Page 6 - Grapevine Jan-Feb 2020

In The Winery

Anatomy of a Trademark Case

By: Brian D. Kaider, Esq.
I n earlier articles, I have discussed the benefits your case to the USPTO’s Trademark Trials and

of federal registration of trademarks, how they Appeals Board (TTAB). On the other hand, if you
differ from patents and copyrighted materials,
and you want to seek monetary damages, you
and how far you should go to protect your marks. believe that someone is infringing your trademark
But, when someone decides to take the ultimate will file a lawsuit in a U.S. District Court. There is
step to initiate litigation, I find that they often have overlap in these proceedings; for example, you can
little understanding of the process, the timelines, seek to cancel a registered trademark as part of a
the costs, and the burdens involved. This article is court case, but there are differences as well; e.g.,
meant to give a high-level view of what a litigation you cannot seek monetary damages at the TTAB.
entails, either at the U.S. Patent and Trademark Generally, though, the processes in both venues
Office or in federal court. are similar.

Two Venues Before Filing – Due Diligence

If your goal is to oppose the pending registration Whether at the TTAB or in federal court, before
of another person’s trademark, or to cancel such a you file your case, you are obligated to ensure
registration after it issues, you will generally bring that you have a proper basis for doing so. Your

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