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

Asked over 1 year ago - 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?

Attorney answers (5)

  1. Pamela Koslyn

    Contributor Level 20

    7

    Lawyers agree

    Answered . 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... more
  2. Bruce E. Burdick

    Pro

    Contributor Level 20

    4

    Lawyers agree

    1

    Answered . 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... more
  3. Frank A. Natoli

    Pro

    Contributor Level 20

    4

    Lawyers agree

    Answered . 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
    (see Disclaimer)

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

    Pro

    Contributor Level 20

    3

    Lawyers agree

    Answered . 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.

  5. Kevin Richard Martin

    Pro

    Contributor Level 9

    1

    Lawyer agrees

    Answered . 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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