Trademark litigation proceedings: TTAB or District Court?

By Belinda D. Jones, Christian & Barton LLP

When faced with a trademark dispute in the United States, the first and most critical decision a litigant needs to make is the forum in which to proceed. While there are many factors to consider when deciding whether to proceed before the Trademark Trial and Appeal Board (TTAB) or a federal district court, there are two dispositive questions to bear in mind.

Is the contested trademark currently in use?

Under the Lanham Act, a trademark infringement or dilution claim requires actual or imminent infringement or dilution of existing rights. Therefore, if an application for a trademark has been filed on an intent to use basis and use cannot be established, the TTAB is the permissible forum. To proceed, the party opposing the registration of a trademark must file a Notice of Opposition in a timely manner, stating the basis of opposition, including likelihood of confusion and/or dilution.

What is the relief sought?

Assuming use, a party must next determine the relief sought. If a party seeks monetary damages recoverable under the Lanham Act, including profits, costs and fees, those claims must be litigated in a federal district court. Furthermore, if a party wishes to obtain an injunction to prevent use of a contested trademark pending resolution of the dispute, the only appropriate forum is the federal district court. These answers will permit a trademark litigant to choose the appropriate, and in some instances, required forum for resolution.

Belinda D. Jones

Belinda D. Jones

Christian & Barton LLP, Richmond, VA, USA
T: +1 804 697 4100
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Belinda D. Jones is a partner in Christian & Barton’s Intellectual Property and Litigation departments. She represents clients in intellectual property matters before the United States Patent and Trademark Office, federal courts and the Trademark Trial and Appeal Board. Her commercial litigation practice focuses on healthcare matters, tort, product liability claims and financial services disputes.

Published: October 2016 l Photo: pabrady63 -

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