When a trademark registration gets challenged, many businesses feel the same immediate reaction: What exactly happens now, and how serious is this? That reaction is understandable. A federal trademark registration can be a meaningful business asset, but it is not untouchable. Other companies, rights holders, and in some situations the USPTO itself may try to block, narrow, or cancel trademark rights through administrative procedures.
In this post you’ll learn the nine questions businesses ask most often when a trademark registration is challenged, what those questions often mean in practice, and where the biggest legal and business risks usually appear. If you want a broader overview of the forum where many of these disputes play out, this guide on administrative trademark fights before the Board gives helpful background before diving into strategy.
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A challenged registration usually means someone is trying to prevent a mark from registering, or trying to cancel some or all of an existing registration, through the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB) or through certain ex parte procedures created by the Trademark Modernization Act. The TTAB hears oppositions and cancellations, while expungement and reexamination are different USPTO procedures focused on whether the mark was actually used for the listed goods or services. The USPTO describes expungement and reexamination as faster and less expensive alternatives to a contested cancellation proceeding in the right nonuse cases, and it has reported instituting more than 2,000 of these TMA proceedings since the law took effect. USPTO, USPTO
In general terms, a challenge is not always a statement that a brand is invalid across the board. Often, it is a narrower claim. The other side may be saying: