What is a trademark opposition at the TTAB (video)

A trademark opposition is a formal dispute filed against a trademark application at the USPTO. Former USPTO examiner Erik Pelton discusses important details on these disputes in this video and explains the value of experience counsel.

 

 

For more about trademark oppositions and my services, visit my website.

 

4imprint

 

Trademark Trial and Appeal Board docket calendar calculator

The docket of a TTAB Opposition or Cancellation is complicated. There are many dates and deadlines involved, and they are connected to each other. Some are listed in the institution order, but several key days are not.

*Disclaimer: This is a guideline only. As of November 2018. Calculate and check all docket dates on your own, and compare with TTAB’s initial docketing order, and the current rules, for any particular proceeding(s). Also note that counter-claims will add certain deadlines and periods not in this list.

TTAB Docket Event Days from Beginning Date of TTAB Filing Days from Previous TTAB Docket Event
Opposition / Cancellation Filed 0
Answer Due 40 40
Deadline to Request Board Participation in Discovery Conference 60 20
Discovery Conference Deadline 70 10
Discovery Opens 70
Deadline to File A Motion for Sanctions Re: Discovery Conference 99 29
Initial Disclosures Due 100 1
Deadline to Serve Discovery – 31 days prior to close of Discovery period 219 119
Expert Disclosures Due 220 1
Discovery Closes 250 30
Rebuttal Expert Disclosures Due 250
Deadline to File Motion to Compel Expert Disclosures 250
Plaintiff’s Pre-Trial Disclosures Due 295 45
Deadline For filing MSJ or Motion to Compel Discovery 309 14
Plaintiff’s Testimony Period Opens 310 1
Plaintiff’s Testimony Period Closes 340 30
Defendant’s Pre-Trial Disclosures Due 355 15
Defendant’s Testimony Opens 370 15
Defendant’s Testimony Closes 400 30
Plaintiff’s Rebuttal Disclosures Due 415 15
Plaintiff’s Rebuttal Period Opens 430 15
Plaintiff’s Rebuttal Period Closes 445 15
Plaintiff’s Trial Brief Due 505 60
Defendant’s Trial Brief Due 535 30
Plaintiff’s Rebuttal Trial Brief Due 550 15
Deadline to Request Oral Hearing 560 10

A very useful tool for calculated what date these deadlines fall on is timeanddate.com.

The docket calculator is just one of the many items (more than 100 samples docs) from Trademark Trial and Appeal Board (TTAB) Proceedings, including pleadings, motions, briefs, discovery, resolutions, and much more, included in my TTAB WorkbookClick here to purchase workbook ($597).

In addition, the 2.5 hours TTABulous course features Erik Pelton sharing experience from nearly 20 years and dozens of TTAB cases. Click here for more information and a syllabusClick here to purchase replay ($497).

Pelton_TTAB_Cover (1).jpg

 

What is a Trademark Opposition (podcast)

In this podcast, attorney Erik M Pelton discusses the Trademark Opposition process at the USPTO’s Trademark Trial and Appeal Board.

Listen to this podcast and discover what it is and how you should you handle it.

Play: What is a trademark opposition?

For more of the Tricks of the Trade(mark) podcast, click here.

Pelton_iTunesTricks_1

New TTAB Workbook now available

I have recently published a workbook featuring more than 100 sample documents from Trademark Trial and Appeal Board (TTAB) Proceedings, including pleadings, motions, briefs, discovery, resolutions, and much more. I am not aware of any other resource like it. These template are a useful resource for any practitioner, especially if handling one of your your first TTAB cases.

Pelton_TTAB_Cover (1).jpg

TTABulous webinar replay now available

Trademark oppositions and cancellations are quite different from applications and office actions, even if they share much of the same body of law. The procedures, deadlines, dockets, rules, and writing styles are all different. If the very thought of a Notice of Opposition or Petition for Cancellation makes you nervous, this is the class for you. Whether you have never handled a TTAB case, or have handled a few but would like to learn the process in more depth, this course will deliver including, templates for pleadings, motions, and discovery.

The 2.5 hours TTABulous course features Erik Pelton sharing experience from nearly 20 years and dozens of TTAB cases.

  • Click here for more information and a syllabus.
  • Click here to purchase replay ($497)
  • Click here to purchase workbook ($597) – This unique TTAB workbook features more than 150 templates and samples covering pleadings, motions, discovery, testimony, case resolution, and much more. (You can use image of the workbook cover please – attached)

TTABulous2

Testimonials for Erik and Sonia’s courses:

  • The course was great and came at the right time for me as I am adding more and more trademark work to my core patent practice. The material answered directly some simple practical questions I had – e.g., how to retrieve only registered live marks in a search and downloading multiple records for evidence – and also provided valuable depth to legal arguments for traversing refusals. Kudos to Sonia and Erik! ” — BETSY DOWD
  • I just wanted to reach out and say thanks. I purchased your Office Action Boot Camp. You and Erik absolutely crushed it. The info was so helpful and actionable.”  — JOEY VITALE

Anatomy of a ‘Motion for Relief from Judgment’ at TTAB

Some unique circumstances led to our recent filing (publicly available) of this “Request for Reconsideration & Motion for Relief from Judgment.” Prior counsel for the Applicant was being investigated by the Office of Enrollment and Discipline at the time of the key activities in the case, namely responding to a motion for summary judgment.

See below for more details and the request for relief from the TTAB pursuant to Fed. R. Civ. Pr. 60(b).

ttabvue-91211392-OPP-51

The full history of the matter is available here:

http://ttabvue.uspto.gov/ttabvue/v?pno=91211392&pty=OPP

%d bloggers like this: