I didn't cite any law in the cancellation petition with the Trademark TTAB. Should I amend? We are well into trial.

Asked over 1 year ago - New York, NY

It was my first trademark trial and I didn't cite any applicable law such as the lanham act. I wrote up the petition outlining how the mark was purely descriptive and focused my petition on that. I didn't cite the Lanham act, any case law, 15 USC § 1052. I have heard from colleagues the ttab was so focused on trademark matters it would be enough to just state the mark is descriptive, was an oversight of the EA, and provide evidence to support. Should I amend or is it fine. Upon a cursory reading of other cases, I found many others who didn't include any references. I guess my question is, will the ttab assume it is a violation of 15 USC § 1052 when they see my petition for cancellation and my outlining of how the mark is descriptive in its class?

Attorney answers (3)

  1. Gerry J. Elman

    Pro

    Contributor Level 15

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    Answered . Are you a novice attorney seeking aid and comfort from colleagues, or are you a private citizen who assumed that a trademark cancellation battle would be so easy that you could DIY?

    Have you studied the TTAB's rulebook posted on their piece of the USPTO website?

    Have you consulted the recently updated book on TTAB practice published by the American Bar Association?

    Is the mark effectively abandoned, or are you facing a real live adversary?

    Without knowing the answers to at least these questions, we're at a loss to help you.

    This posting is intended for general education and isn't "legal advice." It doesn't create or evidence an... more
  2. Frank Anthony Natoli

    Contributor Level 20

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    Answered . The TTAB does not require your legal references. If the issue is so straight forward then they will glean from the facts all they need.

    But keep in mind, an Examiner did approve the mark at one point so you are working uphill obviously without any cite references that support your position. But to your point, and to my knowledge, you would not be required to cite the Act as they know what descriptiveness is and they are accustomed to dealing with DIY non-lawyer petitions.

    These issues are not that straight forward even for lawyers that handle these matters. Presently, my firm has three matters before the TTAB and they are all vastly different and demand different levels of diligence and know-how.

    You may want to discuss this with a lawyer in private and get some insights if it is not too late.

    Most of us here, including myself, offer a free phone consult.

    Best regards,
    Frank
    Natoli-Lapin, LLC
    New York, NY
    (see Disclaimer)

    The law firm of Natoli-Lapin, LLC (Home of Lantern Legal Services) offers our flat-rate legal services in the... more
  3. Maurice N Ross

    Pro

    Contributor Level 20

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    Answered . Are you an attorney, or a party acting without an attorney? In either case, there is no requirement that you cite legal authorities in your petition. But failure to do so is almost always a sign that the attorney or litigant does not have a clue about how to pursue a TTAB proceeding. Since the examiner has already issued a decision, you have an uphill battle. Descriptiveness, even if proven, may not be sufficient to defeat trademark protection, If the trademark has developed secondary meeting it can be registered and upheld regardless of whether it is descriptive. Your adversary is going to come to this proceeded armed with factual and legal arguments that will overwhelm you unless you are prepared to respond. And you have the burden of proof here. You obviously have made a difficult case even more problematic by failing to retain experienced counsel.

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