Why To File a Trademark Opposition: Understanding the Differences Between the TTAB and Court

One who believes she will be damaged by a registration can file a trademark opposition with the Trademark Trial and Appeal Board (TTAB) of the USPTO. This must be done within the 30-day Opposition Period, although extensions can be sought. Before doing so, it is important to recognize the differences between a TTAB proceeding and litigation in a federal district court.

  1. Although a TTAB proceeding can take less time, oftentimes less than a year, and cost less than litigation, they both are adversarial processes that require an understanding of the Federal Rules of Civil Procedure and trademark law.
  2. A TTAB proceeding is typically easier to file and to dismiss than a court action, without the risk of a requirement of consent or payment of costs and/or fees.
  3. A trademark opposition is filed with the TTAB with any appeal going to the Court of Appeals for the Federal Circuit. This is the only way to be heard by the Court of Appeals for the Federal Circuit, which contains the most precedent related to TTAB matters. Any appeal from a decision in a federal district court will go to the controlling Court of Appeals (e.g. Sixth Circuit Court of Appeals).
  4. While a favorable TTAB ruling in a trademark opposition will preclude the application from becoming a registered trademark, that ruling is not necessarily binding on a federal district court. Moreover, only a court of law can order injunctive or financial relief (i.e. stop the infringing use or award damages).
  5. Leverage in a TTAB proceeding is limited to a petition to cancel the trademark registration relied upon, if any, as part of the opposition. In a federal court action, various counterclaims are available that would make the originally named defendant a plaintiff. In addition, additional third parties could become part of the litigation.

As you can see, there are numerous considerations that have to be made in choosing a TTAB trademark proceeding rather than litigation.