The United States Trademark Trial and Appeal Board (“TTAB”) has the authority to determine numerous trademark registration issues, including whether a trademark is eligible for federal trademark registration and whether one party’s trademark is entitled to registration over another party’s trademark based upon priority of use and likelihood of consumer confusion. The TTAB does not have the authority to award damages for trademark infringement or prevent the use of an infringing trademark in the marketplace.
In other words, the TTAB decides whether a party or which party is entitled to trademark registration and thus the trademark rights conferred by it. However, the TTAB cannot stop a third party from infringing your trademark in the marketplace.
Before spending thousands and potentially hundreds of thousands of dollars on a dispute before the TTAB aimed at preventing the ownership of a registration, trademark owners confronted with the option of opposing or canceling a third party’s trademark registration at the TTAB should first consider whether the proper forum for the dispute is in court. If the subject mark is infringing your trademark, likely to confuse consumers as to the source of the parties’ respective products, diluting your mark and/or tarnishing the reputation of your mark and brand, a court action may be the best option.
Furthermore, even if you receive a favorable decision at the TTAB, that decision may not be recognized in a later court action between the parties involving the same marks and products. Accordingly, if you have a pending case or an option for a case at the TTAB, consider strategy early and whether the end game is to prevent the use of an infringing mark by the opposing party, receive payment for damages and possibly get attorneys’ fees or if you are only seeking a limiting agreement from the opposing party.
Simply preventing the registration of a third party’s mark may not be the result you need. When the target mark is vulnerable to a trademark registration opposition or cancellation proceeding at the TTAB, one strategy is to file a complaint with the TTAB and simultaneously file a complaint in court. Once the complaint is filed with the court, file a petition to suspend the case at the TTAB pending the outcome of the court action. Another strategy is to file a proceeding at the TTAB and seek settlement whereby the opposing party agrees to discontinue the use of the infringing mark. If settlement is not reached quickly, your next step is to consider whether to suspend the TTAB action and file a court action.
Before any action is taken in a trademark dispute, it is always best to know what you want before the guns are drawn, the merits of your case and your strategy. Otherwise, you just might end up wasting your time, money and resources.