Wednesday, October 17, 2018

Challenging Marks

There are three ways that the federal registration of potentially disparaging marks can be challenged: (1) by the USPTO's refusal of registration, (2) by opposition to the registration after publication, or (3) by cancellation of the registration.

Refusal of Registration

Applications for federal trademark registration are examined by a USPTO attorney for compliance with statutory formalities, and disparaging marks are refused registration. If the registration is refused, the applicant may appeal to the TTAB in an ex parte proceeding. If there are doubts on the issue of whether a mark is disparaging, the TTAB prefers to resolve the doubt in favor of the applicant and pass the mark for publication with the knowledge that if a group does find the mark to be scandalous or disparaging, an opposition proceeding can be brought and a more complete record can be established.

Opposition and Cancellation Proceedings

If a trademark application is approved, the mark is published in the USPTO's Official Gazette. Once the mark is published, a potentially injured party has 30 days to file an opposition before the TTAB challenging the registration of the mark, or to request an extension of time.

If no opposition is filed within the required time period, the mark is registered and a third party may challenge it only by instituting a cancellation proceeding at the TTAB. Although a petition for cancellation generally must be filed within five years after registration, a petition brought under ยง 2(a)'s prohibition against registration of disparaging marks may be brought at any time. For instance, in the Washington Redskins case, the cancellation petition was filed nearly two decades after some of the REDSKINS registrations had issued.

The third-party challenger has the burden of proving that the mark is disparaging by a preponderance of the evidence. The TTAB's decision may be appealed on the administrative record to the Federal Circuit or de novo to any federal district court.

It is important to note that even if a mark is found to be disparaging, prohibition from federal trademark registration does not affect its use in commerce, and the mark may still be used in the marketplace.

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