TLPC Submits Proposal to USPTO to Discourage Frivolous Claims in Trademark Opposition Proceedings

On Tuesday, May 12, 2015, three TLPC student attorneys submitted a White Paper to the U.S. Patent and Trademark Office (PTO) detailing a proposal to discourage frivolous claims in trademark opposition proceedings before the Trademark Trial and Appeal Board (TTAB). Current PTO rules can allow for entities known as “trademark bullies” to unfairly target new trademark applicants with aggressive litigation tactics that can cost, on average, around $80,000 to defend. For this project, the team partnered with our sister law clinics at American University and Suffolk University.

The team developed two proposals: a Second Look Review procedure and fee-shifting authority housed within the TTAB.

The Second Look Review procedure would allow trademark holders and other interested parties to request that the examining attorney who approved the trademark application take a “second look” at the application in light of evidence presented by the interested parties. If unsatisfied with the examining attorney’s determination, either party can then appeal directly to the TTAB.

The team’s second proposal is for Congress to implement a statutory fee-shifting mechanism for frivolous opposition suits before the TTAB. Current patent regulations allow for similar sanctions for parties who file frivolous patent oppositions in litigation, so the team proposes an analogous mechanism for trademark regulations. Because the PTO does not currently have the authority under the Lanham Act to incorporate fee-shifting procedures into TTAB proceedings, the team included an argument that the PTO or other parties might make to Congress to obtain an explicit grant of this authority.

The Second Look Review procedure, coupled with fee-shifting authority, could provide a balanced approach that eliminates incentives for companies or other entities to engage in frivolous and aggressive trademark opposition practices, while allowing incumbent trademark holders an easier avenue to defend potential threats to their trademarks. Furthermore, these proposals would help ensure that only legitimate oppositions from committed parties are admitted to the TTAB docket, which could increase overall efficiency within the PTO.

The student attorneys for this project were Austin Gaddis, Paul Garboczi, and Conor Stewartson.

The full text of the White Paper can be found here:

Discouraging Frivolous Claims in Trademark Opposition Proceedings: A Policy Proposal to the U.S. Patent and Trademark Office