What Is a Trademark Opposition, and What Should I Do If My Application is Opposed?
You will pay all your expenses and wait several months for a trademark examining attorney to analyze your application as a business owner or individual filing for a trademark. If your application meets all of the registration criteria at the end of the examination process, the examiner will publish your application for “opposition.” But what exactly does this imply? The trademark opposition process before the Trademark Trial and Appeal Board is discussed in this article.
“Published for the opposition” means that my trademark application has been made public. What exactly does that imply?
After an examining attorney has read and authorized your trademark application, the mark will be published for opposition, which will begin the trademark opposition period. The trademark opposition period is thirty days. Anyone with a genuine interest in the case can file an opposition to the trademark application and try to prevent it from being registered. The mark appears in the Original Gazette, an online USPTO publication that lists all trademarks that have been filed for the opposition.
Who can oppose my trademark?
A trademark can be opposed by anyone who has a “real” or “legitimate” interest in the case. In general, this means the Opposer must have a direct and personal stake in the outcome, and the belief must be logical and show a genuine interest in the subject. As a result, a party cannot file an opposition because it believes the registration process is unjust. It must demonstrate that it will have an individual impact on the opponent. Ownership of trademark registration is often sufficient if the Opposer claims ownership of a confusingly similar mark, as long as the owner can establish that their trademark would be harmed somehow.
What are some of the reasons a third party can oppose my trademark?
A party might object to a trademark for several reasons, the most common of which being a likelihood of confusion. Typically, trademark owners use trademark monitoring services to receive notifications when someone tries to register a similar trademark for similar goods or services. They’ll examine the mark with their trademark attorneys to see whether it could affect their trademark registration.
To avoid competition, trademark owners sometimes assert rights far beyond the extent of their registrations. This is called “trademark bullying” because it occurs when a large corporation targets smaller businesses that may lack the knowledge or means to combat bogus claims.
Aside from the more frequent likelihood-of-confusion oppositions, a party may bring an opposition for a variety of reasons, including:
- The mark is generic for the Applicant’s goods and/or services;
- The mark is merely descriptive of its goods and services;
- The mark is “scandalous”;
- The mark is “disparaging”;
- The mark falsely suggests a connection with the Opposer;
- The mark is primarily merely a surname (last name);
- The mark is functional for its goods and services (i.e., the color neon-yellow cannot be trademarked for safety vests);
- The Applicant is not using the mark or lacks a bonafide intent to use the mark in commerce;
- The mark has been abandoned;
- The mark is geographically descriptive or geographically misdescriptive;
- The mark would dilute the Opposer’s “famous” mark.
- This is a non-exhaustive list, but the key is that in each of these grounds for opposition, the Opposer is damaged directly in some way.
My trademark application has been opposed. What am I supposed to do now?
After a notice of opposition is issued against your trademark application, you have 30 days to respond. This response must address each of the allegations made in the opposition notice. The Trademark Trial & Appeal Board will set a trial calendar with deadlines for each stage of the opposition procedure once your answer is filed.
Opposition hearings are similar to mini-trials. Limited discovery is allowed by the Trademark Trial and Appeal Board, and parties are expected to answer within each of the trial dates. You (or your attorney) should be asking for information to help you build your defense during this stage. Any information not included in the record is not admissible in briefs or motions. Any party may request an optional oral argument.
The TTAB would make its decision many months later. You may appeal the decision to the Federal Circuit or a district court with jurisdiction over the case if you are dissatisfied with it.
Using the services of a trademark attorney to help you react to a Notice of Opposition.
Consider hiring a trademark lawyer to represent you before the Trademark Trial and Appeal Board (the “TTAB”). When responding to a Notice of Opposition, you must follow certain legal procedures and satisfy all of the TTAB’s deadlines. Without the assistance of an attorney, it can be extremely difficult for a trademark owner to respond to a Notice of Opposition and continue to meet all of the requirements of the opposition case. You can use our contact form to get a free consultation with a trademark attorney.
I received a “default notice.” What is it, and what can I do about it?
If you got a “notice of default,” you didn’t respond to a notice of objection or didn’t furnish information within the trial calendar. In most cases, the TTAB will rule favor of the opposing party. You may be allowed to make a move to vacate the default decision and proceed with the trial in some instances. If a default judgment is entered against you, it will bar you from filing any future applications for the same mark. You can’t just go back to the USPTO and make different arguments.
What can I do to lower the chances of someone opposing my mark?
With over 4 million trademarks on the Federal Register, trademark opposition is unavoidable from time to time. However, conducting a thorough trademark search before filing your trademark registration is best to avoid trademark opposition. Your application can be carefully designed to enhance the possibilities of successful registration by hiring a trademark search specialist to evaluate federal, state, and common law trademarks that may be similar to your mark.