If you’ve stumbled across this article, you probably find yourself needing to answer a petition for cancellation that’s been filed against your trademark registration. As you may know, a trademark cancellation is filed with the Trademark Trial and Appeal Board (TTAB) for the purpose of challenging the continued federal registration of your trademark. Unless you have legal grounds for filing a motion to dismiss the cancellation (which is pretty rare), the first thing you’ll need to do after the TTAB institutes the cancellation proceeding is to draft and submit an answer.
If you’re reading this article, chances are you need to answer a trademark opposition that has been filed against your trademark application. As you may already know, a trademark opposition is filed with the Trademark Trial and Appeal Board (TTAB) for the purpose of challenging your right to register your trademark. Unless you have a legitimate legal basis for filing a motion to dismiss the opposition (which is fairly rare), the first step you’ll need to take after the TTAB institutes the opposition proceeding is to prepare and file an answer.
Filing an intent to use trademark application with the United States Patent and Trademark Office (USPTO) under Section 1(b) may be a good option if your trademark is not yet in use in commerce. It’s essentially a way to reserve your right to use a name, logo, or slogan in connection with the advertising and sale of specific products/services. Assuming your intent to use trademark application eventually becomes a trademark registration, all of your rights will date back to the filing date of the application. In other words, filing an intent to use trademark application prevents others from potentially acquiring common law trademark rights in a similar name while your trademark application is going through the registration process.
Filing an extension of time to oppose a trademark application is a relatively easy and inexpensive way to reserve your right to file a trademark opposition. It provides you with more time to carefully consider the cost of a trademark opposition and whether you want to invest your valuable time and money in formally opposing a trademark application. It also gives you time to contact the owner of the trademark application in order to discuss any questions or concerns you may have regarding the trademark or any of the information presented in the trademark application.
The Notice of Allowance is a very important milestone for a trademark application that was filed under Section 1(b) (intent to use). The Notice of Allowance essentially indicates that (1) the United States Patent and Trademark Office (USPTO) approved your application after examination, (2) your application was published for opposition, and (3) a third-party did not prevent the registration of your trademark. Although the Notice of Allowance brings you one step closer to the successful registration of your trademark, it’s critical that you understand what you need to do next in order to complete the registration process.