Cybersquatting — ACPA Claim
ACPA claims require proving the domain name is identical or confusingly similar to a distinctive or famous mark, and that the defendant registered it with a bad-faith intent to profit. Statutory damages range from $1,000 to $100,000 per domain name.
Trademark Counterfeiting
Federal trademark counterfeiting claims allow ex parte seizure, statutory damages from $1,000 to $2,000,000 per mark per type of goods, and mandatory attorney’s fees. Criminal referral to federal prosecutors is also available in egregious cases.
Trademark Dilution
Federal trademark dilution claims under the Trademark Dilution Revision Act require proving the mark is famous (nationally recognized by the general public), and that the defendant’s use causes blurring or tarnishment.
False Advertising Claim
Lanham Act false advertising claims require proving the statement was false or misleading, material, placed in interstate commerce, and caused or was likely to cause competitive injury. Literally false statements do not require proof of actual deception.
Federal Trademark Infringement
Federal trademark infringement claims under Lanham Act Section 32 and 43(a) require proving likelihood of confusion. The eight DuPont factors guide the analysis. Injunctive relief and monetary remedies including disgorgement of profits are available.
TTAB Motion Practice
TTAB proceedings involve motions to compel, summary judgment, motions to suspend, and default motions. The Board’s Trademark Trial and Appeal Board Manual of Procedure (TBMP) governs procedure alongside the applicable CFR provisions.
TTAB Ex Parte Appeal
Ex parte TTAB appeals review USPTO examiner final refusals. The TTAB reviews the record de novo on legal issues but gives deference to the examiner’s factual findings. Appeals can proceed from the TTAB to the Federal Circuit or Eastern District of Virginia.
TTAB Cancellation Proceeding
TTAB cancellation proceedings can be filed at any time after registration on grounds of likelihood of confusion, genericness, abandonment, or fraud on the USPTO. Registrations older than five years have limited grounds for cancellation.
TTAB Opposition Proceeding
TTAB opposition proceedings are filed within 30 days of publication in the Official Gazette. The grounds include likelihood of confusion, descriptiveness, fraud, and priority. Discovery, briefing, and oral argument follow a structured schedule.
Trademark Classification and Identification of Goods
Trademark classification under the Nice Agreement and USPTO ID Manual requires balancing clarity of description against breadth of protection. The identification you accept at registration cannot be broadened later — only narrowed.