Cancellation proceeding at USPTO

Asked over 1 year ago - Miami, FL

Can you take a case out of TTAB and put it before the federal court during the cancellation proceedings?

Additional information

What are some of the grounds for doing so?

Attorney answers (4)

  1. David Wade Barman

    Contributor Level 11

    3

    Lawyers agree

    1

    Answered . Hi. Typically, once an administrative proceeding has begun, you cannot remove. Possible exceptions could be the existence of non-trademark claims, the need for injunctive relief beyond the registration of a mark, and the desire to obtain damages.

    Here is a good article from INTA on the topic of TTAB v. Fed. Court.

    http://www.inta.org/INTABulletin/Pages/TTABorFe...

  2. Alexander H Butterman

    Pro

    Contributor Level 13

    4

    Lawyers agree

    1

    Answered . You could if it is your case that you are withdrawing but typically the procedure is that a federal lawsuit is filed after the cancellation action and the TTAB will then suspend the cancellation action pending the outcome of the federal action. The TTAB knows to be subordinate to the federal action, assuming both are for likelihood of confusion & infringement between the marks, because the TTAB can only decide if the registration can remain registered. The federal court can decide that as well as if there has been or there will be consumer confusion & lost sales & if monetary damages or an injunction should issue.

    Hopefully, you are working with a trademark attorney in these forums because your likelihood of success without one is at best marginal.

    Alex Butterman is a trademark attorney with Staas & Halsey LLP (http://www.staasandhalsey.com), a Washington, D.C.... more
  3. James Juo

    Contributor Level 16

    2

    Lawyers agree

    Answered . In general, you would not "take a case out of TTAB and put it" in federal court. Rather, you might file a federal lawsuit in US District Court involving the same trademark and then seek to stay the TTAB cancellation proceeding in view of the pending district court proceeding. This might occur where the federal lawsuit includes a claim, counterclaim, or defense that the trademark registration is invalid and should be cancelled. The merits of this approach for your particular case should be discussed with an experienced trademark attorney.

    This answer is for informational purposes only. It is not intended as specific legal advice regarding your... more
  4. Bruce E. Burdick

    Pro

    Contributor Level 20

    Answered . YES, effectively I can, however the way that is done is to simply file a federal suit in a US District Court and notify the TTAB, which will routinely suspend the cancellation proceeding until the suit (at least the invalidation portion of the suit) is terminated. While that is discretionary with the TTAB, they do it so as to not waste their time on cases that will be resolved in court.

    If by "you" you meant "I" then no YOU probably can't. You need a lawyer to do that properly. Otherwise you will make a big mess of things and irritate both TTAB and the USDC. If winning is important you will use an attorney.

    I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is... more

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