USA Law and Practice Contributed by: Keith Medansky, Tamar Duvdevani, Michael Geller, Aislinn Smalling and Kristina Fernandez Mabrie, DLA Piper LLP
5.4 Opposition or Revocation/Cancellation Procedure Trade Mark To commence an opposition, the opposer must timely file a Notice of Opposition. The applicant has 40 days to answer or otherwise plead. If a counterclaim or motion to dismiss is filed, the opposer will have time to respond. The parties participate in an initial discovery confer - ence to discuss the scope of discovery, confidentiality issues and settlement. The parties exchange initial disclosures identifying individuals likely to have relevant information and description of categories of documents relevant in the case. Discovery permits a party to seek non-privileged infor - mation and documents relevant to a claim or defence or reasonably calculated to lead to the discovery of relevant information (eg, documents, emails, letters, trade mark files, business plans, financial information, etc). Responding to discovery may sometimes require the assistance of electronic discovery consultants to identify responsive emails and other documents on computer servers. Depositions involve an oral exami - nation (recorded by a stenographer) under penalty of perjury. Discovery may also include expert witnesses, which often includes a likelihood of confusion or acquired distinctiveness market survey. The parties will have a deadline by which they must disclose the expert discovery to the other side. After discovery, either party may file a motion for sum - mary judgment in which the TTAB must decide wheth - er, considering all facts in the light most favourable to the non-moving party, there is no dispute of material fact. This can resolve some or all of the issues in the case, depending on the scope of the motion. If summary judgment does not resolve all the issues, the parties proceed to “trial” before the TTAB, which follows a period of filings, including notices of reliance which outline the evidence relied on in the case, and involves submitting evidence through written depo -
sitions, documents, discovery responses, etc. The parties have an opportunity to submit written argu - ments about the law and facts of the case, and there is an opportunity for oral argument. The TTAB will then make a decision. Cancellations can be brought to before the TTAB. The procedure is generally the same. A party may also seek the cancellation of a registration as a counter - claim in litigation. A partial cancellation is possible. The petitioner may either elect to only challenge the registration as to some of the goods or services, or the TTAB or court may find in favour of cancellation for only some of the goods or services such as where the registrant is still using the mark for some goods but has abandoned the mark as to others. Copyright The USCO can cancel copyright registrations sua sponte where it discovers material errors in the reg - istrations or upon request from the party listed as the copyright owner in the registration certificate (or its agent). The USCO, however, does not conduct adversarial cancellation proceedings and will not cancel a regis - tration based on an adverse claim by a third party. The USCO encourages parties to address disputes over the ownership of a copyright in court. In general, a party can challenge the validity of a copyright registration in federal court as a defence to an infringement claim or via a declaratory judg - ment action. That said, only the USCO can cancel a copyright registration. If the claim is successful, the court directs that party to cancel the registration at the USCO. 5.5 Legal Remedies Against the Decision of the Trade Mark Office The TTAB only can adjudicate on registrability. It can - not issue injunctions or award damages. In the event that the examiner of a trade mark appli - cation refused registration after a final Office Action, the applicant may file an appeal with the TTAB in
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