Jonathan Hudis
Quarles & Brady LLP

Jonathan Hudis of Quarles & Brady, who recently edited the third edition of a multi-chapter guide on the USPTO’s Trademark Trial and Appeal Board, offers advice to brands on how to handle the TTAB process

How likely is it that a trademark will be able to stand up to a TTAB assessment?

The ability of a trademark or service mark to stand up to a Trademark Trial and Appeal Board (TTAB) assessment will depend on the nature of the mark, goods, services and usage of the mark at issue, and how the mark is being challenged. Is the mark too legally weak to be registered? If legally weak, has the mark nonetheless acquired customer recognition through use in the marketplace? Does another person or company have superior rights to a confusingly similar mark for the same or closely related goods or services? Should registration of the mark be cancelled, because the owner abandoned use of it? The TTAB considers these types of questions involving contests over registration of a mark.

Does the TTAB remain an effective way to foster competition and protect already-granted trademark applications?

The TTAB process is an effective way to keep confusingly similar marks off the Trademark Register, thus enhancing the strength of the marks having priority that are already registered. The TTAB process also is an effective way to keep commonly used industry terms from being registered to the exclusion of competitors who need to use these terms in their businesses, other than as trademarks or service marks.

Do trademark applicants need to be wily to ensure their trademark is accepted, or is a standard search and compliance with the rules the answer?

It is a combination. Trademark applicants need to be cautious and discerning in describing their goods and services when applying for a trademark or service mark registration. The US Patent and Trademark Office (USPTO) will not register marks using overly broad or vague descriptions, so a degree of specificity is required.

To avoid rejection on the basis that the mark is too legally weak to be registered, the trademark applicant should avoid using terms in the goods and services descriptions that employ terms that also are part of the mark itself.

Standard search protocols and compliance with the USPTO’s rules and/or procedures is certainly advised. Before applying to register a mark, it is recommended that the applicant retain competent counsel to procure a trademark search, review the search results, and render an opinion whether the mark under consideration will be refused registration or opposed by a third party on grounds of priority and likelihood of confusion.

Additionally, processing of the application will be expedited if the USPTO’s rules/procedures are followed.

What’s going on the IT side at the USPTO?

The entire trademark side of the USPTO is in the process of revamping its electronic search, filing and maintenance systems. The project is called Trademarks Next Generation, which began as an effort in 2010.

The process started with an examination of the software and hardware the USPTO was and is already using (some quite old), and then sequentially revamping and/or replacing these systems, including: internal back-end processing and storage systems, internal systems used by trademark examining attorneys, external systems used by trademark applicants, and finally, the TTAB.

Presently, the TTAB’s systems are scheduled for upgrade by 2018. Until then, the TTAB will have to manage with the systems it now has in place.

Will the revamp make challenges easier?

The revamp of the TTAB, expected in 2018, is not intended to favor one class of parties (plaintiffs) over others (defendants). The upgrade of the TTAB’s computer systems is purely technical in nature, hopefully making it easier for parties and their attorneys (whether plaintiffs or defendants) to file documents with the TTAB and to search for documents that have been filed with the TTAB.

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