Trademark Blog

What are Initial Disclosures in a Trademark Opposition or Trademark Cancellation?

Initial Disclosures

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.

What is a Trademark Reexamination Proceeding?

trademark reexamination

A trademark reexamination proceeding is basically a way to alert the United States Patent and Trademark Office (USPTO) that a particular trademark registration should be canceled (either in whole or in part) because the trademark was not in use in commerce as of a certain date. An individual or entity (referred to as the “petitioner”) commences a trademark reexamination by filing a Petition for Reexamination through the Trademark Electronic Application System (TEAS) and paying the government filing fee. A Petition for Reexamination can only be filed against trademarks that are registered under Section 1(a) (use in commerce) and only under the following circumstances:

The trademark registration must be less than five years old (measured from the registration date of the trademark); and

One of the following conditions is met:

If the application was initially filed under Section 1(a), and was never amended to Section 1(b) (intent to use): the mark was not in use in commerce in connection with some or all of the products/services recited in the registration as of the application filing date.
If the application was initially filed under Section 1(b), or was later amended to Section 1(b): the mark was not in use in commerce in connection with some or all of the products/services recited in the registration as of the filing date of the Amendment to Allege Use.
If the application was initially filed under Section 1(b), or was later amended to Section 1(b): the mark was not in use in commerce in connection with some or all of the products/services recited in the registration as of the expiration of the deadline for filing the Statement of Use.

If these circumstances don’t apply, then you might have the option of filing a trademark expungement proceeding or a trademark cancellation against the registration instead.

What is a Trademark Expungement Proceeding?

trademark expungement

A trademark expungement proceeding is essentially a way to inform the United States Patent and Trademark Office (USPTO) that a certain trademark registration should be canceled (either in whole or in part) because the trademark has never been used in commerce. An individual or entity (referred to as the “petitioner”) commences a trademark expungement by filing a Petition for Expungement through the Trademark Electronic Application System (TEAS) and paying the appropriate filing fee. A Petition for Expungement can be filed against any trademark registration (including registered extensions of protection under the Madrid Protocol) so long as the following two conditions are met:

The trademark has never been used in commerce in connection with some or all of the products/services recited in the registration
The trademark registration is between three and ten years old (measured from the registration date of the trademark)

If these two conditions aren’t met, then you may have the option of filing a trademark reexamination proceeding or a trademark cancellation against the registration instead.

What is a Request for an Extension of Time to File a Response to an Office Action?

Request for an Extension of Time to File a Response

It’s extremely common to receive a trademark office action from the United States Patent and Trademark Office (USPTO) after filing a trademark application. You may also receive an office action after filing the Statement of Use or an Amendment to Allege Use. If you don’t file a response that addresses the issues raised in the office action within three months of the office action being issued, then your trademark application will go abandoned.

But what if you can’t file a response by the three-month deadline? What if you need more time to conduct research and to draft an argument to attempt to overcome a major rejection (such as a likelihood of confusion refusal)? Maybe you require some additional time to discuss the office action with the examining attorney in charge of your application? Perhaps you need time to seek the assistance of a skilled and knowledgeable trademark attorney? Whatever the reason, you can file a Request for an Extension of Time to File a Response to the office action.

How Does the US Trademark Application Process Work?

US trademark application

It’s pretty common for clients to ask me about the US trademark application process and what they should expect once their application is filed. Needless to say, the road to registration can be very bumpy at times, more so for applicants who didn’t perform a trademark search or failed to seek an opinion from an experienced trademark attorney regarding the eligibility of their trademark for registration. If you’re thinking about navigating the trademark application process yourself, it’s even more important that you fully understand the entire process to maximize your chances of successful registration with the United States Patent and Trademark Office (USPTO).