I. Introduction

Part 3 of our US Trademark Policy Research Report introduced the concepts and differences between US trademark opposition and cancellation. When an applicant's trademark rights are infringed, they can file an opposition or cancellation against a third-party's trademark, depending on the status of the infringing mark, to further protect their rights.

Currently, with the surge in US trademark applications, trademark owners are increasingly aware of protecting their rights. Coupled with measures implemented by the USPTO to prevent hoarding of trademarks with no intent to use and reduce wastage of registration resources, the number of US trademark opposition and cancellation cases is constantly increasing. Adhering to the US 'first-to-use' principle, as long as the actual use of the trademark is emphasized, these two litigation procedures (opposition and cancellation) will not become unstable factors for applicants maintaining their US trademark registrations.

II. Simplified Process of US Trademark Opposition and Cancellation

As two common types of trial proceedings before the Trademark Trial and Appeal Board (TTAB), US trademark opposition and cancellation share the same procedural stages. The only difference is the timing for initiating them. According to the Trademark Board Manual of Procedures (TBMP) §306.01 and §307.02(c)(3), a Notice of Opposition must be filed within thirty days of the publication of the applicant's mark, while a Petition for Cancellation can only be filed after the trademark is registered.

As evident from the TBMP, the entire process for US trademark opposition and cancellation is quite complex, primarily consisting of the following six stages, with the first five being mandatory:

Commencement (Pleading Stage): The plaintiff (Opposer/Petitioner) files the Notice of Opposition or Petition for Cancellation with the TTAB and pays the corresponding official fee.

Answer: The defendant (Applicant/Registrant) must file an Answer to the opposition or cancellation petition within forty days from the mailing date of the notice. A counterclaim can be included with the Answer. Failure to file an Answer by the deadline may lead to a default judgment, potentially resulting in the abandonment or cancellation of the trademark.

Discovery Stage: After the Answer is filed, the case proceeds to the discovery stage.

(a) Discovery Conference: The attorneys for both parties hold a conference to discuss a discovery plan and explore the possibility of settlement.

(b) Initial Disclosures: Following the conference, both parties make initial disclosures within 30 days. This stage involves at least one round of exchanging discovery materials, which may include Requests for Admission, Requests for Production of Documents and Things, and Interrogatories. The number of discovery rounds can vary depending on the case.

(c) Expert Disclosures: Parties may disclose expert witnesses who can provide written reports supporting their positions.

Trial Stage: After the discovery phase, the case moves to the trial stage.

(a) Pretrial Disclosures and Testimony Periods: Both parties present their evidence during assigned testimony periods. The plaintiff may have a brief rebuttal period after the defendant's testimony period.

(b) Briefs: After the testimony periods, both parties submit trial briefs according to the TTAB's schedule. The plaintiff may file a reply brief within 15 days after the defendant's main brief.

(c) Oral Hearing: If either party requests it, an oral hearing may be scheduled before the TTAB for oral arguments.

Final Decision (Decision Stage): After the trial stage, the TTAB issues a final decision and sends the decision document to both parties.

Appeals/Reconsideration: The losing party may file a motion for reconsideration with the TTAB within one month of the decision date, or appeal the decision to the US Court of Appeals for the Federal Circuit within 63 days.

Clearly, a likelihood of confusion refusal based solely on database searches and an examiner's subjective judgment cannot fully protect all trademark rights. Therefore, it is necessary for applicants or third parties to actively monitor trademarks that have actual or potential conflicts of interest. Based on the status of the conflicting mark, an opposition or cancellation should be filed at the appropriate time to safeguard the effective use of one's own trademark.

Overall, the opposition and cancellation processes are very lengthy, involve complex procedures at each stage, and consequently incur relatively high legal fees. After briefly understanding the stages of these two procedures, it is important to note that once initiated, the parties must follow the TTAB's timeline and complete the required actions for each stage. The process cannot be arbitrarily suspended or skipped! Even with a strong desire to protect one's trademark registration, factors such as time and budget must be considered.

III. Differences Between Chinese and US Trademark Opposition and Cancellation Procedures

Although the concepts of opposition and cancellation are similar, and the timing for filing them is analogous (opposition during publication, cancellation after registration), the specific procedures differ significantly between countries and cannot be generalized.

Using Chinese trademarks as an example, compared to US procedures, the opposition and cancellation processes in China are relatively simpler. If a Chinese trademark faces an opposition or a cancellation (non-use cancellation), the applicant, after receiving the official 'Notice of Opposition Response' within 30 days or the 'Notice of Providing Evidence of Use' for a non-use cancellation within 2 months, can submit arguments against the opposer's/petitioner's evidence or submit use evidence, respectively. The outcome is then determined by the China National Intellectual Property Administration (CNIPA).

In contrast, once a US trademark faces an opposition or cancellation, it enters an adversarial litigation process adjudicated by the TTAB. The parties must proceed step-by-step through the complex stages described above. The US process is more formal, involves greater uncertainty, and requires significantly more time and cost. Without any extensions or suspensions, if both parties adhere to the TTAB's schedule, it typically takes at least two years to obtain a final decision.

IV. Conclusion

This report briefly outlined the stages and key considerations in US trademark opposition and cancellation procedures, and compared the differences between Chinese and US procedures. When involved in an opposition or cancellation proceeding, it is crucial to pay close attention to the response deadlines at each stage to better protect your legitimate trademark rights and create a positive impression. For specific case details and cost estimates related to opposition or cancellation matters, please consult our company. Stay tuned for the next report.

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Pengzhuyun Policy Research Department

September 27, 2023

References:

[1] TBMP: https://tbmp.uspto.gov/RDMS/TBMP/current

[2] China Online Application for Cancellation based on Three Years Non-Use: http://www.cnipa.gov.cn/attach/0/63ab5174618d4d77b0a1f64ee1a044b8.pdf