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Trademark Enforcement Attorney

TTAB oppositions and cancellations, expungement petitions, cease-and-desist strategy, UDRP complaints, platform takedowns and Lanham Act litigation for brand owners.

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Trademark Enforcement Attorney: TTAB Oppositions, Cancellations and Lanham Act Claims

A trademark registration is only as valuable as your willingness to enforce it, and the Trademark Trial and Appeal Board (TTAB), the federal courts, domain name panels and online marketplaces each offer a different tool. Capitol Law Partners handles oppositions, cancellations, expungement and reexamination petitions, cease-and-desist campaigns, UDRP complaints, platform takedowns and Lanham Act litigation for brand owners, and defends companies on the receiving end.

What a trademark enforcement attorney does for you

We begin with a trademark watch over new USPTO filings, Official Gazette publications, domain registrations and marketplace listings, screening each hit against the likelihood of confusion factors. When a conflict surfaces, we:

  • Assess both sides' rights: priority of use, registration status and the goods involved.
  • Choose the forum that fits: letter, letter of protest, TTAB proceeding, domain complaint, platform takedown or lawsuit.
  • Draft the pleadings, manage discovery and build the written record the Board or court will decide on.
  • Negotiate settlement, coexistence or licensing terms, and defend your own filings when they are challenged.

Not yet registered? Start with trademark search and clearance and trademark registration.

The legal standards and who can use them

Cease-and-desist letters

A demand letter is cheap and often the right first step against a small infringer who may simply stop. It can also hurt by prompting a declaratory judgment suit in the recipient's chosen forum, inviting a counterattack on your registration, or creating a public relations problem, so we weigh those risks before anything is sent.

Oppositions before the TTAB

Once a mark is published in the Official Gazette, anyone who believes it would be damaged may oppose within 30 days. Extensions can stretch the period to 180 days from publication, the later ones requiring good cause or the applicant's consent. The opposer needs standing: a real interest and a reasonable belief of damage. Common grounds are likelihood of confusion with a prior mark, mere descriptiveness, dilution of a famous mark, and lack of a bona fide intent to use the mark when the application was filed.

Cancellation proceedings

Within five years of registration, a petition to cancel may rest on any ground that would have barred registration. After five years the grounds narrow to those in Section 14 of the Lanham Act, chiefly abandonment, genericness and fraud. Three consecutive years of nonuse is prima facie evidence of abandonment, and the Trademark Modernization Act added a ground for marks never used in commerce.

Expungement and reexamination

The Trademark Modernization Act of 2020 also created two ex parte proceedings. Expungement targets a mark never used for some or all listed goods or services and may be requested between the third and tenth year after registration. Reexamination targets a use-based registration whose mark was not in use as of the relevant date, generally the filing date or the date use was alleged, and must be requested within five years. If the USPTO institutes on the petitioner's evidence of a reasonable investigation, the registrant must prove use or lose the challenged items. They are the first tools we consider when a blocking registration looks unused.

Letters of protest

While a conflicting application is under examination, a third party may file a letter of protest with evidence bearing on registrability, such as a prior registration or proof that the term is descriptive. The USPTO decides whether to forward it to the examining attorney; the protester takes no further part, but a timely letter can avoid an opposition altogether.

TTAB procedure and timeline

  1. Pleadings. The notice of opposition or petition to cancel states the grounds; the defendant answers, often with a counterclaim against the plaintiff's registration.
  2. Discovery. After a discovery conference and initial disclosures, the parties exchange interrogatories, document requests, admissions and depositions on a Board schedule.
  3. Trial by written record. Each side submits testimony by declaration or deposition and documents through notices of reliance, then briefs the case to a panel of administrative trademark judges.
  4. Appeal. To the Federal Circuit on the record, or by civil action in district court where new evidence may be introduced.

Accelerated Case Resolution lets the parties stipulate to a shorter schedule and a summary judgment style record. The Board decides registrability only: it cannot stop use, award damages or decide infringement, although its likelihood of confusion findings can carry preclusive weight in later litigation when the uses at issue are materially the same.

Domains, platforms and the border

  • Domain names. Under the Uniform Domain-Name Dispute-Resolution Policy (UDRP), a trademark owner can obtain transfer or cancellation of a domain confusingly similar to its mark where the registrant has no legitimate interest and acted in bad faith. The Uniform Rapid Suspension system is a faster, narrower procedure for clear-cut abuse that suspends rather than transfers the domain, and cybersquatting claims can be brought in federal court.
  • Marketplaces and social media. Amazon Brand Registry, eBay's VeRO program, Etsy, Meta and TikTok maintain reporting channels that generally require a registered mark. We prepare the submissions and handle counter-notices and repeat infringers.
  • U.S. Customs and Border Protection. Recording a federal registration with CBP allows officers to detain and seize counterfeit and infringing imports; we handle the recordation and product guides.

Federal court litigation

Section 32 of the Lanham Act protects registered marks against uses likely to cause confusion, Section 43(a) covers unregistered marks, trade dress and false designations of origin, Section 43(c) protects famous marks against dilution by blurring or tarnishment, and the counterfeiting provisions add enhanced remedies. Relief includes injunctions, the defendant's profits, the plaintiff's damages, destruction of infringing goods and, in exceptional cases, attorney's fees. Litigation is justified when the harm is continuing and serious, when an infringer refuses to engage, when counterfeits are involved or when only a court order will stop the conduct; against a minor or declining use it is rarely worth the cost. Our IP litigation and commercial litigation teams handle related copyright, trade secret, contract and unfair competition claims.

Evidence and documents

  • Registration certificates, file histories and proof of continuous use, plus sales, advertising and geographic reach to establish strength and priority.
  • Screenshots, test purchases and dated listings showing the accused use, and any instances of actual confusion.
  • Investigation reports and archived web pages documenting nonuse for expungement, reexamination and abandonment claims.

Common problems we help you avoid

  • Missing the 30-day publication window because no one was watching the Official Gazette.
  • Sending a demand letter from a weak position and provoking a cancellation counterclaim.
  • Filing a full cancellation when a cheaper expungement or reexamination petition would clear the obstacle.
  • Agreeing to a coexistence deal that blocks future expansion into new goods or territories.
  • Letting your own registration lapse mid-dispute; see our renewal and maintenance service.

Why Capitol Law Partners

Cagatay Ersoy, founder and managing partner of Capitol Law Partners, is a graduate of Columbia Law School and advises brand owners on trademark clearance, registration and enforcement. The same team handles office action responses and disputes, so prosecution arguments never undercut the position taken before the Board. Our attorneys and staff work in English, Turkish, Spanish, Portuguese and French, and we represent clients nationwide from our offices in Washington, DC, Herndon, Virginia, New York and Minneapolis, with an Istanbul office.

Learn more about protecting your brand

Talk to a trademark enforcement attorney

If you have found a conflicting mark, received a demand letter or been named in a TTAB proceeding, send us the registration numbers and what you know about the other side's use. Schedule a consultation or call +1 (202) 440-2272.

Frequently Asked Questions

How long do I have to oppose a trademark application?
A notice of opposition must be filed within 30 days after the mark is published in the USPTO Official Gazette. You can request extensions of time, and the total opposition period can run up to 180 days from publication, although the later extensions require good cause or the applicant's consent. A trademark watch service is the practical way to catch publications in time.
What is the difference between an opposition and a cancellation?
An opposition challenges a pending application after publication and before a registration issues. A cancellation challenges a registration that has already issued. Within five years of registration, a cancellation can rest on any ground that would have barred registration. After five years the grounds are limited, chiefly abandonment, genericness, fraud and, under the Trademark Modernization Act, a mark that has never been used in commerce.
Can the TTAB stop someone from using a mark or award damages?
No. The Trademark Trial and Appeal Board decides only whether a mark may be registered or should remain registered. It cannot enjoin use, award damages or decide an infringement claim. Those remedies require a lawsuit in federal court under the Lanham Act. A Board finding on likelihood of confusion can, however, carry preclusive weight in later litigation when the uses at issue are materially the same.
What are expungement and reexamination, and when should I use them?
Both are ex parte USPTO proceedings created by the Trademark Modernization Act. Expungement targets a registration whose mark was never used in commerce for some or all listed goods and is available between the third and tenth year after registration. Reexamination targets a use-based registration whose mark was not in use as of the relevant filing date and must be requested within five years. They suit unused registrations that block your application.
Should I send a cease-and-desist letter before filing anything?
Often, but not always. A letter is inexpensive and may resolve the matter quickly. It can also prompt the recipient to sue first for a declaratory judgment in a forum of its choosing, or to counterattack your registration. We evaluate the strength of your rights, the recipient's likely response and the timing of any TTAB deadline before deciding whether a letter, a filing or both is the right opening move.
How do I remove counterfeit or infringing listings from Amazon or social media?
Major platforms maintain intellectual property reporting programs, such as Amazon Brand Registry and eBay's VeRO program, that accept takedown requests from rights holders. Most require a registered trademark, and some accept a pending application. We prepare the submissions, document the infringement with test purchases and screenshots, respond to counter-notices and escalate repeat offenders. Where platform enforcement fails, a federal counterfeiting claim remains available.
Someone registered a domain name that matches my trademark. What can I do?
A complaint under the Uniform Domain-Name Dispute-Resolution Policy can result in transfer or cancellation of the domain if it is identical or confusingly similar to your mark, the registrant has no legitimate interest and the domain was registered and used in bad faith. The Uniform Rapid Suspension system offers a faster route for clear-cut cases but only suspends the domain. Cybersquatting claims may also be brought in federal court.
I received a notice of opposition against my application. What happens next?
You must file an answer by the deadline in the Board's institution order or the opposition will be sustained by default and your application refused. We review the opposer's grounds and standing, consider counterclaims against the opposer's registration, and open settlement discussions where a coexistence agreement or an amendment to your goods and services would resolve the conflict. If not, we defend the case through discovery and trial.