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Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

    Intermediate

  • work Practice Area

    Trademark and Copyright

Date & Time
  • event Date

    Tuesday, March 4, 2025

  • schedule Time

    1:00 p.m. ET./10:00 a.m. PT

  • timer Program Length

    90 minutes

Credit Information

  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.

$347.00
CLE
ALL

This CLE course will guide trademark counsel in navigating opposition proceedings at the Trademark Trial and Appeal Board (TTAB), opposing the application, or responding to the opposition. The panel will examine issues and offer strategies for filing the opposition, discovery, and trial phase.

Faculty

Jason Joyal
Partner
Kelly IP, LLP

Mr. Joyal focuses his practice on complex trademark, trade dress, copyright, false advertising, and unfair competition matters. He has represented clients in diverse industries in federal courts throughout the country, and routinely before the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board. He is particularly experienced in all aspects of litigation, where he helps guide the firm’s clients through the initial pleading stage, strategic use of pretrial discovery, preservation, collection and searching of electronically stored information, dispositive motions, mediations, and trial. He has authored many successful briefs, including motions to dismiss, motions for summary judgment, and trial briefs before the TTAB, and has leveraged several others into favorable and cost-effective resolutions. He also regularly counsels the firm’s clients on trademark prosecutions and enforcement, and has experience advising and representing insurers on matters involving intellectual property insurance coverage and advertising injury claims.

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Clint Taylor
Partner
Kelly IP, LLP

Mr. Taylor focuses his practice on trademark and copyright counseling, prosecution, enforcement, and litigation. He has spent his career helping clients of all sizes navigate the trademark registration process and successfully enforcing those rights. Mr. Taylor provides practical advice to clients to assist them in selecting and enforcing their trademarks consistent with their goals.

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Description

Inter partes proceedings before the TTAB are a valuable part of a brand owner's overall trademark enforcement and protection strategy. The TTAB's jurisdiction is limited to determining the right to register instead of the right to use.

Due to the TTAB's lack of authority to determine infringement or issue injunctive relief or monetary awards, trademark opposition and cancellation proceedings can result in a less aggressive and more cost-effective venue for resolving existing and future trademark concerns between the parties.

Counsel for the opposer or petitioner and the applicant or registrant must be able to navigate the opposition or cancellation proceeding to succeed, whether or not the case concludes with a final trial on the merits or a negotiated resolution. Counsel must understand the differences between TTAB proceedings and civil litigation in the federal courts and the TTAB process and evidentiary requirements.

Listen as our authoritative panel of trademark attorneys examines the grounds for filing an opposition or cancellation action, timing, and scope of the proceedings. The panel will also discuss challenges related to discovery and the trial phase of an opposition or cancellation action and the differences between these phases in a TTAB proceeding and civil litigation. The panel will offer strategies for opposing a trademark application, responding to an opposition, petitioning to cancel a registration, and responding to a cancellation action.

Outline

  1. Filing an opposition or cancellation action
    1. Grounds
    2. Timing
    3. Scope of proceedings
  2. Discovery
    1. When opposing an application or petitioning to cancel a registration
    2. When responding to an opposition or a cancellation proceeding
  3. Trial phase
    1. When opposing an application or petitioning to cancel a registration
    2. When responding to an opposition or a cancellation proceeding

Benefits

The panel will review these and other vital issues:

  • What are the grounds for opposing a trademark application or canceling a trademark registration?
  • How should counsel pursue and respond to discovery in an opposition or cancellation action?
  • What are the requirements and strategies for the party opposing the application or petitioning to cancel the registration during the trial phase?