun documents being discovered during searches much later in the action. This is almost always a bad development.
Few things frustrate clients more than learning late in the case that an earlier winnable case has suddenly “gone bad” based on a damaging document found recently, where a more diligent search would have uncovered the document at the start of discovery. There is also the risk that the Board will learn of the delay and presume you were trying to hide something, possibly leading to sanctions. So, it’s wise to devote significant attention and resources to searching and accurately responding to document requests the first time.
Another common discovery tool are “depositions.” They are question-‐ and-‐answer sessions that are recorded by a court reporter and preserved in a booklet for later use as evidence. Here again, because of the drain on time and resources associated with properly preparing for a deposition, some parties are tempted to prepare only minimally. This would be another major mistake. Cases that ultimately proceed to trial can be won or lost solely on the testimony of a key or even minor witness in deposition. Effectively responding to deposition questions is an art and seasoned trial attorneys usually agree that every hour spent preparing a witness for his or her deposition is an hour well spent.
Additional discovery methods include interrogatories (written questions) and requests for admission. Your lawyer usually drafts responses to these discovery requests. But he or she must receive your cooperation and candid information to ensure the responses are complete and correct. And your cooperation must be timely. Failing to respond to requests for admissions timely results in the Board automatically deeming you to have admitted the matter in the request.
While the discovery phase of any legal action can seem torturous, it is crucial to your defense that your attorneys receive full cooperation from you and your company’s relevant departments.
Like other lawsuits, cancellation actions eventually end in settlement, “summary judgment,” or a decision following trial. Your attorney may ask the Board to throw out the lawsuit using a procedure called summary judgment. After the parties have completed most of the discovery, you may file a written “motion,” which asks the court to consider the evidence and grant a decision in your favor. Attorneys sometimes describe this process as a “trial on paper,” and believe the expense of preparing such a motion is justified because, if successful, summary judgment reduces the costs and eliminates the risk of taking the action all the way through decision.
In the context of cancellation actions before the Board, motions for summary judgment are typically supported by declarations and deposition testimony of key witnesses. Your lawyer will work with the witnesses themselves to draft declarations that are both factually accurate and tend to prove the facts of consequence to the case.
Unfortunately, the Board will deny motions for summary judgment if it finds that even a single material issue of fact is contested by the other side’s evidence. This means that the Board won’t grant summary judgment in he-‐ said, she-‐said situations.
Due to the cost of litigating a case through decision, many cases resolve through settlement. Though money is not on the table in Board actions, there are other deal points for the parties to discuss. Perhaps the other side has applied to register a mark that isn’t highly similar to yours. Or the other side’s listed goods or services may be only tangentially related to yours. But an overzealous examining attorney at the USPTO is refusing registration to the other side based on your registration. In those circumstances, the other side may merely want you to sign a document called a “consent agreement,” stating that you don’t object to their application. If you conclude the other side’s use of the mark won’t impact your business, you may decide to sign a consent agreement, in exchange for the other side dismissing the action. That way, you save on litigation costs and maintain your registration. Or, you may agree to amend your registration to limit your description of goods and services to reflect more accurately the way in which you’re using the mark. For example, you use the mark for clothing but not shoes. Amending your application to remove shoes from the description of goods, may allow the other side’s application to overcome a likelihood-‐of-‐confusion objection. Similarly, you may restrict your registration to a particular trade channel, to allow the other side’s application to proceed to registration. If you truly only sell your goods in retail stores and websites geared toward a niche market and don’t anticipate changing your trade channels, restricting your registration this way may not hurt your business and it will save you substantial litigation expenses. Moreover, you may consider pushing the other side to reimburse you for your attorneys’ fees involved in cooperating with the other side’s request for a consent agreement.
While settlement discussions can occur and be meaningful anytime, there are a few key opportunities when negotiations may prove particularly fruitful. The first is at the very beginning, because neither party has yet invested significant money in pursuing or defending the case. At this point, however, the parties (or their lawyers) may not know or appreciate the weaknesses in their case. Thus, negotiations at this stage can suffer from either party or both parties’ overconfidence.
A second settlement opportunity can arise after the discovery-‐phase depositions of you and the other side. If you’re sufficiently prepared and perform admirably, the other side may appreciate for the first time the challenges in pursuing the action. Or, your lawyer may elicit testimony that reveals problems with the other side’s case. The opposite may occur too. Either way the deposition testimony breaks, it may lead to you and the other side agreeing to a settlement.
In Board actions, there is no live testimony, presented in a courtroom with Perry-‐Mason moments. Instead, the trial-‐phase of a Board action consists of each party having the opportunity to take a second round of trial-‐ phase depositions and then file the deposition transcripts and other documentary evidence with the Board. Finally, the parties file briefs, arguing their cases.
Several months later, the board issues its decision. If the other side convinces the Board that it proved the grounds for its cancellation action, the Board will order your registration cancelled or partially cancelled. On the other hand, if the other side fails to meet its burden of proof, your registration will stand and, if the other side has a pending trademark application, it will likely be rejected.
Cancellation proceedings before the USPTO’s Trademark Trial and Appeal Board can be a bewildering experience, particularly for an individual or small company. Trademark owners and their managers and employees can find themselves pulled in many directions as lawyers work to craft an effective defense or settle on favorable terms. Hopefully, this paper provides a useful roadmap of the process.
The Law Offices of Derek A. Simpson helps trademark owners analyze and resolve matters before the Trademark Trial and Appeal Board in a logical and cost-‐effective manner. Reach us at (213) 293-‐9401 or at derek@dsimpsonlegal.com.
This Guide is intended as a value-‐added service to our clients and friends. We hope you find it helpful to your business. Please recognize that this does not constitute legal advice. Rules of certain courts may consider this advertising and require us to advise you of such designation.