OFFICE ACTIONS
As part of the APPLICATION FOR REGISTRATION, if the Examiner identifies any issue with the application, they will issue an OFFICE ACTION in the form of letter, explaining the Examiner's objections.
To overcome the Office Action, the Examiner may require technical amendments or may issue an outright refusal to register your trademark.
Technical office actions can involved clarifying or modifying additional information provided by the applicant - including ownership, description of the mark, goods/services or the legal basis for the application. Substantive objections can challenge whether your mark meets the legal definitions of a protectable trademark or find that there is a substantial likelihood of confusion with a previously filed application or registration.
We evaluate the Examiner's objection and, where possible, prepare a response to overcome the objection. The Examiner will review our response and either remove the objection and allow our application to move forward to Publication. Alternatively, the Examiner may issue a Final Office Action which, if not appealed, will prevent your application from moving forward to registration.
In the event of an OFFICE ACTION, you must file a response or the application will be considered "abandoned" and your trademark will be not be registered.
CEASE & DESIST
A third-party may send you a written communication, claiming that you are infringing on their trademark rights. Typically, the third-party demands you stop using your trademark and threatens legal action if you do not agree. This letter typically contain detailed facts describing the basis for their claim. In addition to trying to immediately get you to stop the use of your trademark, the purpose of their letter is to provide you with official notice of your infringement. Under trademark law, if you ignore this written request and continue to use your trademark, the third-party will likely claim your infringement 'willful' and try seek a monetary award against you in federal court.
Failure to respond to a CEASE & DESIST letter may place you at risk of significant monetary damages and loss of your trademark rights.
OPPOSITION & CANCELLATION PROCEEDINGS
These actions are filed with the U.S. Trial Trademark and Appeal Board (TTAB). The TTAB is a specialized 'court' within the United States Patent and Trademark Office for resolving certain trademark disputes. Opposition and Cancellation proceedings are similar to court actions, with each side making arguments and TTAB judges making decision.
Responding: If you already own a trademark registration or have a pending application, you may receive a Petition to Cancel or Notice of Opposition. These actions are initiated by a third party to try to cancel your existing registration or block your pending application. The third party may raise a number of legal claims, including that their prior use or registration of a similar mark creates a substantial likelihood of confusion as to the source of the goods or services. If you fail to respond to an Opposition or Cancellation proceeding, you will likely lose valuable trademark rights.
Petitioning: You may need to initiate a TTAB proceeding against a third party. Our MONITORING SERVICE may alert you to the existence of a conflicting mark or pending application that threatens your registered trademark rights. Or an Examiner may issue an OFFICE ACTION, citing a third party's registration or pending application that blocks your pending APPLICATION FOR REGISTRATION, . In these, and other circumstances, it may make sense to challenge a third-party's registration or application to clear the way for your APPLICATION FOR REGISTRATION or to preserve your registration rights.
It is important to note that recent changes in the law have increased the importance of TTAB proceedings. While TTAB decisions determine registration rights,recent federal court decisions have held that TTAB findings about non-registration issues carry more weight than in the past. Trademark owners need to pay close attention to proceedings before the TTAB to ensure maximum protection of their trademark rights.
LETTERS OF PROTEST
A Letter of Protest can be used by a third-party trademark owner to attempt to prevent a registration from moving forward before the U.S. Patent & Trademark Office. A Letter of Protest provides evidence to the PTO raising issues or challenging a pending APPLICATION FOR REGISTRATION prior to publication. The grounds raised may include: challenging the mark as being descriptive or generic; a likelihood of confusion with prior U.S. trademark registrations or applications; pending litigation; or inclusion of the the third-party's mark has been included in the description of goods and services of another's mark. Letters of Protest are a lower cost way of challenging a pending trademark application and an important to tool to assist in trademark enforcement.
LITIGATION/ ENFORCEMENT OF RIGHTS
While the U.S. Patent & Trademark Office hold jurisdiction over certain registration issues, other trademark litigation is brought in federal court. In federal court, litigants can request a determination of substantive trademark rights, injunctive relief, such as a court order prohibiting a defendant from using a certain trademark, and money damages.
We push to negotiate and settle disputes where possible. Where necessary, we prosecute and defend litigation in federal and state court, and work with additional local/additional counsel when appropriate.
Contact us for more information.
Use the form below to contact us regarding an office action, TTAB proceeding, Cease & Desist or litigation matter. You may also email or call us to make an appointment.