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Risk analysis for trademark case: costs, expenses, etc.

Los Angeles, CA |

I am doing a risk analysis for my company. We need to know what other costs we may incur in an administrative hearing before the ttab if we encounter oppositions or cancellations. This does not need to include attorney fees. (Rather, fees such as discovery, cost of getting admissions of fact, interrogatories). We need to know if there are costs other than our attorney and our own fees for deposing witnesses. Is there a chance we would have to reimburse the other side for their discovery efforts and for complying with our requests for documents? Thank you so much. (this does not include an actual case before a federal court, just ttab proceeding with no infringement or wrondoing please). For example, if we request x amount of documents and admissions of fact and they comply, who pays?

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Attorney answers 5

Posted

Each side pays their own fees in a TTÁB proceeding, since the TTAB has no power to award damages or collect damages. TTAB sanctions in other ways, such as precluding or even stopping discovery, precluding evidence, summary judgment, dismissal or otherwise tilting the case against an offending party. In addition, a knowledgeable attorney for any side can minimize costs by various motions and requests to the Board. One fairly technical such request is for Accelerated Case Resolution or ACR. Another this for telephonic depositions for videoconference depositions. Production of documents in electronic form is yet another way of minimizing costs. Typically, each side pays for the production of their own documents in response to discovery requests unless it poses a financial hardship on that party, in which case there are various means available to the Board to address the cost issue. The Board tries to be fair to the parties in order to reach a decision based on the merits rather than on the respective financial condition of the parties.

Cancellations and Oppositions are quite expensive and the Board knows it, so they are frequently asked to make various procedural rulings to speed up the proceeding, minimize cost, or eliminate excessive discovery requests. The rules applied by the Board, and their procedural manual go into great detail about how this is accomplished and how such motions and requests are made, considered and decided. But these proceeding are seldom low cost, especially if an important mark is involved and big companies are involved.

Still, if you have a determined adversary, that adversary can drive up the costs. So, I would suggest you initially budget between $50,000 and $250,000 for a typical opposition or cancellation proceeding. If you actually get into such a proceeding, you will need an attorney and the second question would be to revisit the issue and ask what the attorney estimates to be the likely cost of the proceeding, and you should keep asking that question each step of the way. While a good litigator wants to get enough evidence to win and to be certainly evidence is enough to win, a good litigator also understands the budgetary constraints and acts accordingly or risks losing the client. The first question, of course, is whether you can win or not. The relative financial position of the parties is often a major determining factor in who wins the case.

It sounds like you are addressing this issue as a risk analysis of an event that likely will never occur. Cancellations are more likely than oppositions because oppositions have a relatively short window of opportunity to be filed. And Oppositions or Cancellation can lead to litigation before the Courts, and they themselves can be appealed, so factor that in your risk calculation.

Good Luck, estimating costs on these is often a pretty wild guess until one gets underway and you know who you are up against.

I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.

Asker

Posted

"And Oppositions or Cancellation can lead to litigation before the Courts, and they themselves can be appealed, so factor that in your risk calculation. " Does this mean if I lose the case in the ttab they can sue us afterwards to recoup their losses? Also, do all appeals go to federal court or can you appeal to the ttab? My profound thank yous for such a detailed and introspective answer you provided above. Seriously, thank you.

Asker

Posted

Also, if you could, if our employees get deposed, do we have to cover those costs as well? Thank you again!

James Juo

James Juo

Posted

Another factor to consider is that the TTAB is likely to suspend the Opposition or Cancellation if a trademark infringement suit is filed based on the mark at issue.

Daniel Nathan Ballard

Daniel Nathan Ballard

Posted

"Does this mean if I lose the case in the ttab they can sue us afterwards to recoup their losses?" No. It means that the party opposite you in the TTAB proceeding will use that proceeding to learn facts it can use to support an infringement lawsuit against you. "[D]o all appeals go to federal court or can you appeal to the ttab?" An appeal from a TTAB decision can be taken to the Federal Circuit or a federal district court. "[I]f our employees get deposed, do we have to cover those costs as well?" Yes. The cost of litigating a TTAB proceeding without an attorney cannot be accurately estimated because it will not be litigated properly -- you will make mistakes that will either dramatically increase the cost [via unnecessary motions and discovery] or decrease the cost [by failing to raise or vigorously persue relevant issues and facts]. Litigating a TTAB proceeding without an attorney is simply dumb.

Bruce E. Burdick

Bruce E. Burdick

Posted

Thanks. Asker, what this should tell you is that YOU should not be doing this risk analysis. It should be done by a trademark litigator who has access to the facts at hand. Namely, what mark? What issues? What opponents and how rich? How important is the mark to you? To them? If the other side wants to drive up the cost on you, and if you are small a good litigator may well decide to do just that, this will likely spill over into court litigation. Usually, that would be US Dist. Ct, but perhaps the Fed Circuit Ct of Appeals under certain strategic situations which are beyond this discussion. So, Yes they can sue you if they lose. Not to recoup TTAB costs but to either invalidate your reg or accuse you of infringement or both and there you might end up paying their fees if you blow the case, such as by trying it pro se. TTAB appeals go to USDC or Fed Circuit, but before that you can ask for reconsideration by TTAB if you have grounds, which would be rare and a real long shot. NEVER, EVER, EVER GET TOGETHER with just yourself to try a TTAB case or you will likely NEVER EVER EVER keep your trademark. LIKE EVER! And it will not be Swift, it will be slow, expensive and painful. Ignore us at your peril.

Posted

A risk assessment without attorney's fees? I'm dubious that's what you're after. I suspect you want to DIY, and you've already posted a question about deadlines and simply and so far at least don't intend to hire a lawyer.

I'd add that trademark infringement actions (in court, that is, which a TTAB action can easily become, only award attorney's fees to the prevailing party in "extraordinary" cases, and as that term would imply, not many cases are "extraordinary."

But the other side's attorney's fees aren't really a worry. It's the time and effort involved in a TTAB proceeding, and the loss of a trademark that's already been invested in.

Not counting your own side's attorney's fees seems besides the point, as does any risk analysis of an issue like this. Not hiring a trademark litigator is a good way to waste the time, money, and effort that's gone into the TM choice in the 1st place, and trying to defend it pro se just throws more of that about the bad initial investment.

Avvo doesn't pay us for these responses, and I'm not your lawyer just because I answer this question or respond to any follow-up comments. If you want to hire me, please contact me. Otherwise, please don't expect a further response. We need an actual written agreement to form an attorney-client relationship. I'm only licensed in CA and you shouldn't rely on this answer, since each state has different laws, each situation is fact specific, and it's impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue.

Posted

Hi,

My colleagues offered a lot of good advice here. I just wanted to add, based solely on your post, that you are in way over your head here. I say this not to pick on you, but it is like me walking onto the gridiron and asking "ok, so which direction do I throw this thing?"

We have handled a number of matters before the TTAB and presently have three active cases. The very first thing you need to be clear on is YOUR CASE! Do you you understand your case at hand? You say, "no wrongdoing" but who's conclusion was that? Yours, or the experienced trademark lawyer you hired to arrive at that conclusion?

Before you even get involved with this I suggest you consult a lawyer to conduct a case/matter analysis and figure out a strategy assuming you have a viable one. This is money well spent.

The amount in fees (not legal fees) depends on many factors: how many people are involved and how many will need to be deposed? Will you require an expert that you will need to hire, etc?

Hiring a lawyer to handle this is critical if you intend on succeeding and not just wasting your time, effort and money. Every lawyer will have their own approach to how they handle these type of matters. We take it in stages and start with a flat-fee structure. Others (most, probably smartly) will require a retainer upfront and bill you per hour. I do not believe that this has to cost you tens of thousands of dollars but it will cost you something just like putting a roof on your house costs you something and just because I can swing a hammer doesn't mean I would trust myself to do that job.

Most of us here, including myself, offer a free phone consultation so you are welcome to contact me. I will link you to some general helpful info below.

Best regards,
Frank
Natoli-Lapin, LLC
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The law firm of Natoli-Lapin, LLC (Home of Lantern Legal Services) offers our flat-rate legal services in the areas of business law and intellectual property to entrepreneurs, small-to-medium size businesses, independent inventors and artists across the nation and abroad. Feel free to call for a free phone consultation; your inquiries are always welcome: CONTACT: 866-871-8655 Support@LanternLegal.com DISCLAIMER: this is not intended to be specific legal advice and should not be relied upon as such. No attorney-client relationship is formed on the basis of this posting.

Posted

I have a different take on this. Without knowing more about the trademark at issue, your company, and the competitors who may institute opposition or cancellation proceedings before the TTAB, it is impossible to perform a risk/benefit analysis. The main factors that drives costs is the size and determination of your opponents and the nature of the issues raised before the TTAB If you go to battle against a Fortune 100 company and you are a small or mid-sized company, that company may decide as a matter of strategy to make the TTAB proceeding as complex and expensive as possible for you. Further, in the era of electronic discovery, when a small company faces a big company, the big company often succeeds in imposing substantial hardship on the small company by forcing the small company to either (a) pay the costs of copying millions of electronic documents, and/or (b) review millions of documents in electronic form. TTAB proceedings can be just as complex and time-consuming as federal court litigation--and appeals from decisions in these proceedings are directed to either federal district courts or the federal circuit court of appeals. One of the main risks that small companies face in TTAB procedures is that due to cost concerns, they may take short cuts in the discovery process and later get accused of withholding relevant information. Big companies will spare no expense in these cases, and often theses cases are won in the trenches, during the discovery process. In short, the major risk factors depend primarily on the identity of the parties to the litigation, the resources they are willing to devote to the proceeding, and the nature and extent of the disputed legal issues. Without knowing these details, I could not begin to give help you perform a risk analysis. I agree with my colleagues, however, to the extent they have affirmed the necessity of being represented by legal counsel----indeed, in all candor I cannot understand how a company can perform a meaningful risk/benefit analysis without involving experienced, outside litigation counsel---this is not a job for in-house counsel.

Posted

Each side bears their own costs in a TTAB proceeding.

This is not a legal opinion, and should not be relied upon as such.

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