Frequently Asked Questions
Just received a notice, complaint, or petition? You probably have a lot of questions. Here are the ones we hear most often — answered plainly.
I Just Got Served — Now What?
I just received a TTAB Notice of Opposition. What does that mean?
It means someone has challenged your trademark application for the purpose of preventing it from maturing into a registration. This challenge has been lodged with the Trademark Trial and Appeal Board (TTAB), which is the administrative court within the U.S. Patent and Trademark Office responsible for overseeing trademark oppositions. Once the Notice of Opposition has been filed (or a request for an extension of time to file a Notice of Opposition has been filed) your trademark application has been put on hold. Once the opposition has been instituted (typically within 1-2 days of the filing of the Notice of Opposition), a trademark applicant has 40 days to file a formal Answer or the TTAB will begin the process of entering a default judgment against you. While extensions to respond can be obtained it is advisable to retain an attorney in short order so that a response strategy can be made and executed on prior to the deadline to respond.
I just received a TTAB Petition for Cancellation. Is my trademark gone?
Not yet, but the trademark registration is under attack. A Petition for Cancellation is a formal proceeding asking the TTAB to remove your registered trademark from the federal register. Like an opposition, once the cancellation proceeding has been instituted you have 40 days to respond with an Answer. If you don't respond, the TTAB will begin the process of entering a default judgment against you. Upon filing your answer, a full adversarial proceeding will commence allowing you to defend your trademark registration.
I was just served with a patent infringement complaint. How much time do I have to respond?
If you were formally served with a summons and complaint, you have 21 days to respond — either by filing an Answer or a motion challenging the complaint. If the plaintiff asks you to waive formal service and you return the signed waiver, that deadline extends to 60 days. Missing your deadline can result in a default judgment, which means the court can award the plaintiff full damages and injunctive relief without ever hearing your side. Check your summons immediately and identify your exact deadline.
I just received an IPR petition at the PTAB. What is that?
An Inter Partes Review (IPR) is a proceeding at the Patent Trial and Appeal Board in which someone is challenging the validity of your patent. IPRs are frequently filed by defendants in patent infringement cases — it's a way to try to invalidate the patent they've been accused of infringing. As the patent owner, you have 3 months from the date the petition is served to file a Patent Owner Preliminary Response (POPR), which is your first opportunity to argue that the PTAB should decline to even take up the challenge. This is one of the most important filings in the entire proceeding and should not be approached without experienced counsel.
I received a trademark infringement complaint in federal court. Is this different from a TTAB proceeding?
Yes, significantly. The TTAB only decides whether a trademark should be registered or canceled — it cannot award money damages or order anyone to stop using a mark. A federal court complaint is filed in Article III court (like the SDNY, EDNY, or DNJ) and can result in money damages, injunctions ordering you to stop using your mark, and attorneys' fee awards. Both types of proceedings require prompt action, but the rules, deadlines, and stakes are different.
Deadlines and Process
What is the 40-day deadline at the TTAB?
In both TTAB opposition and cancellation proceedings, the respondent has 40 days from the date the proceeding is filed to submit an Answer. The Answer must respond to each allegation in the notice and can include affirmative defenses and counterclaims. This deadline can sometimes be extended by agreement or motion, but extensions are not guaranteed and the opposing party can object. Do not assume you will get extra time.
What is the 21-day deadline in federal court?
Under the Federal Rules of Civil Procedure, a defendant who is formally served with a complaint has 21 days to file a response which is typically either an Answer or a motion to dismiss. The exact manner in which one should respond to a complaint is varies on a case-by-case basis and is something that requires careful consideration prior to acting.
What is a litigation hold, and do I need one?
Yes. The moment you receive a lawsuit — or even a credible threat of one — you have a legal duty to preserve all documents, emails, and records that might be relevant to the case. This means immediately telling employees to stop any routine deletion of relevant files. A litigation hold is the formal process for doing this. Failing to preserve evidence can result in severe sanctions from the court, including instructions to the jury that they should assume the missing evidence was harmful to your case.
How long does a TTAB proceeding take?
TTAB proceedings typically take between 18 and 36 months from start to finish, though many cases settle before reaching the final decision phase.
How long does federal court IP litigation take?
It varies significantly by court, the asserted causes of action, by the complexity of the case, and the demeanor of the attorneys litigating the case. A straightforward case might reach trial in 18–24 months; complex multi-patent cases can take considerably longer. The courts in the SDNY, EDNY, NDNY, and DNJ all have their own local rules and standing orders that govern the pace of patent and trademark cases. Early strategic decisions, including whether to seek a stay, file an IPR, or pursue early settlement, can substantially affect the timeline.
TTAB Questions
What are the grounds for a trademark opposition?
The most common grounds for a TTAB opposition are: (1) likelihood of confusion with a prior mark (the opposer claims your mark is too similar to theirs and will confuse consumers); (2) descriptiveness (the claim that your mark merely describes your goods or services and cannot function as a trademark); (3) fraud on the USPTO (allegations that your application contained false statements); and (4) dilution which typically only available to the owners of very famous marks. Many oppositions are filed as leverage, and the strength of the grounds varies significantly from case to case.
What are the grounds for a trademark cancellation?
Common grounds include likelihood of confusion, abandonment (the claim that you stopped using the mark in commerce), fraud, and genericness. Some grounds such as fraud, genericness, and abandonment have no statute of limitations, meaning they can be raised against any registration regardless of how old it is.
Can I countersue in a TTAB proceeding?
Yes, under certain circumstances. A respondent in a TTAB proceeding can file a counterclaim to cancel the opposing party's own trademark registration, if valid grounds exist. A well-timed counterclaim can shift the balance of leverage significantly. It can also bring issues to a head that would otherwise surface later and force a more complete resolution of the dispute.
Can I settle a TTAB proceeding?
Yes, and many TTAB proceedings do settle, and such settlements often result in the execution of a consent agreement or coexistence agreement that allows both parties to use their marks with defined limitations (for example, in different industries, geographies, or with specific disclaimer language). Whether settlement is the right move depends on the strength of your position, the cost of continued litigation, and whether a negotiated outcome actually meets your business needs.
Federal Court Questions
What courts does Lerner David handle IP cases in?
Lerner David LLP handles IP litigation all across the country, and regularly in the Southern District of New York (SDNY), Eastern District of New York (EDNY), Northern District of New York (NDNY), and District of New Jersey (DNJ), as well as before the TTAB and PTAB.
What is the difference between the SDNY, EDNY, NDNY, and DNJ?
These are the four different federal district courts covering New York and New Jersey. The SDNY (Manhattan) handles substantial patent, trademark, and copyright cases and has some of the most experienced IP judges in the country. The EDNY (Brooklyn) covers Brooklyn, Queens, Staten Island, Long Island, and is a major venue for trademark counterfeiting and e-commerce disputes. The NDNY (Albany/Syracuse) covers upstate New York. The DNJ (Newark/Trenton/Camden) is one of the most active patent courts in the country, particularly in pharmaceutical, chemical, and consumer products cases. Each court has its own local patent and trademark rules that govern the pace and structure of litigation.
Can a patent infringement complaint be dismissed?
Potentially, yes. However how to handle a patent infringement lawsuit once initiated against you requires careful thought and consideration, and there is no one-size-fits-all response strategy. Definitely worth working with an attorney skilled in patent infringement litigation to determine an appropirate response straetgy, which could include moving to dismiss the complaint.
What damages can a plaintiff recover in a patent or trademark infringement case?
At minimum, a patent plaintiff is entitled to a "reasonable royalty" on infringing sales if infringement is established. They can also seek lost profits if they can demonstrate they lost sales due to the infringement. In cases of willful infringement, the court can award up to three times the actual damages (enhanced damages). The court may also award attorneys' fees in exceptional cases. In trademark cases, damages can include the defendant's profits, the plaintiff's actual damages, and statutory damages in counterfeiting cases.
What does it mean to willfully infringe?
Willful infringement means the defendant knew about the patent (or trademark) and infringed anyway without a reasonable good-faith basis to believe they were not infringing. It can significantly increase damages exposure.
Working With Matt
What should I bring to my first conversation with Matt?
Bring the documents you received (e.g., the Notice of Opposition, Petition for Cancellation, IPR petition, or federal court complaint) along with any communications you received from the other side before the formal filing. It also helps to be prepared to talk about your business: what your mark or product actually is, how long you've been using it, what markets you operate in, and what your goals are. The first conversation is about understanding your position and your options; not committing to a course of action.
How quickly can Matt respond to an urgent situation?
Promptly. IP litigation deadlines can be very short and Matt understands that these situations require a fast response. Reach out by phone or email and explain that you are working against a deadline.
Does Matt only handle cases in New York and New Jersey?
As a Partner at Lerner David LLP, Matt serves clients nationally. His focus for federal litigation is the New York and New Jersey federal courts (SDNY, EDNY, NDNY, DNJ), where the firm has substantial experience and relationships. TTAB and PTAB proceedings are conducted before the USPTO and are handled for clients across the country regardless of where they are located.
I haven't been sued yet, but I received a cease and desist letter. What should I do?
Take it seriously, but don't panic. A cease and desist letter is not a lawsuit; it is a demand, and it opens a window for negotiation before litigation begins. How you respond (or whether you respond, and how quickly) can affect the outcome of the dispute. In some situations, ignoring a letter invites a lawsuit; in others, a measured response can resolve the dispute. An attorney can evaluate the strength of the sender's position and help you decide on the best course of action.
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