There are several types of trademark proceedings which fall into the “Trademark Litigation” category. Our highly experienced and trusted trademark litigation attorneys provide dedicated representation in each of these proceedings, including:
District Court Litigation
Owners of a trademark may bring claims of federal trademark infringement against others who may be engaging in the infringement of federally registered trademarks in U.S. District Court. These lawsuits typically allege that the defendant has infringed on a trademark by the use of identical or confusingly similar marks, and may also include related causes of action for Lanham Act violations and unfair competition. Our attorneys both prosecute and defend owners against such actions, depending on the merits of the case.
A trademark cancellation proceeding is an administrative proceeding, similar to a civil federal lawsuit, filed before the Trademark Trial and Appeal Board (TTAB) in which one party requests that a registered trademark be cancelled. Petitions for cancellation of a trademark registration are governed by 15 U.S.C. §1064. There are several legal grounds that exist to cancel a trademark registration, including priority, abandonment (by non-use of at least three consecutive years together with an intent not to resume use), and fraud.
There are additional grounds as well, such as priority of use and genericness. A cancellation petition may be filed at any time:
(1) within five years of the trademark registration date, or
(2) at any time if the trademark becomes abandoned, or
(3) at any time if fraud is alleged in the procurement of the trademark registration, or
(4) if any time the registered mark becomes merely descriptive or generic of the goods or services for which it is registered.
Our attorneys represent parties who seek cancellation of a registered trademark, as well as defend parties where a cancellation proceeding is pending against their mark.
A trademark opposition proceeding is a process which is similar to that of a cancellation proceeding. However, rather than seeking to cancel a registered trademark, an opposition proceeding involves marks that have “pending” applications in the United States Patent and Trademark Office (USPTO), but have not yet registered. When an application for trademark registration is approved by the USPTO, it enters a thirty-day opposition period prior to registration, which provides third parties an opportunity to oppose the application based upon various claims. Some of these claims include priority of rights in the trademark or a confusingly similar trademark, fraud, and claims of non-use.
Whether you are looking to register your trademark or are involved in litigation, Contact Us today to set up a free evaluation with our dedicated and trusted trademark attorneys. Visit our Business Litigation page for information on other types of litigation cases we handle.
Meet Our Lead Trademark and Copyright Law Attorney
Karen M. Hawkes is a trademark and copyright attorney providing both transactional and litigation services to individuals and businesses. Ms. Hawkes focuses her practice on the protection and enforcement of brands for clients ranging from start-ups to well established corporations of all sizes. She has years of experience in a wide range of industries including e-commerce, authors [..]
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