Avoiding market confusion is paramount for maintaining a strong brand. We carefully review watch notices issued by the European Intellectual Property Office (EUIPO), the UK Intellectual Property Office (UKIPO), and U.S. Patent and Trademark Office (USPTO) for applications that could infringe upon our client’s rights. Treating 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. From there, we formulate a plan to best achieve the client’s goals, whether by settlement or trying the case.
Opposition and cancellation proceedings at the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office are akin to civil litigation, including initial, expert, and pretrial disclosures. Finnegan has a wealth of experience in civil litigation, and we are well prepared to guide our clients through the rules. We have had a substantial practice before the TTAB for decades and typically have approximately 300 to 400 active cases at any time, filing or defending as many as 200 new U.S. oppositions and cancellations each year.
In Europe and the UK, most trade marks disputes begin with a challenge at the trade mark registry, whether that be by way of opposition, invalidation, or cancellation. As there is no relative grounds examination in the UK or at the EUIPO, rights holders are responsible for policing third party marks and deciding if they wish to make a formal challenge to the validity of the application or registration. We have extensive experience before the both the UK and EUIPO and typically file or defend as many as 50 new EU or UK oppositions and cancellations each year.
Opp. No. 91245851, TTAB, Judges Zervas, Lykos, Larkin
3:19-cv-00012, W.D. Va., Judge Moon
19-1132, Fed. Cir., Judges Prost, Moore, Wallach
Opposition No. 92059437, TTAB, Judge McCormack
1:17-cv-00935, E.D. Va., Judge Ellis
Oppos. No. 91232300, TTAB, Judge Dunn
Represented Charming Charlie before the TTAB in a trademark Opposition against Caulfield Clothing related to its registration of a “C” logo that was confusingly similar to Charming Charlie’s own C Logo. Case resolved with abandonment of the application.
Opp. No. 91232209, TTAB, Judge McKnight
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