Trademark Opposition and Cancellation Proceedings at the Trademark Opposition and Cancellation Proceedings

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    Presenting a live 90-minute webinar with interactive Q&A

    Trademark Opposition and

    Cancellation Proceedings at the TTAB

    Today’s faculty features:

    12pm Eastern | 11am Central | 10am Mountain | 9am Pacific

    TUESDAY, DECEMBER 12, 2017

    Stephen R. Baird, Shareholder, Winthrop & Weinstine, Minneapolis

    Jonathan Hudis, Partner, Quarles & Brady, Washington, D.C.

    Linda K. McLeod, Partner, Kelly IP, Washington, D.C.

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  • 5

    Linda McLeod

  • Effective Date: January 14, 2017

    • Miscellaneous Changes to Trademark Trial and

    Appeal Board Rules of Practice, 81 Fed. Reg.

    69950 (Oct. 7, 2016) (codified 37 C.F.R. pt. 2).

    – Effective to all newly filed and pending TTAB

    cases as of January 14, 2017.

    6

  • ESTTA Filing Required

    • All submissions must be filed through ESTTA,

    except in exceptional circumstances or

    technical difficulties.

    (§§ 2.101, 2.102, 2.106, 2.111, 2.114, 2.121,

    2.123, 2.126, 2.190 and 2.191).

    7

  • ESTTA Filing Required • EOT, NOO, Petition to Cancel, and Answers filed on paper

    must be accompanied by petition to Director and fee,

    including verified facts showing that extraordinary

    circumstances or technical difficulties exist. (§§ 2.101(b)(2);

    2.102(a)(1); 2.111(c)(2); 2.114(b)(1); 2.146; 81 Fed. Reg. at

    69966)).

    • Paper filings not accompanied by petition will not be

    considered. (81 Fed. Reg. at 69966).

    • All other filings on paper before TTAB must include specific

    facts detailing inability to file by ESTTA, rather than mere

    conclusory statements.

    • Paper filings accepted unless TTAB indicates otherwise.

    8

  • ESTTA Filing Required

    • What constitutes exceptional circumstances or

    technical difficulties?

    – “technical problems at the filer’s location or with

    the filer’s systems….”

    – “impact of technical problems varies depending on

    the specific facts….”

    – “the assessment [of extraordinary circumstances]

    would depend on the specific facts….”

    – “address particular situations on a case-by-case

    basis as they arise….” (81 Fed. Reg. at 69966-

    67).

    9

  • Paper Filing - Technical Problems

    • ESTTA is unavailable (81 Fed. Reg. at 69966)

    – USPTO will cross-check time and duration of any

    asserted ESTTA outage to confirm unavailability

    – Check USPTO System Status page/TTAB Outage

    page

    • Technical problems at ESTTA filer’s end

    – Must describe problem in detail

    – DFC Expo v. Coyle, 121 USPQ2d 1903 (TTAB

    2017) (App. #87086860) (Unsuccessful paper filing).

    10

  • DFC Expo v. Coyle, 121 USPQ2d 1903 (TTAB 2017)

    • Potential Opposer - technical problems

    • February 6, 2017, NOO Deadline

    • February 6, 2017, Potential Opposer filed NOO in paper

    with cover letter, but without Petition to Director or Fee

    • February 9, 2017, NOO paper received by USPTO

    • Untimely and improper paper NOO rejected by TTAB

    11

  • Paper Filing – Extraordinary Circumstances

    • Detailed facts and accompanying evidence

    – Disasters

     Fire

     Hurricanes

     Snowstorms

    – Extended power outages

    – Medical emergencies

    – TTAB/Director cannot waive or suspend statutory

    deadlines or requirements of Trademark Act

    12

  • EOT & NOO Against 66(a) Applications

    • EOT & NOO against 66(a) Madrid application

    must be filed through ESTTA, with no

    exceptions. (§ 2.101(b)(3); § 2.102(a)(1)).

    – Hunt Control Systems Inc. v. Koninklijke Philips

    Electronics N.V., 98 USPQ2d 1558 (TTAB

    2011).

    13

  • TTAB to Serve Complaint

    • OPPOSITION served on attorney, domestic

    representative, or applicant (if no attorney or

    domestic representative). (§ 2.105(c)(1)-(3)).

    – By email or correspondence address of record

    • CANCELLATION served on the party shown by the

    records of the Office to be the current owner of the

    registration(s) sought to be cancelled or domestic

    representative. (§ 2.113(c)(1)-(2)).

    – By email or correspondence address of record

    14

  • TTAB Institution Notice

    • Web link or Web address to access the

    electronic proceeding record, constitutes

    service of complaint. (§§ 2.105(a); 2.113(a)).

    • Undeliverable Notice = Notice in Official

    Gazette. (§ 2.118).

    15

  • Content and Amending NOO

    • ESTTA requires opposer to select relevant grounds

    for opposition. The required accompanying

    statement (the complaint) supports and explains

    the grounds for oppositions against applications

    under Sections 1 and 44. (§ 2.104(a) and (c))

    • NOO against Section 66(a) Madrid application is

    limited to the goods, services, and grounds set forth

    in the ESTTA cover sheet. (§ 2.107(a) and (b)).

    16

  • Content and Amending NOO

    • Opposition against Section1 and 44 applications

    cannot be amended to add goods or services

    opposed, or to add joint opposer after the close of

    the time period for filing an opposition, including

    any extension of time. (§ 2.107(a) and (b)).

    – Motion to amend to add grounds can be filed under Fed. R. Civ. P. 15.

    • Opposition against Section 66(a) application cannot

    be amended to add grounds, goods or services, or to

    add a joint opposer after filing. (§ 2.107(a) and (b)).

    17

  • Content of Petition to Cancel

    • Petition to cancel must… “indicate, to the best of

    petitioner’s knowledge, the name and address, and

    a current email address(es), of the current owner of

    the registration.” (§ 2.112(a)).

    • TTAB encourages plaintiffs to provide information

    about any new owner of the registration, domestic

    representatives, and current contact information for

    attorneys, and any contact information for the

    designated representative for registrations under

    66(a) of the Act.

    18

  • Pleaded Registration Issues

    • Pleaded registration(s) received in evidence and made of record if NOO or petition to cancel accompanied by:

    – Original or photocopy of registration prepared and issued by Office showing current status and title.

    −Current copy of information from the electronic database records of the Office showing current status and title. (§ 2.122(d)(1)). −Photocopy of registration attached to complaint insufficient. See

    Sterling Jewelers Inc. v. Romance & Co. (TTAB 2014)

    −Entering registration numbers in ESTTA alone