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.
Filing the Notice of Appeal with the Trademark Trial and Appeal Board (TTAB) is the very first step in the trademark appeal process. You may only file the Notice of Appeal after an examining attorney at the United States Patent and Trademark Office (USPTO) issues a final office action indicating that the refusal to register your trademark has been made final. The purpose of filing the Notice of Appeal is to preserve your right to attempt to convince the TTAB (through the submission of competent evidence and persuasive arguments) that the examining attorney’s final refusal to register your mark is improper and should be overturned. In other words, it informs the TTAB of your intent to challenge the examining attorney’s reasons for rejecting your trademark application.
A provisional refusal of protection is issued by the United States Patent and Trademark Office (USPTO) when a trademark for which an extension of protection is sought doesn’t meet the eligibility requirements for registration on the Principal Register. A provisional refusal is also sometimes referred to as a “nonfinal office action” and is essentially identical to a trademark office action that would be issued by the USPTO in response to a trademark application not filed in accordance with the Madrid Protocol. In other words, “provisional refusal” is just a fancy name given to an office action when a mark is the subject of an extension of protection under Section 66(a) rather than the subject of a trademark application filed directly with the USPTO under Section 1(a), Section 1(b), Section 44(d), or Section 44(e).
A registered extension of protection of a trademark in the United States is a trademark that is registered with the United States Patent and Trademark Office (USPTO) under Section 66(a) in accordance with the Madrid Protocol. The registered extension of protection is treated almost identically to a trademark that is registered under Section 1(a) (use in commerce) or Section 44(e) (U.S. registration based on a foreign trademark registration) with only a few very minor exceptions. In other words, essentially all of the benefits and protections afforded a trademark registered under Section 1(a) or Section 44(e) equally apply to a trademark registered under Section 66(a).
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.
