The United States Trademark Trial and Appeal Board (“TTAB”)
has the authority to determine numerous trademark registration issues,
including whether a trademark is eligible for federal trademark registration
and whether one party’s trademark is entitled to registration over another
party’s trademark based upon priority of use and likelihood of consumer
The TTAB does not have the
authority to award damages for trademark infringement or prevent the use
of an infringing
mark in the marketplace.
In other words, the TTAB decides whether a party or which
party is entitled to trademark registration and thus the trademark rights
conferred by it.
However, the TTAB
cannot stop a third party from infringing your trademark in the
Before spending thousands and potentially hundreds of
thousands of dollars ($300,000 plus) on a dispute before the TTAB aimed at
preventing the ownership of a piece of paper, trademark owners confronted with
the option of opposing or canceling a third party’s trademark registration at
the TTAB should first consider whether the proper forum for the dispute is in
If the subject mark is infringing
your trademark, likely to confuse consumers as to the source of the parties’
respective products, diluting your mark and/or tarnishing the reputation of
your mark and brand, a court action may be the best option.
Furthermore, even if you receive a favorable decision at the
TTAB, that decision may not be recognized in a later court action between the
parties involving the same marks and products.
Accordingly, if you have a pending case or an option for a case at the
TTAB, consider strategy early and whether the end game is to prevent the use of
an infringing mark by the opposing party, receive payment for damages and
possibly get attorneys’ fees or if you are only seeking a limiting agreement
from the opposing party.
Simply preventing the registration of a third party’s mark
may not be the result you need.
the target mark is vulnerable to a trademark registration opposition or
cancellation proceeding at the TTAB, one strategy is to file a complaint with
the TTAB and simultaneously file a complaint in court.
Once the complaint is filed with the court,
file a petition to suspend the case at the TTAB pending the outcome of the
Another strategy is to file
a proceeding at the TTAB and seek settlement whereby the opposing party agrees
to discontinue the use of the infringing mark.
If settlement is not reached quickly, your next step is to consider
whether to suspend the TTAB action and file a court action.
Before any action is taken in a trademark dispute, it is
always best to know what you want before the guns are drawn, the merits of your
case and your strategy. Otherwise, you
just might end up wasting your time, money and resources.