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Gilson on Trademarks
Copyright 2016, Matthew Bender & Company, Inc., a member of the LexisNexis Group.

3-9 Gilson on Trademarks 9.syn


Trademark Inter Partes Litigation


Anne Gilson LaLonde; Jerome Gilson, original author from 1974-2005

Chapter Summary


An inter partes case is a proceeding before the Trademark Trial and Appeal Board ("TTAB") between two parties where the USPTO is not a litigant. This chapter covers the various types of inter partes proceedings, as well as the history, structure, and scope of the TTAB. It also provides an in-depth discussion of TTAB practice and procedure in inter partes cases, addressing issues pertaining to the complaint, the answer, counterclaims, amendments, dismissals, motions, discovery, settlement, evidence, briefing, arguments, and decisions. In addition, this chapter discusses how the opposer or cancellation petitioner must show that it has standing to sue and, also, that there is a valid statutory ground negating the right to registration of the applicant or registrant, such as likelihood of confusion, descriptiveness, abandonment, or fraud. It also covers the defenses available to the applicant or registrant, including a general denial, specific denials, a Morehouse defense, and equitable defenses.

This chapter concludes with a discussion of the appellate review that's available to a party in an inter partes proceeding, which consists of appealing either to the Court of Appeals for the Federal Circuit or to a United States District Court, and addresses the Federal Circuit's and District Courts' respective scope of review and standard of review.

Gilson on Trademarks provides an in-depth analysis of all aspects of trademark law and includes detailed discussions of domestic and international issues. It also includes more than 450 trademark practice forms on all aspects of USPTO proceedings, complete with drafting guides, practice tips, and filing requirements. It is an essential tool for the practitioner engaged in transactional trademark work, trademark prosecution, or trademark litigation.


trademark,USPTO,TTAB,litigation,inter partes,Morehouse,equitable defense,discovery,trademark registration,third party registrations,confusingly similar trademarks,likelihood of confusion,genericness,descriptiveness


Chapter 8A discusses district court practice. Jurisdiction is covered in Chapter 11.


For a country-by-country analysis of trademark practice in over 150 jurisdictions, see World Trademark Law and Practice (Matthew Bender).

For discussion of Internet-related trademark issues, see Law of the Internet (Michie).

For analysis of the relationship between intellectual property issues and commercial issues in cyberspace, see E-Commerce and Communication (Matthew Bender).

For discussion of trademark issues in advertising, see The Law of Advertising (Matthew Bender).
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