TTAB Proceedings

Harness Dickey knows what it takes to prevail before the Trademark Trial and Appeal Board. Trademark registration is one of the first steps in protecting a mark in the U.S., and when a Trademark Examiner refuses a registration, or when there is a dispute as to whether an applicant is entitled to a registration, these disputes are resolved by the Trademark Trial and Appeals Board (TTAB). The March 15, 2015 Supreme Court decision in B&B Hardware, Inc. v. Hargis Industries, Inc. shows that courts should follow TTAB decisions. As a result, it is more important than ever to get the right result before the TTAB.

Every day, Harness Dickey is defending the rights of our clients before the TTAB. We handle the full spectrum of related claims, a sampling of which includes:

  • Trademark opposition and cancellation proceedings
  • Ex parte appeals of final refusals issued by the Trademark Examiner
  • Concurrent Use Proceedings
  • Settlements via co-existence agreements and licensing agreements

Many firms claim to have TTAB experience, but only a select few have actually tried cases to completion before the TTAB. Harness Dickey delivers such specific and honed competencies. We are involved in all phases of a TTAB proceeding, ranging from the preliminary notice and answer; to settlement conferences; to initial, expert and pretrial disclosure; to the creation and analysis of expert testimony and/or reports; through trial.

Harness Dickey has had a substantial practice before the TTAB for decades, which gives our clients the competitive edge. We know what to expect, and can usually analyze and predict outcomes allowing us to ultimately formulate a multi-pronged approach to any given issue. We are consistently ranked as one of the top filers of oppositions and cancellations annually. Our attorneys work directly with clients to develop a plan that parallels business goals. We carefully analyze the claim, prosecution or defense strategy, relevant evidence and merits of our client’s position under the law and as it applies to their commercial objectives and financial resources. We devise solutions, whether by settlement or by trying the case, that best achieve each client’s objective.

Because of our extensive trademark monitoring capabilities, we are often able to warn our clients of potentially conflicting filings before they are even published. As a result, we drive resolution through direct communication with an infringer prior to publication and formal opposition. This type of immediate action and persuasive and diplomatic negotiation has resulted in substantial cost savings for our clients.

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