102.02    Types of Board Proceedings

The Board has jurisdiction over four types of inter partes proceedings, namely, oppositions, cancellations, interferences, and concurrent use proceedings.

An opposition is a proceeding in which the plaintiff seeks to prevent the issuance of a registration, in whole or in part, of a mark on the Principal Register. "Any person who believes that he would be damaged by the registration of a mark" may file an opposition thereto, but the opposition may be filed only as a timely response to the publication of the mark, in the Official Gazette of the United States Patent and Trademark Office. [ Note 1.] See TBMP § 303 (Who May Oppose or Petition to Cancel).

A cancellation proceeding is a proceeding in which the plaintiff seeks to cancel an existing registration, in whole or in part, of a trademark on the Principal Register or the Supplemental Register. A petition for cancellation may only be filed after the issuance of the registration. A petition for cancellation may be filed by "any person who believes that he is or will be damaged by the registration" of the mark. [ Note 2.] See TBMP § 303 (Who May Oppose or Petition to Cancel).

An interference is a proceeding in which the Board determines which, if any, of the owners of conflicting applications (or of one or more applications and one or more registrations which are in conflict), is entitled to registration. [ Note 3.] The proceeding is declared by the Office only upon Petition to the Director showing extraordinary circumstances therefor, that is, that the party who filed the petition would be unduly prejudiced without an interference. [ Note 4.] See TBMP § 1002 (Declaration of Interference). Ordinarily, the availability of an opposition or cancellation proceeding is deemed to prevent any undue prejudice from the unavailability of an interference proceeding. [ Note 5.] An interference that has been declared by the Director is not instituted by the Board until after all of the marks that are to be involved in the proceeding have been published in the Official Gazette for opposition. See TBMP § 1003. For further information, see TBMP Chapter 1000 (Interferences).

A concurrent use proceeding is a proceeding in which the Board determines whether one or more applicants is entitled to a concurrent registration on the Principal Register, that is, a registration with conditions and limitations, fixed by the Board, as to the mode or place of use of the applicant’s mark or the goods and/or services on or in connection with which the mark is used (usually, a concurrent registration is restricted as to the territory which it covers). See TBMP § 1101.01. The proceeding may be initiated only through the filing of an application for registration as a lawful concurrent user, and is instituted by the Board only after each of the one or more involved applications has been published for opposition in the Official Gazette, and all oppositions thereto (if any) have been withdrawn or dismissed. See TBMP § 1102.01 and TBMP § 1105. For further information, see TBMP Chapter 1100 (Concurrent Use Proceedings).

The Board also has jurisdiction over ex parte appeals. Those are, appeals from an examining attorney’s final refusal to register a mark in an application and appeals after issuance of a final Office action in an expungement or reexamination proceeding. [ Note 6.] See TBMP Chapter 1200 (Ex Parte Appeals from Refusals of Applications) and TBMP Chapter 1300 (Ex Parte Appeals from Expungement and Reexamination of Registration Proceedings).

NOTES:

 1.   Trademark Act § 13, 15 U.S.C. § 1063, Trademark Act § 12(a), 15 U.S.C. § 1062 (a), Trademark Act § 18, 15 U.S.C. § 1068.

 2.   Trademark Act § 14, 15 U.S.C. § 1064, Trademark Act § 18, 15 U.S.C. § 1068, Trademark Act § 24, 15 U.S.C. § 1092.

 3.   Trademark Act § 16, 15 U.S.C. § 1066, Trademark Act § 18, 15 U.S.C. § 1068.

 4.   Trademark Act § 16, 15 U.S.C. § 1066; 37 C.F.R. § 2.146(a)(4).

 5.   Removal of Rules Governing Trademark Interferences, 82 Fed. Reg. 48469, 48470 (Oct. 18, 2017).

 6.   Trademark Act § 12(b), 15 U.S.C. § 1062(b), Trademark Act § 20, 15 U.S.C. § 1070; 37 C.F.R. § 2.141, 37 C.F.R. § 2.142.