USA Law and Practice Contributed by: Keith Medansky, Tamar Duvdevani, Michael Geller, Aislinn Smalling and Kristina Fernandez Mabrie, DLA Piper LLP
5.3 Ability to File an Opposition or Revocation/Cancellation Trade Mark Any person or entity that believes they may be harmed by the registration of a mark may file an opposition or cancellation. The party need not own a trade mark registration or common law right, as long as it has a “legitimate interest” beyond that of an interloper. A party domiciled in the US may represent itself before the TTAB or hire an attorney. An entity domiciled outside the US must be represented by a US attorney. The cost of an opposition/cancellation varies but can be very expensive. While proceedings are more limited than federal litigation, such actions go forward as they would in federal court with pre-trial and trial issues. See 5.4 Opposition or 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 conference to discuss the scope of discovery, confidentiality issues and settlement. The parties exchange initial disclosures identify - ing individuals likely to have relevant information and description of categories of documents rel - evant in the case. Discovery permits a party to seek non-privileged information and documents relevant to a claim Revocation/Cancellation Procedure . 5.4 Opposition or Revocation/ Cancellation Procedure Trade Mark
or defence or reasonably calculated to lead to the discovery of relevant information (eg, docu - ments, 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 examination (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 summary judgment in which the TTAB must decide whether, 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 depositions, docu - ments, discovery responses, etc. The parties have an opportunity to submit written arguments 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 regis - tration as a counterclaim in litigation.
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