Trademark Opposition

The trial brief in a trademark opposition or trademark cancellation is each party’s opportunity to discuss the facts of the case and to present its arguments in support of its position.  The Trademark Trial and Appeal Board (TTAB) will carefully read each party’s trial brief and review the evidence the parties submitted during their trial period in making its final decision.  No additional evidence may be filed with the trial brief and the plaintiff may not assert any claims that were not properly pleaded in the notice of opposition or petition for cancellation.  Similarly, the defendant is prohibited from raising any affirmative defenses that were not raised in its answer.

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In a trademark opposition or trademark cancellation, both parties can make certain types of materials part of the evidentiary record by filing them under a notice of reliance.  Each party must file their notices of reliance and associated materials with the Trademark Trial and Appeal Board (TTAB) and serve them on the opposing party during its 30-day trial period.  Neither party is required to file a notice of reliance during its trial period, but because it is a fairly easy and inexpensive way to submit certain evidence in support of their cases, the parties frequently utilize this procedure rather than more cumbersome methods (such as through witness verification during a testimony deposition).

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The trial period is probably the most important and consequential part of a trademark opposition or trademark cancellation (especially for the plaintiff).  It is the period of time during which the parties take the testimony of their witnesses (either orally or in the form of a written affidavit or declaration) and provide to the Trademark Trial and Appeal Board (TTAB) all of their documentary evidence for the TTAB’s review and consideration.  Each party’s trial period begins about two weeks after the deadline for serving its Pretrial Disclosures.

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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.

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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.

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