I. Opposition Proceeding, 15 U.S.C. § 1063 - This is the proceeding for challenging a mark published in the Official Gazette. This applies only to marks seeking registration on the Principal Register.

A. An opposition proceeding is commenced when a party other than the applicant objects to a registration by filing a Notice of Opposition and paying the required fee within 30 days after publication of the mark.

1. The "notice" sets out the reasons why the registration should be denied and why the opposer will be damaged if registration is allowed.

2. As a general rule, if the opposer does not show any damage not common to the general public, he or she will not be allowed to institute an opposition proceeding.

B. The most common basis of damage is likelihood of confusion between the published mark and a mark of the opposer, but there are other grounds such as unregistrability of the mark because it is descriptive, prior use, etc.

C. The opposer need not have a registered trademark to bring the opposition.

D. Evidence presented to the TTAB in an opposition proceeding includes:

1. Ownership of the mark,

2. Date of first use,

3. Continuous use,

4. Degree of goodwill associated with the mark, and

5. Class of goods.

E. The Board makes a decision to deny or allow the registration which may then be appealed.

II. Cancellation Proceeding, 15 U.S.C. § 1064 - To eliminate the registration of a mark, one institutes a cancellation proceeding.

A. A "Petition for Cancellation" and paying the required fee initiates a cancellation proceeding.

1. The petition must include the grounds for cancellation and that the petitioner will be damaged by the continued registration of the mark.

2. Until recently the Federal Trade Commission could petition to cancel marks.

3. The Commissioner may also cancel registrations for failure to file the sixth year affidavit.

B. Grounds for cancellation in a proceeding depend on the status of the registration, i.e., under which Trademark Act it was registered (1881, 1905, 1946) and how long it has been registered or republished.

1. For marks registered less than five years the ground for cancellation are the same as those for an opposition proceeding.

2. After five years on the Principal Register the grounds for cancellation become more limited.

a. Basically, priority of use is no longer a ground.

b. Other grounds include: the mark has become a generic, common descriptive name, abandonment of the mark, that the mark was obtained fraudulently or that it never should have been registered as per section 2 of the Lanham Act.

3. The same grounds exist for cancellation of marks on the Supplemental Register.

a. Exception: marks may not be canceled for being descriptive, misdescriptive, etc.

b. Also, after five years, prior use is still a ground since incontestability does not arise from Supplemental Register registration.

C. The formal procedures in a cancellation proceeding is substantially identical to that in an opposition proceeding.

III. Interference Proceeding, 15 U.S.C. § 1066 - An interference proceeding determines who was first user and therefore the rightful owner of a trademark.

A. This proceeding, while very common in the past, is rarely used today because there are so few common law users remaining.

1. Interference proceedings are available only for Principle Register trademarks.

2. An interference is begun by a petition to the Commissioner of Patents and Trademarks who declares an interference.

a. This requires a showing of extraordinary circumstances which would result in a part being unduly prejudiced without an interference.

b. A condition precedent to an interference proceeding is that one of the marks but not both is registrable.

B. The junior party, the one with the latest filing date, bears the burden or proof.

C. The PTO, however, strongly prefers parties to use one of the other interpartes proceedings.

IV. Concurrent Use Proceeding, 15 U.S.C. § 1052(d) - A concurrent use proceeding is used to determine an applicant’s right to a registration covering only a part of the country in a situation where another is using the same or a confusingly similar mark.

A. There are two prerequisites for a concurrent use proceeding to be instituted:

1. At least one party seeking a concurrent use proceeding must have a pending application to register a mark.

2. Second, the mark of the pending application must be registerable except for the question of concurrent registration.

B. The major issue for the PTO is whether confusion is likely as a result of concurrent use of the marks.

C. A wide variety of conditions and limitations may apply to the grant of a concurrent use registration such as:

1. The geographical area for use of the mark may be limited.

2. The use my be limited to specific goods.

D. Actually, the number of concurrent use proceedings which have resulted in concurrent use registrations is relatively small.

1. The Commissioner has interpreted the statue as placing upon the PTO a duty to protect the public from confusion which transcends an agreement by the parties for concurrent use.

2. There has been litigation on this point and it is still not clear exactly when the Commissioner can disregard agreement between parties for concurrent use.