Trademark Blog

What is the Discovery Conference in a Trademark Opposition?

discovery conference

The discovery conference is the first thing the parties must do in a trademark opposition after the answer is filed. The Trademark Trial and Appeal Board (TTAB) requires that the parties discuss specific matters related to the opposition prior to the opening of the discovery period. The discovery conference may be conducted between the parties in-person, but it’s almost always done over the phone. Generally speaking, the TTAB doesn’t participate in the discovery conference. However, one or both of the parties may request that a TTAB representative help facilitate the conference, which could be especially useful if at least one of the parties isn’t represented by an attorney.

What is the Cost of a Trademark Cancellation Proceeding?

cost of trademark cancellation

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:

Whether you’re the petitioner or the registrant
Whether you choose to retain an attorney
Whether the cancellation raises complex or novel issues of law or fact
The number of grounds for cancellation pleaded by the petitioner
The amount of effort and time you’re prepared to invest in the cancellation proceeding
Whether the parties can privately resolve the trademark cancellation and how long it takes to reach a settlement

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.

How Much Does a Trademark Opposition Cost?

trademark opposition cost

The total cost of a trademark opposition can be anywhere from zero dollars to over $100,000. Yes, I know that’s a huge and scary range, but it’s the honest truth. There are many variables that affect the cost of pursuing or defending a trademark opposition, including:

Whether you’re the opposer or the defendant
Whether you hire an attorney or not
The number and complexity of the issues raised in the opposition
The amount of time and effort you’re personally willing to put into pursuing/defending the opposition
The aggressiveness of the parties and/or their attorneys
Whether the trademark opposition can be amicably and quickly settled between the parties in some manner

As you can see, some of these variables you’ll have control over, whereas others you won’t. And that’s what makes estimating trademark opposition costs so frustrating, difficult, and frankly not very reliable.

Can I Trademark a Phrase?

can I trademark a phrase

Potential clients frequently ask me if they can trademark a phrase. Well, whether you can register a phrase with the United States Patent and Trademark Office (USPTO) essentially depends on (1) the nature of the phrase itself, and (2) the manner in which the phrase is used. If the phrase doesn’t indicate the source of your products/services, or doesn’t identify and distinguish your products/services from those offered by your competitors, then it cannot be protected as a trademark. In other words, you cannot trademark a phrase unless it serves a branding purpose (i.e. it functions as a slogan or tagline). If the USPTO determines that your phase fails to function as a trademark, it will send you a trademark office action explaining why your phrase is being refused registration.

How Can I Do a Free Trademark Check Online?

I like to think of a free trademark check as the very first step in the trademark search and clearance process. It provides some basic information that helps determine whether it makes sense to take the next step and conduct a comprehensive federal trademark search to potentially find conflicts, issues, and other problems that could negatively affect the cost, time frame, and ability to successfully register your trademark. Without question, everyone should at least do a quick trademark check before adopting, using, and applying to register a name, phrase, or slogan. I also firmly believe that everyone should do one prior to hiring a trademark attorney. This is because you don’t want to pay a few hundred dollars in legal fees just for your attorney to find an obvious conflict in two minutes that you would have easily found had you first performed a trademark check yourself.