TTAB Proceedings

Unlike online legal service firms, we view all proceedings before the Trademark Trial and Appeal Board (TTAB) as distinct and unique —and worthy of our experience and expertise. We routinely handle oppositions, cancellation and concurrent use rights; continually evaluating the claims, defenses, evidence and merits of each case in light of our client’s strategic and business goals.

We are experienced in all phases of TTAB proceedings, including, but not limited, to settlement conferences; initial, expert, and pretrial disclosures; and the creation and review of expert reports and testimony. Given that changes in TTAB procedures have made them more closely resemble civil litigation, we apply our proven litigation skill to successfully resolve cases in a variety of ways, from early settlement through trial.

Successes

Carl’s Jr. Restaurants LLC v. Carl’s Bar & Delicatessen, Inc.

Represented Carl’s Jr. in obtaining TTAB final judgment of likelihood of confusion.

Monster Energy Company v. Kenneth Wiesen

Received summary judgment in favor of Monster against applicant’s mark MONSTER POP in connection with “lollipops.”

Urban Decay Cosmetics v. W Sternoff

Represented Urban Decay in TTAB action; obtained settlement including amendment to claim of goods to resolve dispute.

Broadcom Corporation v. Broadphone LLC

Represented Broadcom in obtaining summary judgment against Broadphone LLC.

AutobyTel, Inc. v. Auto by Rent, Inc.

Successfully opposed registration of trademark “Auto-by-Rent.”

Village Voice Media Holdings, LLC v. Freedom Communications, Inc.

Obtained dismissal of opposition to registration of trademark “THE BEST OF OC.”

El Encanto, Inc. v. Taco Bueno Restaurants, Inc.

Successfully represented applicant seeking to register trademarks for restaurant services in opposition action before the TTAB.

Archie Comic Publications, Inc. v. Chaoyang Baolansi Meticulous & Chemical Co., Ltd.

Successfully represented applicant seeking to register trademarks for cosmetics in opposition action before the TTAB.

Hurley International LLC v. Volta (TTAB 2007).

Represented Hurley in precedential TTAB decision, finding on summary judgment that defendants had committed fraud. Listed by Allen’s Trademark Digest as one of top ten cases before the TTAB in 2007.

Ex Parte Proceedings

Represented My Horse Player, Inc. in an ex parte proceeding before the TTAB, in which the Board reversed the Examining Attorney by finding that MY HORSE PLAYER is not descriptive and is registrable on the Principal Register.

Represented Hurley International LLC as Plaintiff in a precedential decision from the TTAB, finding on summary judgment that the defendants had committed fraud on the USPTO. Listed by Allen’s Trademark Digest as one of the top ten trademark cases before the TTAB in 2007.

Represented Jose Remacle in a precedential decision from the TTAB, reversing the Examining Attorney and finding that the mark BIO-CD is not descriptive and is registrable on the Principal Register.

Partners Catherine Holland and Kerry Taylor, Ph.D., have each been named a “JD Supra Top Author,” receiving the 2018 “Readers’ Choice Award” by JD Supra . They are among just 242 authors selected by...
Attorneys Susan M. Natland and Chanell Khosrowabadi authored "No Likelihood of Confusion Between Chevron Marks" which was published in World Trademark Review Daily. Read the full article below. This...
Attorneys Susan M. Natland and Chanell Khosrowabadi authored "What's in a Name? TTAB Refuses Registration of OLIN Mark" which was published in World Trademark Review Daily. Read the full article below...