Trademark Blog

What is the Discovery Period in a Trademark Opposition or Trademark Cancellation?

Discovery Period

The discovery period in a trademark opposition or trademark cancellation is the time during which each party may request information and documents from the other party. The primary purpose of discovery is to (1) seek relevant information and facts that may be helpful or harmful to each party’s case, (2) obtain most (if not all) of the documents and things that each party may use to support its case during its trial period, and (3) determine which facts are not in dispute so that the matters that must be resolved by the Trademark Trial and Appeal Board (TTAB) at trial are narrowed down.

Oftentimes, the parties in a trademark opposition or cancellation are able to reach a settlement after the discovery period has closed. This is because each party has had the opportunity to review the other party’s evidence and is now in a better position to understand the strengths and weaknesses of their respective cases. In other words, the parties may not want to risk an adverse judgment by the TTAB if the information and documents disclosed during discovery indicate that the TTAB is likely to rule in one way or the other.

What is a Trial Brief in a Trademark Opposition or Trademark Cancellation?

trial brief

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.

What is an Audit of a Trademark Registration?

audit trademark registration

An audit of a trademark registration may occur after the owner of the registration files a trademark registration maintenance or renewal document with the United States Patent and Trademark Office (USPTO). The USPTO may perform an audit to determine whether the mark is actually in use in connection with all of the products and/or services identified in the maintenance or renewal document. The purpose of the USPTO’s audit program is to assess and promote the accuracy and integrity of both the Principal Register and Supplemental Register. In other words, the USPTO wants to ensure that trademark owners are not fraudulently maintaining and renewing their registrations for products and services they are not currently providing in the USA.

What is a Notice of Reliance in a Trademark Opposition or Trademark Cancellation?

notice of reliance

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).

What is the Trial Period in a Trademark Opposition or Trademark Cancellation?

trial period

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.