Store Legal Guide to TTAB Practice
Guide to TTAB Practice Guide to TTAB Practice

Guide to TTAB Practice

By Jeffery A. Handelman
Select Format
Looseleaf
$545.00
Internet
$197.00
Available on Cheetah! Learn More

Looseleaf

Available: Ships in 3-5 Business Days
Price
$545.00
Qty.
This product is available for the standing order program.
Buy Now

Internet

Price
$197.00
Includes 3-month access for one license. Need a demo or annual access? Contact Sales
Buy Now
Please note, once you complete your purchase, Cheetah registration instructions and login credentials to access your 3-month online subscription will be emailed to you within one business day.
Overview

The thorough Guide to Trademark Trial and Appeal Board (TTAB) Practice takes you step-by-step through the entire process, covering claims for relief, defenses that can be asserted in opposition and cancellation proceedings, motion practice, mailing and service, discovery, evidence, proving your case, objecting to evidence, appeals, settlement and more. 

As trademark law continues to evolve, so do the reasons practitioners might find themselves before the Trademark Trial and Appeal Board ( TTAB). Cutting-edge business concepts, breakthroughs in technology, and the increasing variety of forms of commerce are all bringing new and interesting challenges to trademark practice. Only Guide to TTAB Practice helps you with practice and procedure, as well as substantive law.

Whether you're a rookie or a veteran, Guide to TTAB Practice makes certain you're fully prepared for every TTAB proceeding. This one-of-a-kind, nuts-and-bolts resource created by an expert practitioner takes you step-by-step through the entire process and tells you everything you need to know about practicing before the TTAB.

Areas of particular interest include:

  • Claims for relief
  • Defenses that can be asserted in opposition and cancellation proceedings
  • Motion practice
  • Mailing and service
  • Discovery
  • Evidence—proving your case
  • Objecting to evidence
  • Discovery and testimony in cases involving foreign parties
  • Restriction proceedings
  • Priority determinations
  • Summary judgment
  • Submitting evidence
  • Objecting to evidence
  • Testimony
  • Briefs at final hearing and oral argument
  • Argument
  • Appeals
  • International challenges.
  • Settlement—the chapter on settlement presents the most effective ways settlements can be structured in accordance with the governing Trademark Rules of Practice.

Note: Online subscriptions are for three-month periods.

Last Updated 04/09/2018
Product Line Wolters Kluwer Legal & Regulatory U.S.
ISBN 9780735565319
SKU 10045977-7777
Product Line Wolters Kluwer Legal & Regulatory U.S.
SKU 000000000010066270
Table of Contents

VOLUME 1

Chapter 1. INTRODUCTION TO THE BOARD AND ITS PROCEEDINGS

  • 1.01 Overview of the Board and Its Cases
  • 1.02 The Functions of Trademarks
  • 1.03 Parallels Between Policies Underlying Trademark Law and Patent Law
  • 1.04 The Benefits of Federal Trademark Registration
  • 1.05 Authorities That Apply in Board Proceedings
  • 1.06 Case Law Governing Board Proceedings
  • 1.07 Trademark Manuals 1.08 Summary of Contents

Chapter 2. OPPOSITION PROCEEDINGS—AN OVERVIEW

  • 2.01 In General
  • 2.02 The Governing Rules in an Opposition Proceeding
  • 2.03 Sequence of Events in an Opposition Proceeding
  • 2.04 Papers Required to Be Served in an Opposition Proceeding
  • 2.05 Who May File an Opposition
  • 2.06 Joining Persons in an Opposition
  • 2.07 Time for Filing Opposition
  • 2.08 Request for Extension of Time to File Opposition
  • 2.09 Filing an Opposition
  • 2.10 Service of Opposition
  • 2.11 Fees for an Opposition
  • 2.12 Contents of Opposition
  • 2.13 Notification to Parties of Opposition Proceeding
  • 2.14 Standing
  • 2.15 Burden of Proof
  • 2.16 Hypothetical Pleading
  • 2.17 Answer to Opposition
  • 2.18 Counterclaim in Opposition
  • 2.19 Amendment of Pleadings in an Opposition Proceeding
  • 2.20 Oppositions Involving Conflicting Applications
  • 2.21 Dividing Out Unopposed Classes in a Multiple-Class Application
  • 2.22 Remand of Application After Decision
  • 2.23 Failure by Opposer to File Section 8 Affidavit or Renewal Application for Pleaded Registration
  • 2.24 Applications for Registration on the Supplemental Register Cannot Be Opposed

Chapter 3. CANCELLATION PROCEEDINGS—AN OVERVIEW

  • 3.01 In General
  • 3.02 The Governing Rules in a Cancellation Proceeding
  • 3.03 Sequence of Events in a Cancellation Proceeding
  • 3.04 Papers Required to Be Served in a Cancellation Proceeding
  • 3.05 Who May File a Cancellation Petition
  • 3.06 Petitioning to Cancel More than One Registration
  • 3.07 Time for Filing Petition for Cancellation
  • 3.08 Filing a Petition for Cancellation
  • 3.09 Service of Cancellation Petition
  • 3.10 Fees for a Petition for Cancellation
  • 3.11 Contents of Cancellation Petition
  • 3.12 Notification to Parties of Cancellation Proceeding
  • 3.13 Notice Where Address of Registrant Is Unknown
  • 3.14 Standing
  • 3.15 Burden of Proof
  • 3.16 Hypothetical Pleading
  • 3.17 Answer to Petition for Cancellation
  • 3.18 Counterclaim in Cancellation Proceeding
  • 3.19 Amendment of Pleadings in a Cancellation Proceeding
  • 3.20 Failure to File Section 8 Affidavit or Renewal Application for Challenged Registration
  • 3.21 Cancellation of Registrations on the Supplemental Register

Chapter 4. SETTLEMENT METHODS

  • 4.01 Advantages Offered by Settlement
  • 4.02 Time Extensions and Suspensions During Settlement Negotiations
  • 4.03 Methods for Structuring Settlements
  • 4.04 Amendment of Goods or Services
  • 4.05 Amendment of Mark
  • 4.06 Voluntary Abandonment of Application
  • 4.07 Voluntary Surrender or Cancellation of Registration
  • 4.08 Withdrawal of Opposition
  • 4.09 Withdrawal of Cancellation Petition
  • 4.10 Consent Agreement
  • 4.11 Assignment and Licensing Arrangements
  • 4.12 Settlement Based on Entry of Disclaimer

Chapter 5. FILING AND SERVICE OF PAPERS

  • 5.01 Overview
  • 5.02 U.S. Patent and Trademark Office Web Site
  • 5.03 General Filing Requirements
  • 5.04 Form of Submissions
  • 5.05 Methods for Filing Papers with the Board
  • 5.06 Use of Acknowledgment Postcard
  • 5.07 The Five Day Rule
  • 5.08 The Saturday, Sunday or Holiday Rule
  • 5.09 Calculating Extensions when Due Date Falls on a Saturday, Sunday or Federal Holiday
  • 5.10 Requirements Governing Service of Papers and Correspondence with Patent and Trademark Office
  • 5.11 Requirements Governing Signing of Papers
  • 5.12 Business Must Be Transacted in Writing
  • 5.13 Business Must Be Conducted with Decorum and Courtesy
  • 5.14 Requirements for Correspondence with Patent and Trademark Office

Chapter 6. GROUNDS FOR OPPOSITION AND CANCELLATION—LIKELIHOOD OF CONFUSION

  • 6.01 The Elements of a Likelihood of Confusion Claim
  • 6.02 The Test for Likelihood of Confusion: The DuPont Factors
  • 6.03 Weight Given to Each DuPont Factor
  • 6.04 Whether Likelihood of Confusion Exists Is a Question of Law Based on the Underlying Facts
  • 6.05 Factor 1: The Similarity or Dissimilarity of the Marks in Their Entireties as to Appearance, Sound, Connotation and Commercial Impression
  • 6.06 Factor 2: The Similarity or Dissimilarity and Nature of the Goods or Services as Described in an Application or Registration or in Connection with Which a Prior Mark Is in Use
  • 6.07 Factor 3: The Similarity or Dissimilarity of Established, Likely-to-Continue Trade Channels
  • 6.08 Factor 4: The Conditions Under Which and the Buyers to Whom Sales Are Made, i.e. “Impulse Purchasing” Versus Careful, Sophisticated Purchasing
  • 6.09 Factor 5: The Fame of the Prior Mark (Sales, Advertising, Length of Use)
  • 6.10 Factor 6: The Number and Nature of Similar Marks in Use on Similar Goods
  • 6.11 Factor 7: The Nature and Extent of Any Actual Confusion
  • 6.12 Factor 8: The Length of Time During, and Conditions Under Which, There Has Been Concurrent Use Without Evidence of Actual Confusion
  • 6.13 Factor 9: The Variety of Goods on Which a Mark Is or Is Not Used (House Mark, “Family” Mark, Product Mark)
  • 6.14 Factor 10: The Market Interface Between Applicant and the Owner of a Prior Mark
  • 6.15 Factor 11: The Extent to Which Applicant Has a Right to Exclude Others From Use of Its Mark on Its Goods
  • 6.16 Factor 12: The Extent of Potential Confusion, i.e., Whether De Minimis or Substantial
  • 6.17 Factor 13: Any Other Established Fact Probative of the Effect of Use
  • 6.18 The Issue of Intent and Good Faith
  • 6.19 Theoretical Possibility of Confusion Not Enough
  • 6.20 Effect of Prior Inconsistent Positions on Likelihood of Confusion Determination
  • 6.21 Reverse Confusion
  • 6.22 Time Limit for Asserting Likelihood of Confusion Claim
  • 6.23 The Proprietary Rights Requirement for a Likelihood of Confusion Claim
  • 6.24 Section 2(d) Claim Based on Registered Mark
  • 6.25 Section 2(d) Claim Based on Common Law Mark
  • 6.26 Section 2(d) Claim Based on Trade Name
  • 6.27 Asserting Claims of Likelihood of Confusion and Descriptiveness in the Alternative

Chapter 7. GROUNDS FOR OPPOSITION AND CANCELLATION—FUNCTIONALITY

  • 7.01 Overview of Functionality Doctrine
  • 7.02 Summary of Legal Framework for Analyzing Functionality and Trade Dress Protection
  • 7.03 Policies Underlying the Functionality Doctrine
  • 7.04 Lanham Act Provisions Relating to Functionality
  • 7.05 In Determining Functionality, the Mark Must Be Viewed as a Whole
  • 7.06 Functionality Is a Question of Fact
  • 7.07 Secondary Meaning Cannot Overcome Functionality Rejection
  • 7.08 De Jure Versus De Facto Functionality
  • 7.09 Factors Used to Determine Functionality
  • 7.10 Factor No. 1: The Existence of a Utility Patent
  • 7.11 Factor No. 2: Advertising Touting the Design's Utilitarian Advantages
  • 7.12 Factor No. 3: The Availability of Alternative Designs
  • 7.13 Factor No. 4: Does the Design Offer a Comparatively Simple or Cheap Method of Manufacturing?
  • 7.14 Is Color Functional?
  • 7.15 Is Scent Functional?
  • 7.16 Is Taste Functional?
  • 7.17 Is Sound Functional?
  • 7.18 Aesthetic Functionality
  • 7.19 Relationship Between Functionality and Design Patent Law

Chapter 8. GROUNDS OTHER THAN LIKELIHOOD OF CONFUSION AND FUNCTIONALITY

  • 8.01 Time Limit for Asserting Certain Grounds
  • 8.02 Availability of Secondary Meaning to Overcome Certain Grounds
  • 8.03 Immoral or Scandalous Matter
  • 8.04 Deceptive Matter
  • 8.05 False Suggestion of a Connection
  • 8.06 Matter Which May Disparage
  • 8.07 Flag, Coat of Arms, or Other Insignia 2(b)
  • 8.08 Name, Portrait, or Signature of Individual 2(c)
  • 8.09 Merely Descriptive
  • 8.10 Deceptively Misdescriptive
  • 8.11 Genericness
  • 8.12 Refusals to Register Based on Geographic Significance
  • 8.13 Primarily Geographically Descriptive
  • 8.14 Primarily Geographically Deceptively Misdescriptive
  • 8.15 Geographically Deceptive
  • 8.16 Geographical Indications Used for Wines and Spirits
  • 8.17 Primarily Merely a Surname
  • 8.18 Application Not Filed By Owner of Mark
  • 8.19 Mark Not Yet in Use at Time Application Was Filed
  • 8.20 Fraud
  • 8.21 Misuse of Registration Symbol
  • 8.22 Failure to Disclaim Unregistrable Matter
  • 8.23 Lack of Bona Fide Intent to Use
  • 8.24 Abandonment
  • 8.25 Abandonment Based on Nonuse
  • 8.26 Abandonment Based on Material Alteration of Mark
  • 8.27 Abandonment Based on Uncontrolled or “Naked” Licensing
  • 8.28 Abandonment Based on Failure to Police
  • 8.29 Abandonment Based on Naked Assignment
  • 8.30 Invalid Assignment of Intent-to-Use Application
  • 8.31 Claim Preclusion and Issue Preclusion
  • 8.32 Equitable Estoppel Based on Withdrawal of Prior Application with Prejudice
  • 8.33 Contracting Away Right to Register
  • 8.34 Dilution

Chapter 9. SECONDARY MEANING

  • 9.01 Overview of Secondary Meaning
  • 9.02 Anonymous Source Rule
  • 9.03 Situations in Which Issue of Secondary Meaning Arises
  • 9.04 Secondary Meaning Is a Question of Fact
  • 9.05 Burden of Proof on Secondary-Meaning Issue
  • 9.06 The More Descriptive or Commonplace the Claimed Mark Is, The Heavier the Burden to Prove Secondary Meaning
  • 9.07 Secondary Meaning Is Not Required for Word Marks That Are Inherently Distinctive
  • 9.08 Arguing Secondary Meaning “In the Alternative”
  • 9.09 Grounds That Secondary Meaning Cannot Overcome
  • 9.10 Grounds That Secondary Meaning Can Overcome
  • 9.11 De Facto Secondary Meaning
  • 9.12 In Determining Secondary Meaning, Facts Arising After Filing Date of Application Can Be Considered
  • 9.13 Legal Authorities Governing Secondary-Meaning Determination
  • 9.14 Secondary-Meaning Evidence Can Be Direct or Circumstantial
  • 9.15 Legal Principles Used in Assessing Secondary-Meaning Evidence
  • 9.16 Five Years of “Substantially Exclusive and Continuous Use”
  • 9.17 Fraud Claims Relating to Allegation of “Substantially Exclusive” Use
  • 9.18 Ownership of Prior Registration
  • 9.19 Use of Term in Prominent Trademark Manner Strengthens Showing of Secondary Meaning
  • 9.20 Use of Designation as Part of Trade Identity Can Strengthen Showing of Secondary Meaning
  • 9.21 Third-Party Use Militates Against Secondary Meaning
  • 9.22 Use as a Style or Flavor Designation Militates Against a Finding of Secondary Meaning
  • 9.23 Enforcement Efforts Do Not Necessarily Establish Secondary Meaning
  • 9.24 Product Success Does Not Necessarily Equate with Secondary Meaning
  • 9.25 Evidence of Copying Does Not Necessarily Establish Secondary Meaning
  • 9.26 Affidavits or Declarations From Consumers and Others
  • 9.27 Consumer Surveys Regarding Secondary Meaning of Word Marks
  • 9.28 Secondary Meaning and Intent-to-Use Applications
  • 9.29 Claiming Secondary Meaning for a Portion of a Mark

Chapter 10. TRADE DRESS

  • 10.01 Overview of Trade Dress
  • 10.02 Legal Framework for Analyzing Protection and Distinctiveness of Trade Dress
  • 10.03 Product-Design Trade Dress
  • 10.04 Product-Packaging Trade Dress
  • 10.05 Determining Whether Product-Packaging Trade Dress Is Inherently Distinctive
  • 10.06 Trade Dress Found Not to Be Inherently Distinctive—Examples
  • 10.07 Trade Dress Found to Be Inherently Distinctive—Examples
  • 10.08 “Uniqueness” Does Not Necessarily Equate with Inherent Distinctiveness
  • 10.09 The Abercrombie and Seabrook Tests Are Complementary
  • 10.10 The Seabrook Test Remains Valid After Wal-Mart v. Samara
  • 10.11 Determining Whether Trade Dress Has Acquired Secondary Meaning
  • 10.12 The More Commonplace the Design, the More Difficult It Is to Prove Secondary Meaning
  • 10.13 Summary of Legal Principles Relating to Secondary Meaning and Trade Dress
  • 10.14 Advertising That Calls Attention to the Design Supports Secondary Meaning
  • 10.15 Secondary Meaning Is Difficult to Establish for a Product Configuration
  • 10.16 Market Success of a Design, Standing Alone, Generally Is Not Sufficient to Establish Secondary Meaning
  • 10.17 Showing Picture of Product, Without More, Generally Is Not Sufficient to Establish Secondary Meaning
  • 10.18 Advertising Utilitarian Advantages of Product Can Undermine Secondary Meaning
  • 10.19 Use of Similar Designs By Others Weighs Against Secondary Meaning
  • 10.20 Evidence Showing That the Design Was Copied Does Not Necessarily Establish Secondary Meaning
  • 10.21 Trademark Enforcement Efforts Involving the Design Do Not Necessarily Support a Finding of Secondary Meaning
  • 10.22 Affidavits and Declarations From Consumers Must Focus on the Claimed Design Features
  • 10.23 Consumer Surveys Regarding Secondary Meaning of Trade Dress
  • 10.24 Should Secondary Meaning Developed During the Life of a Patent Be Given Legal Effect After the Patent Expires?

Chapter 11. DEFENSES IN OPPOSITION AND CANCELLATION PROCEEDINGS

  • 11.01 Overview
  • 11.02 Pleading Affirmative Defenses
  • 11.03 Laches 
  • 11.04 Acquiescence
  • 11.05 The “Prior Registration” Defense (The Morehouse Defense)
  • 11.06 Unclean Hands
  • 11.07 Equitable Estoppel
  • 11.08 Contractual Estoppel
  • 11.09 Judicial Estoppel
  • 11.10 Res Judicata or Claim Preclusion
  • 11.11 Collateral Estoppel or Issue Preclusion
  • 11.12 Preclusion Arising Out of Prior Judgment in Ex Parte Proceeding
  • 11.13 Licensee Estoppel
  • 11.14 Abandonment as a Defense
  • 11.15 Fraud as a Defense
  • 11.16 Genericness as a Defense
  • 11.17 Functionality as a Defense
  • 11.18 Absence of Likelihood of Confusion as a Defense
  • 11.19 Priority as a Defense
  • 11.20 Lack of Secondary Meaning as a Defense
  • 11.21 Acquisition of Secondary Meaning as a Defense
  • 11.22 Challenge Against Validity of Plaintiff's Registration

Chapter 11A. DISCLOSURE PRACTICE

  • 11A.01 History of Disclosure System
  • 11A.02 Overview of Disclosure System
  • 11A.03 Parties Can Modify Disclosure Obligations by Agreement
  • 11A.04 Case Schedule Under Disclosure System
  • 11A.05 Interplay Between Disclosures and Traditional Discovery
  • 11A.06 Discovery Conference
  • 11A.07 Initial Disclosures
  • 11A.08 Expert Witness Disclosures
  • 11A.09 Pretrial Disclosures
  • 11A.10 Disclosures and Confidential Information
  • 11A.11 Supplementation of Disclosures
  • 11A.12 Use of Written Disclosures and Disclosed Documents as Evidence

Chapter 12. DISCOVERY

  • 12.01 Overview of Discovery
  • 12.02 Discovery Conference
  • 12.03 Time Requirements Governing Discovery
  • 12.04 Serving Discovery
  • 12.05 Responding to Discovery
  • 12.06 Effect of Failing to Properly Respond to Discovery
  • 12.07 Scope of Discovery
  • 12.08 Specific Rulings on Discovery Disputes
  • 12.09 Methods of Discovery
  • 12.10 Discovery of Confidential Information
  • 12.11 Objections Made at Discovery Depositions
  • 12.12 Supplementation of Discovery Responses
  • 12.13 Motions Relating to Discovery
  • 12.14 Motion to Extend Time for Responding to Discovery
  • 12.15 Motion to Extend the Discovery Period
  • 12.16 Motion to Reopen Discovery
  • 12.17 Motion to Compel Discovery
  • 12.18 Motion to Determine Sufficiency of Answer or Objection to Requests for Admission
  • 12.19 Motion to Withdraw or Amend Admission
  • 12.20 Motion for Leave to Serve Interrogatories That Exceed the Numerical Limit
  • 12.21 Motion to Take Oral Deposition Abroad
  • 12.22 Motion for Sanctions Relating to Discovery Matters
  • 12.23 Motions Challenging Discovery Requests Are Generally Inappropriate
  • 12.24 Motion for Protective Order
  • 12.25 Telephone Conferencing with Board Attorney on Discovery Matters

Chapter 13. PRIORITY DETERMINATIONS

  • 13.01 Overview
  • 13.02 A Party Must Establish Priority Over Its Opponent, Not the Whole World
  • 13.03 Priority Based Upon Filing Date of Application—Constructive Use Priority
  • 13.04 Priority Based Upon Pleaded Registration—The King Candy Rule
  • 13.05 Priority Based Upon Common-Law Use Before Filing Date of Application
  • 13.06 Party Seeking to Prove Priority Date Earlier than That Set Forth in Its Application or Registration Faces Heavier Burden
  • 13.07 Priority and Common Law Rights in Separate Geographical Areas
  • 13.08 Priority and Abandonment
  • 13.09 Priority and Secondary Meaning
  • 13.10 Priority and the Doctrine of Natural Expansion—The Problem of Intervening Rights
  • 13.11 Priority Based on Use By Related Company or Predecessor-in-Interest
  • 13.12 Priority Based Upon Tacking
  • 13.13 A Defendant Cannot Rely Upon Use of a Family of Marks in Proving Priority
  • 13.14 Priority Based Upon Use-Analogous-to-Trademark Use
  • 13.15 Priority Based Upon Trade Name Use
  • 13.16 Priority and Conflicting Applications
  • 13.17 Priority Based Upon Foreign Rights 14.

Chapter 14. MOTION PRACTICE

  • 14.01 Overview
  • 14.02 Briefing on Motions Other than Summary Judgment Motions
  • 14.03 Briefing on Summary Judgment Motions
  • 14.04 Oral Argument on Motions
  • 14.05 Motions Relating to Discovery
  • 14.06 Motions Relating to Evidentiary Submissions
  • 14.07 Motion for Summary Judgment
  • 14.08 Motion to Dismiss for Failure to State a Claim
  • 14.09 Motion for Judgment on the Pleadings
  • 14.10 Motion for More Definite Statement
  • 14.11 Motion to Strike Matter from Pleading
  • 14.12 Motion to Amend Pleadings
  • 14.13 Motion for Default Judgment Based on Failure to File Answer
  • 14.14 Motion to Set Aside Default Judgment
  • 14.15 Motion to Suspend Proceeding
  • 14.16 Motion to Consolidate Proceedings
  • 14.17 Motion to Join or Substitute Party
  • 14.18 Motion to Withdraw as Counsel
  • 14.19 Motion to Disqualify Counsel
  • 14.20 Motion for Sanctions
  • 14.21 Motion for Judgment for Failure to Take Testimony or Offer Other Evidence
  • 14.22 Motion for Judgment Based on Failure to File Main Brief
  • 14.23 Motions for Reconsideration
  • 14.24 Motion for Relief from Judgment
  • 14.25 Telephone Conference with Board Attorney Regarding Motion

VOLUME 2

Chapter 15. RESTRICTION PROCEEDINGS UNDER LANHAM ACT SECTION 18

  • 15.01 Overview of Section 18
  • 15.02 Offensive Use of Section 18—Attacking Opponent's Goods or Services
  • 15.03 Defensive Use of Section 18—Narrowing Goods or Services
  • 15.04 UsingSection 18 Both Offensively and Defensively
  • 15.05 Miscellaneous Points Concerning Section 18

Chapter 16. SUMMARY JUDGMENT

  • 16.01 Overview of Summary Judgment
  • 16.02 Timing and Briefing Requirements for Summary Judgment Motions
  • 16.03 Difference Between Motion to Dismiss and Motion for Summary Judgment
  • 16.04 Suspension of Proceedings Pending Disposition of Summary Judgment Motion
  • 16.05 Matters in Evidence on Summary Judgment Motion
  • 16.06 Supplementation of Evidence on Summary Judgment Motion
  • 16.07 Papers Filed on Summary Judgment Do Not Become Part of the Trial Record Unless Reintroduced During Testimony Periods
  • 16.08 Standards Governing Summary Judgment Motion
  • 16.09 A Single Factor Can Preclude Likelihood of Confusion as a Matter of Law
  • 16.10 Need for Discovery in Order to Respond to Summary Judgment Motion
  • 16.11 A Party Cannot Move for Summary Judgment on a Claim or Defense That Has Not Been Pleaded
  • 16.12 All Available Claims and Defenses Should Be Asserted in Response to a Summary Judgment Motion
  • 16.13 Board Has Authority to Grant Summary Judgment in Favor of the Nonmoving Party
  • 16.14 Cross-Motions for Summary Judgment

Chapter 17. EVIDENCE—PROVING YOUR CASE

  • 17.01 Overview of Evidence in Board Cases
  • 17.02 Evidence Not Properly Submitted Will Be Given No Consideration
  • 17.03 Time Table for Taking Testimony and Submitting Evidence
  • 17.04 Pretrial Disclosures
  • 17.05 Rescheduling Testimony Periods
  • 17.06 Stipulated Extension of Testimony Periods
  • 17.07 Motion to Extend Testimony Periods
  • 17.08 Motion to Reopen Testimony
  • 17.09 Motion to Reopen Testimony Period for Limited Purpose of Introducing Newly Discovered Evidence
  • 17.10 Evidence Submitted Through Testimony Depositions
  • 17.11 Testimony Deposition of Non-Party
  • 17.12 Testimony Deposition of Adverse Witness
  • 17.13 Testimony Deposition upon Written Questions
  • 17.14 Motion to Have Testimony Deposition Taken Orally, Rather than upon Written Questions
  • 17.15 Testimony Deposition Taken in Foreign Country
  • 17.16 Evidence Submitted Through a Notice of Reliance
  • 17.17 Submitting Written Disclosures and Disclosed Documents Under Notice of Reliance
  • 17.18 Evidence of Registrations Pleaded or Owned by a Party
  • 17.19 Additional Matters Pertaining to Proving the Case

Chapter 18. CONSUMER SURVEY EVIDENCE

  • 18.01 Overview of Surveys
  • 18.02 Literature Regarding Consumer Surveys
  • 18.03 Is a Survey Needed?
  • 18.04 Factors Governing a Survey's Reliability
  • 18.05 Double-Blind Procedure Should Be Followed
  • 18.06 Admissibility of Surveys—Daubert and its Progeny
  • 18.07 Survey Results Are Not Hearsay
  • 18.08 The Role of the Attorney Who Retains the Expert
  • 18.09 The Relevant Universe
  • 18.10 The Sample
  • 18.11 Types of Consumer Surveys
  • 18.12 Surveys Regarding Likelihood of Confusion
  • 18.13 Surveys Regarding Reverse Confusion
  • 18.14 Surveys Regarding Genericness
  • 18.15 Surveys Regarding Secondary Meaning of Word Marks
  • 18.16 Surveys Regarding Secondary Meaning of Trade Dress or Design Features
  • 18.17 Surveys Regarding Color Trademarks
  • 18.18 Surveys Regarding Trademark Strength and Fame
  • 18.19 Surveys Regarding Collective Marks
  • 18.20 Surveys Not Conducted In Preparation for Litigation
  • 18.21 Asking the Right Questions
  • 18.22 The Use of Controls in Surveys
  • 18.23 Expert Disclosures Relating to Surveys
  • 18.24 Discovery Regarding Surveys
  • 18.25 Confidentiality of Survey Respondents
  • 18.26 The Collection and Reporting of Data
  • 18.27 The Survey Report
  • 18.28 Introducing Your Survey into Evidence
  • 18.29 Criticizing Your Opponent's Survey
  • 18.30 Preparing Your Expert for Cross-Examination
  • 18.31 Surveys That Have Been Criticized by the Board

Chapter 19. OBJECTING TO EVIDENCE

  • 19.01 Overview
  • 19.02 Objections Relating to Testimony Depositions
  • 19.03 Objections Relating to Notice of Reliance Evidence
  • 19.04 Objections Relating to Submission of a Registration Pleaded or Owned by a Party
  • 19.05 Objections Relating to Exhibits Attached to Pleadings
  • 19.06 Objections Relating to Exhibits Attached to Brief
  • 19.07 Objections Relating to Testimony Submitted in Affidavit Form Without an Agreement
  • 19.08 Objections Relating to Evidence Submitted on Summary Judgment That Is Not Re-Introduced During Testimony Periods
  • 19.09 The Relationship Between “Relevant” Discovery and “Admissible” Evidence

Chapter 20. BRIEFS AT FINAL HEARING AND ORAL ARGUMENT

  • 20.01 Overview
  • 20.02 Briefing
  • 20.03 Oral Argument

Chapter 21. APPLICATIONS UNDER LANHAM ACT SECTION 44

  • 21.01 Overview of Section 44 Applications
  • 21.02 Priority in Cases Involving Section 44 Applications
  • 21.03 Rights Based on Section 44(d) Application
  • 21.04 Rights Based on Section 44(e) Application
  • 21.05 Requirements and Limitations Governing Section 44 Applications
  • 21.06 United States Applicants and Section 44

Chapter 22. STRATEGIES FOR USING DIFFERENT BASES FOR FILING A UNITED STATES APPLICATION

  • 22.01 Overview of Bases That Can Be Used for Filing a United States Application
  • 22.02 Cases Where Applicant Adds, Deletes, or Substitutes a Filing Basis
  • 22.03 Adding a Section 44(d) Basis
  • 22.04 Adding a Section 44(e) Basis
  • 22.05 Amendment from Section 1(a) to Section 1(b) Permitted
  • 22.06 Amendment from Section 44 to Section 1(b) Permitted
  • 22.07 Amendment to Section 1(a) Requires That Allegation of Use Be Filed
  • 22.08 Deletion of Filing Basis: Overview
  • 22.09 Deletion of Section 44(d) Basis
  • 22.10 Deletion of Section 1(b) Basis
  • 22.11 When Basis Can Be Changed: Amending Basis Before Publication Versus After Publication

Chapter 23. APPLICATIONS FILED UNDER LANHAM ACT SECTION 66

  • 23.01 Madrid Protocol Definitions
  • 23.02 Overview of Section 66 Applications
  • 23.03 The Madrid System
  • 23.04 Overview of Madrid Protocol Filings
  • 23.05 Inbound Applications: Requests for Extension of Protection to the United States
  • 23.06 Opposition Proceedings Against Extension of Protection to the United States
  • 23.07 18 -Month Notification Requirement
  • 23.08 Certificate of Extension of Protection
  • 23.09 Replacement of U.S. Registration by Registered Extension of Protection
  • 23.10 Cancellation Proceedings Against Extension of Protection to the United States
  • 23.11 Dependence and “Central Attack”
  • 23.12 Transformation
  • 23.13 Maintaining an Extension of Protection to the United States
  • 23.14 Renewal of International Registration and Extension of Protection
  • 23.15 Assignment of Extension of Protection to the United States
  • 23.16 Outbound Applications: International Applications Originating from the United States
  • 23.17 Requirements for Filing Outbound Applications
  • 23.18 Subsequent Designations in Outbound Applications
  • 23.19 Dependence and “Central Attack”
  • 23.20 Transformation When the U.S. Patent and Trademark Office Is the Office of Origin
  • 23.21 The Madrid Protocol and the CTM System

Chapter 24. DISCOVERY AND TESTIMONY IN CASES INVOLVING FOREIGN PARTIES

  1. 24.01 International Aspects of Board Cases
  2. 24.02 Discovery Involving Foreign Parties
  3. 24.03 Testimony Involving Foreign Parties

Chapter 25. PETITIONS TO DIRECTOR

  • 25.01 Overview of Petitions to Director
  • 25.02 Time for Filing Petition to Director
  • 25.03 Contents of Petition to Director
  • 25.04 Petition to Director from Grant or Denial of Request for Extension of Time to File Opposition
  • 25.05 Petition to Director from Interlocutory Order of Board
  • 25.06 Petition to Director Requesting Suspension or Waiver of Certain Rules
  • 25.07 Petition to Director Stays Time in Inter Partes Proceeding Only When Requested
  • 25.08 Oral Hearing on Petition to Director
  • 25.09 Request for Reconsideration of Decision of Director
  • 25.10 Appeal from Decision of Director

Chapter 26. LETTERS OF PROTEST

  • 26.01 Overview and Purpose of a Letter of Protest
  • 26.02 Proper Grounds for Letter of Protest
  • 26.03 Improper Grounds for Letter of Protest
  • 26.04 Where Letter of Protest Is Filed
  • 26.05 Time for Filing Letter of Protest
  • 26.06 Evidentiary Requirements for Materials Submitted with Letter of Protest
  • 26.07 PTO-Handling of Letter of Protest
  • 26.08 Letter of Protest Evidence Can Be Reviewed at Various Appellate Levels
  • 26.09 Standards Governing Whether Letter of Protest Is Granted or Denied
  • 26.10 Filing of Letter of Protest Does Not Stay or Extend Time for Filing Opposition
  • 26.11 Checking Status of Letter of Protest
  • 26.12 Application May Be Approved for Publication Even Though Letter of Protest Was Granted
  • 26.13 Petition to Director from Denial of Letter of Protest
  • 26.14 Requesting Copies of Letters of Protest

Chapter 27. CONCURRENT USE PROCEEDINGS

  • 27.01 Overview
  • 27.02 Geographic Rights Not Determined in Opposition and Cancellation Proceedings
  • 27.03 Contents of Concurrent Use Application
  • 27.04 Applications and Registrations Subject to Concurrent Use Proceedings
  • 27.05 Sequence of Events in Concurrent Use Proceeding
  • 27.06 Determining Which Parties Are “Junior” or “Senior”
  • 27.07 Requirements for Concurrent Use Registration
  • 27.08 Use Prior to Filing Date and Innocent Adoption
  • 27.09 The No Likelihood of Confusion Requirement
  • 27.10 The Burden of Proof Is on the Concurrent Use Applicant
  • 27.11 Concurrent Use Settlement Agreements
  • 27.12 The Issue of Territorial Expansion
  • 27.13 Motion to Amend Geographically Unrestricted Application to a Concurrent Use Application
  • 27.14 Terminating Opposition Proceeding in Favor of Concurrent Use Proceeding
  • 27.15 Terminating Cancellation Proceeding in Favor of Concurrent Use Proceeding
  • 27.16 Is the Excepted User Entitled to a Concurrent Use Registration?
  • 27.17 Concurrent Use and Territorial Assignments
  • 27.18 Geographic Limitations and Section 7 of the Lanham Act
  • 27.19 The Difference Between Concurrent Use Registration and the “Limited Area” Defense

Chapter 28. APPEAL OF BOARD DECISIONS

  • 28.01 Overview of Appellate Options
  • 28.02 Appeal to the Federal Circuit
  • 28.03 The Board's Decision Must Be Appealable
  • 28.04 Standard ofReview
  • 28.05 Question of Law or Fact: Specific Issues
  • 28.06 Federal Circuit Will Not Consider Issues Raised for the First Time on Appeal
  • 28.07 Sanctions for Frivolous Appeal
  • 28.08 Appeals to the Federal Circuit from U.S. District Courts
  • 28.09 Review of Board Decision by Civil Action
  • 28.10 Appeals in Ex Parte Cases

Chapter 29. TRADEMARK PROSECUTION STRATEGIES

  • 29.01 Overview
  • 29.02 The Process of Trademark Prosecution
  • 29.03 Prosecution Strategies
  • 29.04 Amending Application to Claim Secondary Meaning
  • 29.05 Arguing “in the Alternative” Regarding Inherent Distinctiveness and Secondary Meaning
  • 29.06 Amending Application to Request Registration on the Supplemental Register
  • 29.07 Arguing “in the Alternative” Regarding Secondary Meaning and the Supplemental Register
  • 29.08 Combining Tiers of Alternative Arguments
  • 29.09 Requesting Reconsideration of Final Refusal
  • 29.10 Responding to Disclaimer Requirements
  • 29.11 Time Limitations on Amending Application
  • 29.12 Procedure for Submitting Evidence in Ex Parte Proceeding
  • 29.13 Evidence Submitted with Request for Reconsideration of Final Refusal
  • 29.14 Types of Evidence Submitted During Prosecution
  • 29.15 Substantive Grounds for Refusal of Registration

Chapter 30. EX PARTE APPEALS

  • 30.01 Overview of Ex Parte Appeals
  • 30.02 “Requirements” and “Refusals” Issued by the Examining Attorney
  • 30.03 Sequence of Events in an Ex Parte Appeal
  • 30.04 Time Limit for Filing Ex Parte Appeal
  • 30.05 Methods of Filing Ex Parte Appeal
  • 30.06 Fee for Ex Parte Appeal
  • 30.07 Handling Refusal or Requirement for Less Than All Classes
  • 30.08 Contents of Notice of Ex Parte Appeal
  • 30.09 The Examining Attorney's “Requirement” or “Refusal” Must Be Final and Appealable
  • 30.10 Appealable Matter Versus Petitionable Matter
  • 30.11 Interplay Between Request for Reconsideration and Ex Parte Appeal
  • 30.12 Procedure for Submitting Evidence in Ex Parte Proceeding
  • 30.13 Cases Where the Board Excluded Evidence as Untimely
  • 30.14 The Board Will Consider Late-Filed Evidence Under Limited Circumstances
  • 30.15 Requesting Remand of Application for Purpose of Submitting Additional Evidence
  • 30.16 Situations in Which Additional Evidence Can Be Submitted on Appeal
  • 30.17 Action on Application Following Remand
  • 30.18 Evidence Submitted with Request for Reconsideration of Final Refusal
  • 30.19 Briefing Schedule for Appeal
  • 30.20 Form and Length of Briefs
  • 30.21 Oral Argument in Ex Parte Appeal
  • 30.22 Remand of Application for Further Examination at Request of the Board
  • 30.23 Remand of Application for Further Examination at Request of Examining Attorney
  • 30.24 Cancellation or Expiration of Registration Cited in Support of Likelihood-of-Confusion Refusal
  • 30.25 The Board's Decision in an Ex Parte Appeal
  • 30.26 Request for Reconsideration of Final Decision in Ex Parte Appeal
  • 30.27 Appeal to Federal Circuit or District Court

Appendices

Table of Cases

Index

 

 

 

 

Volumes