Preparing and serving Pretrial Disclosures on the opposing party is required in every trademark opposition or trademark cancellation proceeding that either (1) has not been settled by the parties after the discovery period has closed, or (2) has not been decided by the Trademark Trial and Appeal Board (TTAB) prior to the deadline for serving Pretrial Disclosures. The deadline set by the TTAB for serving them is about two weeks before the opening of a party’s 30-day trial period.
Preparing and serving Initial Disclosures on the opposing party is one of the first things you must do in a trademark opposition or trademark cancellation proceeding. The deadline set by the Trademark Trial and Appeal Board (TTAB) for serving Initial Disclosures is generally about a month after the deadline for participating in the discovery conference. However, the Initial Disclosures deadline can quite easily be extended through mutual agreement between the parties and approval by the TTAB. In fact, the deadline is often extended multiple times because the parties might be engaged in ongoing negotiations to amicably resolve or settle the opposition/cancellation.
The discovery conference is the first thing the parties must do in a trademark cancellation after the answer is filed. The Trademark Trial and Appeal Board (TTAB) requires that the parties talk about particular matters concerning the cancellation before the discovery period opens. The parties are permitted to conduct the discovery conference in-person, but it’s typically done over the telephone for the sake of convenience. Although the TTAB doesn’t usually participate in the conference, either party may ask that a TTAB interlocutory attorney assist in scheduling and guiding the conference. This could be especially helpful if at least one of the parties has not retained an attorney.
The entire cost of a trademark cancellation can sometimes be minimal and affordable. Other times, it can be ridiculously expensive and prohibitive. Now, you’re probably wondering how that could possibly be the case. Well, the reason is because there are countless factors that greatly impact the cost of pursuing or defending a trademark cancellation. For example:
Although you’re certainly in control of some of these factors, many of them you have little or no control over. And when you don’t have control over the proceeding, the ability to calculate the total cost of a trademark cancellation can quickly become an exercise in futility.
If you’ve stumbled across this article, you probably find yourself needing to answer a petition for cancellation that’s been filed against your trademark registration. As you may know, a trademark cancellation is filed with the Trademark Trial and Appeal Board (TTAB) for the purpose of challenging the continued federal registration of your trademark. Unless you have legal grounds for filing a motion to dismiss the cancellation (which is pretty rare), the first thing you’ll need to do after the TTAB institutes the cancellation proceeding is to draft and submit an answer.
