What does the Trademark Trial and Appeal Board do?

The Trademark Trial and Appeal Board is an administrative board, within the United States Patent and Trademark Office that hears and decides adversary proceedings between two parties, namely, oppositions (if someone opposes a trademark after publication in the Official Gazette ) and cancellations (if someone seeks to cancel an existing trademark registration). The Trademark Trial and Appeal Board also handles interference and concurrent use proceedings, as well as appeals of final refusals issued by United States Patent and Trademark Office Trademark Examining Attorneys within the course of the prosecution of trademark applications.

The Trademark Trial and Appeal Board is empowered to determine only the right to register. The Trademark Trial and Appeal Board’s determination of registrability does not require in every instance a decision on every pleaded claim, and the Board uses its discretion to decide only those claims necessary to enter judgment and dispose of the case. The Board is not authorized to determine the right to use, nor may it decide broader questions of infringement or unfair competition. Similarly, the Board, being an administrative tribunal, has no authority to declare any portion of the Act of 1946, or any other law, unconstitutional.

Essentially if there is a dispute as to whether or not a trademark should be a registered trademark, that dispute would be heard by the Trademark Trial and Appeal Board. Remember there is a difference between common law trademarks and registered trademarks. The Trademark Trial and Appeal Board’s review is limited to whether or not a trademark may be a registered trademark.

The Trademark Trial and Appeal Board has jurisdiction over four types of inter partes proceedings, namely, oppositions, cancellations, interferences, and concurrent use proceedings.

An opposition is a proceeding in which a person seeks to prevent a trademark from being placed on the Principal Register. “Any person who believes that he would be damaged by the registration of a mark” may, upon payment of a fee, file an opposition to the registration of the trademark, but the opposition may be filed only as a timely response to the publication of the trademark, under Trademark Act § 12(a), 15 U.S.C. § 1062(a), in the Official Gazette of the United States Patent and Trademark Office.

A cancellation proceeding is a proceeding in which a person seeks to cancel an existing registration of a trademark on the Principal or the Supplemental Register. “Any person who believes that he would be damaged by the registration of a mark” may, upon payment of the prescribed fee, file a petition to cancel thereto, but the petition to cancel may only be filed after the issuance of the registration.

An interference is a proceeding in which the Trademark Trial and Appeal Board determines which owner of a trademark is entitled to registration when multiple people are applying for the same trademark or someone is applying for a trademark that has already been registered. An interference proceeding can only be declared by the United States Patent and Trademark Office when one of the owners of the trademark can demonstrate to the Director of United States Patent and Trademark Office that there are extraordinary circumstances that would unduly prejudice the person requesting the interference, if the interference is not granted.

A concurrent use proceeding is a proceeding in which the Trademark Trial and Appeal Board determines whether one or more applicants is entitled to a concurrent registration, that is, a registration with conditions and limitations, fixed by the Trademark Trial and Appeal Board, ordinarily as to the geographic scope of the applicant’s mark or the goods and/or services on or in connection with which the mark is used.

The Trademark Trial and Appeal Board also hears appeals from trademark owners who are attempting to register their trademark and have been issued a final refusal.

The Trademark Trial and Appeal Board is a complex administrative board within the United States Patent and Trademark Office. Trademark Trial and Appeal Board is like a court, but has rules and powers that are different than a court. If you have questions about the Trademark Trial and Appeal Board it is best to consult with an experienced trademark attorney.