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Guide to TTAB Practice

Guide to TTAB Practice

By Jeffery A. Handelman


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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. By Jeffery A. Handelman.

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.

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


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 ona 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 Designs7.13 Factor No. 4: Does the Design Offer a Comparatively Simple or Cheap Method of Manufacturing? 7.14 Is ColorFunctional? 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 SecondaryMeaning 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


Chapter 15. RESTRICTION PROCEEDINGS UNDER LANHAM ACT SECTION 1815.01 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 ApplicationsOriginating 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 24.01 International Aspects of Board Cases 24.02 Discovery Involving Foreign Parties 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


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