Trademark - TTAB Litigation

TTAB Litigation

In 2007, the rules of practice before the TTAB changed—making its proceedings more like civil litigation, including initial, expert, and pretrial disclosures.  While the rule changes may be a challenge for many firms, Finnegan has a wealth of experience in civil litigation, and we are well prepared to guide our clients through these new rules. 

We have had a substantial practice before the TTAB for decades and typically file or defend as many as 200 new U.S. oppositions and cancellations each year.  We have approximately 300 to 400 active U.S. oppositions and cancellations at any time.  Many of our trademark attorneys have extensive expertise in handling opposition and cancellation proceedings before the TTAB.  Before joining Finnegan in 2002, one of our attorneys had a 10-year career at the PTO, where she held the positions of administrative trademark judge and interlocutory attorney with the TTAB, and examining attorney for the PTO.  As an administrative trademark judge, she presided over opposition and cancellation proceedings and ex parte appeals from final decisions of the PTO.  During this time, she authored more than 100 decisions on the merits and more than 60 summary judgment decisions, and heard over 70 oral arguments and telephone hearings.  As an interlocutory attorney, she authored more than 150 summary judgment decisions.  As an examining attorney, she also argued numerous ex parte appeals before the TTAB.

We treat each opposition and cancellation as a unique matter.  We look at the claims and defenses and the relevant evidence in view of our client’s goals, resources, and the merits of the case.  We then formulate a plan to best achieve that client’s goals, whether by settlement or trying the case.  In particular, we develop an early discovery plan for each case.  We often recommend minimal, targeted discovery and sometimes no discovery at all.  In cases where we represent the plaintiff, we create overall strategies, taking into consideration the nature and extent of the opponent’s use (if any) of the challenged mark.