Experienced Representation In Trademark Appeals and Adversarial Proceedings

Many trademark disputes are heard in federal courts. However, the United States Trademark and Patent Office allows businesses and other adversaries to challenge trademark applications in an administrative setting. Prompt action to protect your brand may involve monitoring trademark applications for marks similar to those used by your company, filing a notice of opposition, or initiating a proceeding before the Trademark Trial and Appeal Board ("TTAB") to cancel an issued trademark registration. Similarly, the denial of a trademark application may necessitate an appeal to the TTAB.

Braxton, Hilton & Perrone comprises three partner-level attorneys with more than 35 years of combined intellectual property law experience. Our new breed of law firm is founded on the principle that small, midsized, and large businesses need responsive intellectual property counsel to take swift and decisive action when their trademarks are at risk. Our attorneys work efficiently to quickly build a position of strength to protect the trademark rights of our clients.

Understanding Trademark Appeals, Opposition And Cancellation Proceedings

Our full-service trademark lawyers represent businesses of all sizes. We vigorously defend and prosecute both opposition and cancellation proceedings to safeguard the trademark rights of our clients. If you have concerns about protecting your company's trademarks, we invite you to call 469-814-8296 to learn how we can help. Below, we have listed some common trademark questions that arise.

The USPTO denied my trademark application.

Can I appeal the examiner's decision?

Yes, if done so in a timely manner. The USPTO rigorously reviews each trademark application for conflicts with existing marks. That does not always mean that the denial of a trademark registration is proper. If your application has been denied, the decision to appeal the denial requires a full understanding of your legal options, as well as the risks, costs and potential benefits of seeking an appeal. Our trademark lawyers will thoroughly review the examining attorney's decision and provide straightforward advice concerning your legal options. Overcoming an adverse decision can be complicated and an appeal is not always recommended. We will fully evaluate and explain the cost-benefit analysis in connection with a possible appeal of the examining attorney's decision.

One of my competitors has obtained approval for a trademark that compromises my brand.

Can I oppose registration of the mark?

Yes, if done so in a timely manner. Trademark law blends statutory law with common law principles. While trademark registration is an effective tool to provide protection against competitors usurping your goodwill, disputes over the use of a mark can arise during the registration process. A business or individual may oppose a third party's attempt to register a trademark if the proposed new mark is confusingly similar to its own branding efforts, or if the applied-for trademark is not worthy of protection under the law. This can be a cost-effective method to resolve trademark disputes without initiating a costly trademark infringement lawsuit.

Another company's registered trademark is causing confusion for my clients.

Can I get the USPTO to cancel a registered mark to protect my brand?

The TTAB may cancel a registration for a trademark that would cause confusion in the marketplace, or that is determined to be invalid. In general, a petition to cancel a trademark registration must be filed within five years of the date of registration. Cancellations may be based upon proof that:

  • The registered mark is confusingly similar to a trademark (registered or non-registered) that was used in commerce before the use of registered mark began
  • The registered mark has been abandoned by the trademark holder
  • The trademark is generic or merely descriptive in nature
  • The registered mark was obtained by fraud
  • The registered mark is not owned by the named registrant

Protect Your Company's Image — Call To Learn More

The experienced trademark lawyers at Braxton, Hilton & Perrone will fully analyze your legal position and provide effective representation to protect your business goals. To schedule a free initial consultation over the phone or in our Plano office, call 469-814-8296 or send us an email. We are strategically located in the North Texas tech corridor and represent companies of all sizes throughout the nation.