Miscellaneous Changes to Trademark Trial and Appeal

Board Rules 81 Fed. Reg. 69950 (October 7, 2016),

Summary by Rule Number

(Extracted from https://www.uspto.gov/sites/default/files/documents/Chart%20Summarizing%20Rule%20Changes%2010-7-16.pdf?utm_campaign=subscriptioncenter&utm_content=&utm_medium=email&utm_name=&utm_source=govdelivery&utm_term=

and also https://www.uspto.gov/sites/default/files/documents/81%20FR%2069950.pdf)


SUMMARY: The United States Patent and Trademark Office (‘‘USPTO’’ or ‘‘Office’’) is amending the Trademark Rules of Practice (‘‘Trademark Rules’’ or ‘‘Rules’’), in particular the rules pertinent to practice before the Trademark Trial and Appeal Board (‘‘Board’’), to benefit the public by providing for more efficiency and clarity in inter partes and ex parte proceedings. Certain amendments are directed to reducing the burden on the parties, to conforming the rules to current practice, to updating references that have changed, to reflecting technologic changes, and to ensuring the usage of standard, current terminology. This final rule also furthers strategic objectives of the Office to increase

end-to-end electronic processing.


Executive Summary: Purpose: The amendments to the rules emphasize the efficiency of electronic filing, which is already utilized by most parties in Board proceedings. In particular, all submissions will be filed through the Board’s online filing system, the Electronic System for Trademark Trials and Appeals (‘‘ESTTA’’) (available at http://www.uspto.gov), except in certain limited circumstances. To simplify proceedings, the Office is resuming service requirements for notices of opposition, petitions for cancellation, and concurrent use proceedings, and is requiring parties to serve all other submissions and papers by email. The amended rules promote other efficiencies in proceedings, such as imposing discovery limitations, and allowing parties to take testimony by affidavit or declaration, with the option for oral cross-examination. The proportionality requirement implemented in the 2015 amendments to the Federal Rules of Civil Procedure is expressly reflected in the Board’s amended rules, which in part adapt to recent changes to the Federal Rules of Civil Procedure while taking into account the administrative nature of Board proceedings.


Other amendments address the Board’s standard protective order and codify recent case law, including the submission of internet materials. Recognition of remote attendance at oral hearings is codified, and new requirements for notification to the Office and the Board when review by way of civil action is taken are added in order to avoid premature termination of a Board proceeding. The amendments also make minor changes to correct or update certain rules so that they clearly reflect current Board practice and terminology.


Rule(s)

Subject(s)

All

Effective January 14, 2017 for all cases (including cases pending prior to 1/14/17)

Global

ADDS: reserved rules §§ 2.94, 2.95, 2.97, 2.102(e), 2.103(e), 2.143

UPDATES: as necessary renumbering, cross references to the Trademark Rules of

Practice and the Federal Rules of Civil Procedure.

AMENDS: “paper” to “submissions”; “examiner” to “examining attorney”; “notification”

to “notice of institution” or “notice”; “e-mail” to “email”; “Patent and Trademark Office”

to “United States Patent and Trademark Office”; “his” to “his or her” or “its”; “him” to

“the witness”

DELETES: as necessary the word “written”

AMENDS: response and reply briefing deadlines for motions from 15 to 20 days

AMENDS: “Assignment Services Division” to “Assignment Recordation Branch”

Concurrent Use

Proceedings


2.99(d)(1), (2) and (3)

ADDS: In (d)(1) the rule now provides that the Board’s notice of institution will include

a web link or web address to the concurrent use application proceeding in the Board’s

database of electronic case files (TTABVUE).

DELETES: In (d)(1) the requirement for

a concurrent use applicant (plaintiff) to serve the concurrent use application on the

applicant, registrant or user specified as a concurrent user (defendant).

AMENDS: The wording in (d)(2) and (3) is amended to add clarity.

Opposition



2.101(a) and (b)

DELETES: The requirement for a plaintiff to serve the complaint and provide proof of

service thereof.

2.101(b)(1), (2) and (3)

ADDS: All notices of opposition must be filed through ESTTA. Paper filing of the notice

of opposition against Section 1 or 44 applications only allowed when ESTTA is

unavailable due to technical problems or when extraordinary circumstances are

present. Paper filings must be accompanied by a Petition to the Director under § 2.146

with fees therefor. Oppositions against Section 66(a) applications MUST be filed

through ESTTA - no exceptions.

2.101(c)

AMENDS: (d)(1) is redesignated as last sentence in (c).

2.101(d)

AMENDS: (d)(2) is redesignated as (d). CLARIFIES: Oppositions filed in ESTTA

cannot be filed without proper fee. ADDS: Paper opposition not accompanied by

required fee sufficient to pay in full for each named party opposer for each class

opposed may not be instituted. DELETES: Hierarchy of instituting opposition with

insufficient fees.

2.101(e)

AMENDS: (d)(4) is redesignated as (e). ADDS: Filing date is date of electronic receipt

of the notice of opposition. DELETES: Requirement for proof of service to receive filing

date. ADDS: Paper filing date determined in accordance with §§ 2.195-2.198.

2.102(a)(1) and (2)

ADDS: Request for extension of time to file notice of opposition must be filed through

ESTTA. Paper filing of a request to extend time to oppose Section 1 or 44 applications

only allowed when ESTTA is unavailable due to technical problems or when

extraordinary circumstances are present. Paper filings must be accompanied by a

Petition to the Director under § 2.146 with fees therefor. AMENDS: Moves sentence

that provides that requests to extend opposition period against Section 66(a)

applications MUST be filed through ESTTA, no exceptions, from § 2.102(a)(2) to

§ 2.102(a)(1).

2.102(b)

AMENDS: The word “should” is replaced with “must.”

2.102(c)(1), (2) and (3)

ADDS: A sixty-day extension is not available as a first extension of time to oppose.

After extensions totaling 90 days, and only one final request for a 60-day extension of

the opposition period based upon written consent, stipulation or a showing of

extraordinary circumstances, no other time period will be allowed.

2.102(d)

ADDS: New subsection providing filing date is date of electronic receipt of the

extension request or for paper filing determined in accordance with §§ 2.195-2.198.

2.104(a)

ADDS: Clarifies that ESTTA requires selection of relevant grounds, and the required

accompanying statement (complaint) supports and explains the grounds.

2.104(c)

ADDS: New subsection provides that oppositions to Section 66(a) applications are

limited to the goods, services and grounds set forth on ESTTA cover sheet.

2.105(a)

DELETES: Requirement that plaintiff provide proof of service of the complaint on

defendant. ADDS: The notice of institution sent by the Board will include a web link or

web address to access the electronic proceeding record in the Board’s database of

electronic case files (TTABVUE), and that notice constitutes service of the notice of

opposition on the applicant.

2.105(b)(1), (2) and (3);

2.105(c)(1), (2) and (3)

ADDS: Notice will be sent to the email or correspondence address of record for

opposers and applicants.

2.106(a)

ADDS: Default may occur after the time to answer is reset, and the failure to file a

timely answer tolls all deadlines, including the discovery conference.

2.106(b)(1), (2) and (3)

ADDS: New subsection (1) requires that answers must be filed through ESTTA and

paper filing is allowed only when ESTTA is unavailable due to technical problems or

extraordinary circumstances are present. Paper filing must be accompanied by a

Petition to the Director under § 2.146 with the fees therefor. AMENDS: Specifies in

redesignated subsection (2) that a reply to an affirmative defense shall not be filed,

and new subsection (3) requires an applicant to promptly inform the Board of the filing

of another related proceeding. Subsection (3)(iv) clarifies that the Board may reset

times as it may deem necessary.

2.107(a)

ADDS: An opposition against a Section 1 or 44 application may not be amended to

add a joint opposer.

2.107(b)

ADDS: An opposition against a Section 66(a) application may not be amended to add

a joint opposer and the grounds, goods, services, and named opposers are limited to

those identified in the ESTTA cover sheet.

Cancellation



2.111(a) and (b)

DELETES: The requirement for plaintiff to serve the complaint on the defendant and

to provide proof of service thereof.

2.111(c)(1) and (2)

ADDS: A petition for cancellation must be filed through ESTTA. Paper filing is only

allowed when ESTTA is unavailable due to technical problems, or when extraordinary

circumstances are present. Paper filing must be accompanied by a Petition to the

Director under § 2.146 with the fees therefor. Timeliness of paper petition will be

determined in accordance with §§ 2.195-2.198. DELETES: Hierarchy of instituting

cancellation with insufficient fees.

2.111(d)

ADDS: New subsection (d) requires fees for each party and each class for which

cancellation is sought. Clarifies that ESTTA requires all fees, but paper petition not

accompanied by a fee sufficient to pay in full for each named petitioner for each class

sought to be cancelled may not be instituted.

2.111(e)

ADDS: New subsection (e) provides that the filing date of a petition is the date of

electronic receipt of the petition and required fee. Filing date for paper petitions will be

determined in accordance with §§ 2.195-2.198.

2.112(a) and (b)

ADDS: Requirement to provide current email address(es) of the current owner of the

registration to the best of petitioner’s knowledge. Clarifies that ESTTA requires

petitioner to select relevant grounds, and the required accompanying statement

supports and explains the grounds. 

2.113(a)

DELETES: Service requirement for petitioners. ADDS: The notice will include a web

link or web address to access the electronic proceeding record and constitutes service

to the registrant of the petition.

2.113(b) and (c)

ADDS: New subsection (1) requires answer to be filed through ESTTA. Paper filing is

only allowed when ESTTA is unavailable due to technical problems, or when

extraordinary circumstances are present, and must be accompanied by a Petition to

the Director under § 2.146 with the fees therefor. AMENDS: Subsection (2) specifies

that a reply to an affirmative defense shall not be filed, and clarifies that pleaded

registrations include registrations identified in counterclaims. ADDS: In subsection (3)

requires party in position of respondent and counterclaim plaintiff to inform the Board

of another proceeding involving the claim. ADDS: Board may reset various deadlines

as it may deem necessary.

Procedure in Inter Partes

Proceedings



2.116(e) and (g)

ADDS: Includes submission of notices of reliance, declarations and affidavits in the list

of items submitted during testimony period which correspond to trial in court

proceedings. AMENDS: Clarifies that standard protective order is automatically

imposed in inter partes proceedings. ADDS: Board may treat as not confidential

improperly designated material.

2.117(c)

ADDS: Board may sua sponte suspend proceedings and suspensions may be

automatically approved by ESTTA, but Board has discretion to condition approval of

consented suspension request on providing information about the status of settlement

talks, discovery activities, or trial activities.

2.118

ADDS: Notification of non-delivery of Office notice in electronic form will also prompt

additional notice by publication.

2.119(a) and (b)

ADDS: All submissions and papers in inter partes cases, except for notices of

opposition or petitions to cancel must be served by email unless otherwise stipulated.

If not possible because of technical problems or extraordinary circumstances and there

is no stipulation, serving party must show by written explanation accompanying the

submission or paper that email service was attempted but could not be made.

2.119(c)

DELETES: In view of email service, the additional five days added to a prescribed

period. (All response dates initiated by a service date are twenty days as noted in

Global changes.)

2.119(d)

ADDS: Priority Mail Express option is not available to any party if a party to an inter

partes proceeding is not domiciled in the United States and is not represented by an

attorney located in the United States.

2.120(a)(1)

ADDS: Expressly adopts proportionality in process and procedure in discovery.

2.120(a)(2)(i), (2)(iii) and 2(iv)

ADDS: Option for Board to sua sponte participate in discovery conference. Option for

Board to sua sponte issue an order regarding expert discovery. Nonexhaustive list of

items to which parties may stipulate. Permits limited extensions of the discovery period,

but requires that expert disclosure deadline must always be scheduled prior to the

close of discovery.

2.120(a)(3)

ADDS: All discovery requests must be served early enough in the discovery period so that responses will be due no later than the close of discovery.

2.120(e)

ADDS: Requests for production are limited to 75 with the option to move for additional

requests upon a showing of good cause. If party believes requests exceed allowed

number, the party shall serve a general objection as to excessive number. Clarifies

that discoverable items include electronically stored information as well as documents

and tangible things.

2.120(f)(1) and (2)

ADDS: Clarifies that discoverable items include electronically stored information as

well as documents and tangible things. Motion to compel initial disclosures must be

filed within 30 days after the deadline therefor. Motion to compel discovery must be

filed prior to the deadline for pretrial disclosures for the first testimony period. When

motion to compel is filed after discovery has closed, parties need not make pretrial

disclosures until directed to do so by the Board.

2.120(h)

AMENDS: 2.120(g) (sanctions) redesignated as 2.120(h).

2.120(i)

ADDS: Requests for admission are limited to 75 with the option to move for additional

requests upon a showing of good cause. If party believes requests exceed allowed

number, the party shall serve a general objection as to excessive number. Party may

make one comprehensive request for admission for authenticating specific documents

produced by an adverse party or specifying which of those documents cannot be

authenticated.

2.120(i)(1) and (2)

ADDS: A motion to test sufficiency of a response or objection must be filed prior to the

deadline for pretrial disclosures for the first testimony period. When the motion is filed

after discovery has closed, parties need not make pretrial disclosures until directed to

do so by the Board.

2.120(j)(1), (2) and (3)

ADDS: Circumstances when Board may convene a telephone conference for

consideration of stipulation or motion broadened to whenever Board determines it

would be beneficial. AMENDS: Convening pretrial conference due to complexity of

issues is limited to exercise only by Board, on Board’s initiative and on such terms as

the Board may order. ADDS: Parties may not make a recording of the conferences.

2.120(k)

AMENDS: 2.120(j) (use of discovery deposition, answer to interrogatory, admission or

written disclosure) redesignated as 2.120(k).

2.120(k)(2), (3)(ii) and (7)

AMENDS: Timing for motion to use discovery deposition is changed from the time of

the offer of the deposition in evidence to when making pretrial disclosures. ADDS:

Documents obtained through disclosure or under Rule 34 of the Fed. R. Civ. P. may

be made of record under admission or stipulation from the producing party that

authenticates the documents. Authenticated produced document added to list of

discovery responses made of record.

2.121(a)

ADDS: The resetting of a party’s testimony period will result in the rescheduling of the

remaining pretrial disclosure deadlines without action by any party.

2.121(c)

ADDS: In addition to being extended, testimony periods may be shortened. When a

motion to extend the testimony period is denied, associated pretrial disclosure

deadlines may remain as set.

2.121(d)

ADDS: Stipulations to reschedule pretrial disclosure and trial dates must be filed

through ESTTA with the relevant dates set forth and an express statement that all

parties agree to the new dates.

2.121(e)

ADDS: In rule for pretrial disclosures, clarifies that testimony of a witness may be taken

upon oral examination or presented in the form of an affidavit or declaration. Expressly

provides for motion to quash a noticed testimony deposition of a witness not identified

or improperly identified in pretrial disclosures. Expressly provides for motion to strike

when testimony presented by affidavit or declaration.

2.122(a)

ADDS: Expressly recognizes evidentiary stipulations, and that evidence made of

record by one party may be used by any party for any permitted purpose.

2.122(b)(2)

ADDS: Expressly provides that statements made in an affidavit or declaration in

application and registration files are not testimony, and establishing the truth of these

or any other matters asserted in the files of these applications and registrations shall

be governed by the Fed. R. Evid., Fed. R. Civ. P., 28 U.S.C., 37 CFR.

2.122(d)(2)

ADDS: Registrations may be made of record under testimony or notice of reliance by

submitting a current copy of information from the Office’s electronic database records.

2.122(e)(2)

ADDS: Expressly provides for submission of internet materials under notice of reliance.

2.122(g)

ADDS: New subsection sets out general requirements for notices of reliance.

2.123(a)(1) and (2)

ADDS: Testimony may be submitted in the form of an affidavit or declaration subject

to the right to oral cross examination. Deposition in foreign country may, upon motion,

be by affidavit or declaration subject to cross-examination by written questions.

Testimony of witness noticed for deposition upon written questions may, upon motion,

be taken by oral examination if witness is present in the United States.

2.123(b)

DELETES: Option to stipulate to testimony by affidavit.

2.123(c)

DELETES: Option to notice the oral deposition of a witness by description. ADDS:

Process to elect and take oral cross-examination.

2.123(e)

ADDS: Cross-examination is available for oral and affidavit/declaration testimony.

2.123(f)(2)

AMENDS: Process for filing testimony deposition transcripts is amended to require

filing through ESTTA. Exhibits that by their nature (e.g., DVDs) cannot be transmitted

through ESTTA shall be submitted through mail by the party.

2.123(g)(1) and (3)

ADDS: Deposition transcripts must be submitted in full-sized format and may not be

condensed to multiple pages per sheet, and must include a word index.

2.123(i)

DELETES: Provision for inspection of depositions by parties at the Board or printed for

inspection. AMENDS: Remaining subsections are appropriately redesignated.

2.123(j)

ADDS: Redesignated 2.123(j) includes declarations and affidavits as being subject to

objections to admissibility and clarifies that such objections may not be considered until

final hearing.

2.124(b)(3), (d)(1) and (d)(3)

ADDS: New subsection (3) provides process for noticing cross-examination by written

question of witness providing testimony by affidavit or declaration and subsection (d)(1)

incorporates such cross-examination. New subsection (d)(3) mandates service of

these written questions, responses and cross-examination questions be in accordance

with § 2.119(b).

2.125(a) and (f)

ADDS: New subjection (a) provides for filing and service of affidavit and declaration

testimony. AMENDS: Redesignated subsection (f) permits sealing of a part of an

affidavit or declaration.

2.126(a)

ADDS: Requires all submissions be filed through ESTTA. Text must be in at least 11

point type and double-spaced. Exhibits must be submitted electronically as an

attachment and must be clear and legible.

2.126(b)

ADDS: Paper filing only allowed when ESTTA unavailable due to technical problems,

or when extraordinary circumstances are present and must be accompanied by a

written explanation of such technical problems or extraordinary circumstances.

(Pleadings and extensions of time to oppose require a Petition.) DELETES: Provision

that provides ESTTA as merely an alternative for filing.

2.127(a)

ADDS: Clarifies that the time for filing a reply brief not only will not be extended, but

also will not be reopened.

2.127(c)

ADDS: Conceded matters and other matters not potentially dispositive may be acted

upon by a paralegal or by ESTTA, and motions disposed of By the Board have the

same legal effect as a three-judge panel.

2.127(d)

AMENDS: The wording “will be” is replaced with “is” such that the filing of potentially

dispositive motions serves to automatically suspend proceedings with respect to all

matters not germane to the motion.

2.127(e)(1) and (2)

AMENDS: The deadline for filing summary judgment motions is moved up from prior

to the commencement of the trial period to prior to the deadline for pretrial disclosures.

ADDS: Clarifies that the time for filing a motion under 56(d) or a reply brief not only will

not be extended, but also will not be reopened. ADDS: Parties may stipulate that

summary judgment materials be considered at trial as trial evidence.

2.128(a)(3)

ADDS: Clarifies procedure when the Board issues a show cause order for failure to file

a brief and there is no evidence of record. If the party in the position of plaintiff responds

to the order showing good cause why judgment should not be entered based on loss

of interest, but does not move to reopen its testimony period based on demonstrable

excusable neglect, judgment may be entered against plaintiff for failure to take

testimony or submit evidence.

2.128(b)

ADDS: Evidentiary objections may be set out in a separate appendix that does not

count against the briefing page limit. Briefs exceeding the page limit may not be

considered by the Board.

2.129(a) and (b)

ADDS: At the discretion of the Board, parties and members of the Board may attend

hearings remotely. The Board may deny a request to reset a hearing for lack of good

cause or if multiple requests for rescheduling have been filed.

2.130

AMENDS: Clarifies that during an inter partes proceeding if facts appear which in the

opinion of the examining attorney render the mark in the application unregistrable, the

examining attorney should request a remand of the application from the Board.

2.132(a)

ADDS: Board may sua sponte grant judgment where it is clear from the proceeding

record that plaintiff has not taken testimony or offered other evidence.

2.134(b)

ADDS: Rule governing registrations canceled during proceeding now includes

reference to Madrid registrations.

2.136

ADDS: Rule governing status of application on termination of a proceeding now also

includes status of registrations on termination of a proceeding.

Appeals



2.142(b)(2) and (3)

ADDS: Clarifies that examining attorney briefs need not be filed through ESTTA.

(Trademarks has its own electronic filing system.) Reply briefs are limited to 10 pages.

New subsection (3) requires that citations to evidence in briefs reference the electronic

application record by date, the name of the paper, and the page number in the

electronic record.

2.142(c)

ADDS: Briefs should include reference to compliance with requirements not the subject

of the appeal.

2.142(d)

AMENDS: Clarifies that to enter evidence into the record after appeal, the applicant or

examining attorney should request remand.

2.142(e)(1) and (2)

ADDS: At the discretion of the Board, applicant, the examining attorney and members

of the Board may attend hearings remotely. DELETES: Replacement examining

attorney must be from the same examining division.

2.145

AMENDS: The provisions for seeking review of a Board decision are reorganized to

align with the analogous rules governing judicial review of Patent Trial and Appeal

Board decisions, including amending filing times from two months to 63 days. Times

for taking action reference the applicable section of the Act or rules that set out time

requirements. If requesting reconsideration of a decision, parties must do so before

filing a notice of appeal. All notices of appeal and notices of election must be filed with

the Office of the General Counsel and a copy with the Board via ESTTA. Parties

seeking review of ex parte decisions by way of civil action must serve the summons

and complaint on the Director addressed to the Office of the General Counsel and a

copy of the complaint via ESTTA. Parties commencing a civil action for review of a

Board inter partes decision must file a notice thereof with the Board via ESTTA and

identify the case name, case number and court, and a copy of the complaint may be

filed with the notice. Requests to extend time to seek review must be filed to the

attention of the Office of the Solicitor and copied on the Board via ESTTA. Filing all

notices with the Board via ESTTA avoids premature termination of proceedings.

General Information and

Correspondence



2.190(b)

ADDS: Provides online address for ESTTA.

2.191

ADDS: Mandates documents filed with the Board must be through ESTTA.

2.195(d)(3)

DELETES: Ability to file notices of ex parte appeal by facsimile.



 See also    37 CFR Part 2 [Docket No. PTO–T–2009–0030]  RIN 0651–AC35

Miscellaneous Changes to Trademark Trial and Appeal Board Rules of Practice

(From https://www.uspto.gov/sites/default/files/documents/81%20FR%2069950.pdf)


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