Trademark Oppositions

USPTO Trademark Oppositions

There are many reasons why an individual or business (whether a trademark registrant, a trademark applicant, or a party claiming trademark rights under common law) may seek to oppose the registration of a trademark.  The trademark opposition procedure allows anyone who may be damaged by the registration of a trademark to challenge the trademark application before it is officially registered with the United States Patent & Trademark Office (USPTO).  Generally, an individual or business filing a trademark opposition with the USPTO will assert one or more of the reasons listed below to oppose registration of a trademark.

Possible Grounds For Trademark Opposition

• Applicant’s trademark so resembles a trademark registered in the USPTO as to likely cause confusion, or to cause mistake, or to deceive when used in connection with the identified goods and/or services;
• Applicant’s trademark is merely descriptive, or deceptively misdescriptive, or geographically descriptive, or geographically misdescriptive, or is primarily merely a surname when used in connection with the identified goods and/or services;
• Applicant’s trademark is geographically deceptive, or disparages members of a particular group, or the trademark consists of immoral, deceptive, or scandalous matter, or falsely suggests a connection with plaintiff’s name or identity;
• Applicant has no bona fide use of the applied-for trademark in commerce prior to filing of the use based application for registration;
• Applicant has no bona fide intent to use the applied-for trademark in commerce in connection with the identified goods and/or services;
• Applicant’s applied-for trademark is merely a ornamental design that does not function as a trademark separate and apart from the applied-for words in the trademark;
• Applicant is not the rightful owner of the applied-for trademark;
• Applicant’s applied-for trademark represents multiple marks in a single application (i.e., phantom mark);
• Applicant’s applied-for trademark consists of the name of a particular living individual without the individual’s consent;
• Applicant’s applied-for trademark is generic;
• Applicant’s applied-for trademark would dilute the distinctive quality of plaintiff’s or opposer’s famous trademark;
• Applicant applied-for trademark is used in a way to misrepresent the source of its goods and/or services;
• Applicant’s applied-for trademark is the title to a single creative work and is not considered to be a registrable trademark;
• Applicant misused the federal registration symbol ® prior to the applied-for trademark registration; and
• Applicant’s applied-for trademark depicts the flag or coat of arms or other insignia of the United States, a State or municipality.

Note, the possible grounds to oppose a trademark registration listed above is not exhaustive. The most common reason for opposing a trademark is made on a likelihood of confusion basis. In other words, the plaintiff or opposer contends that the applicant’s applied-for trademark so resembles either: (1) plaintiff’s or opposer’s registered trademark; or (2) plaintiff’s or opposer’s prior common-law trademark or trade name, as to be likely to cause confusion when used on related goods and/or services.

A trademark opposition is filed with the USPTO during a defined window of time after a trademark application has been approved by a USPTO examining attorney and has been published in the Trademark Official Gazette (TOG) for opposition.  Note, only trademark applications to register on the Principal Register may be opposed.  The opposer is in the position of a plaintiff and the trademark applicant being opposed is in the position of the defendant.  If the USPTO sustains the opposition in favor of the plaintiff, then the USPTO will not allow the trademark application to mature into a full registration.  However, if the opposition is dismissed in favor of the defendant, then the USPTO will allow the trademark application to proceed to registration.

In order for a plaintiff to be successful in a trademark opposition proceeding, it must plead and prove two things: (1) that the plaintiff has standing to oppose – e.g. the plaintiff is likely to be damaged by the registration of the applicant’s trademark; and (2) that there are valid grounds why the applicant is not entitled  to register the trademark under the Trademark Act.  Note, the plaintiff or opposer has the burden to prove that the trademark applicant has no right to register its trademark.

Importance of Trademark Monitoring and Policing the Marketplace

Our trademark attorneys are often asked the question – how do I know when someone is trying to register a trademark that may cause damage to my business or possibly infringe on my registered trademark?  There are generally two ways a trademark owner can identify applied-for trademarks that it may want to oppose.  First, a trademark owner can engage our law firm to provide periodic trademark monitoring services.  Our law firm offers every client the opportunity to set-up trademark monitoring programs whereby our attorneys will monitor all 50 state, federal, and US territories trademark databases periodically to ensure any identical or confusingly similar trademarks are identified and addressed appropriately. If potential conflicts or trademark infringement is identified, our attorneys can handle those issues through opposition (or cancellation) proceedings to prevent trademark dilution and infringement.

Second, the trademark owner may identify impending registrations by browsing the USPTO’s weekly Trademark Official Gazette (TOG or TMOG). Each week the USPTO publishes the Trademark Official Gazette; which contains a list of trademarks published for opposition.  Each trademark published for opposition will identify the trademark being registered, the goods and/or services described in the trademark application, and the date of alleged first use for use-based applications. If the trademark owner identifies a trademark that it would like to oppose, it will need to follow specific procedures and deadlines in order to properly oppose the registration of the trademark.

Overview of The Trademark Opposition Procedure

According to the Trademark Manual of Examining Procedure (TMEP), the process of opposing a trademark application during the publication period with the Trademark Trial and Appeal Board (TTAB) involves several steps. Here’s a step-by-step outline of the process:

• Monitor the Official Gazette: Keep track of the USPTO’s Official Gazette, which is published weekly and lists new trademark applications approved for publication. This is where you’ll find trademark applications that may be similar or conflicting with your own trademark interests.  As noted above, our law firm offers every client the option to engage our attorneys to provide periodic monitoring services.
• Determine the 30-day opposition period: Each published trademark application has a 30-day opposition period, during which anyone with a legitimate reason may file a Notice of Opposition against the application. The opposition period starts from the date of publication in the Trademark Official Gazette (TOG).
• Assess standing and grounds for opposition: Before filing a Notice of Opposition, you need to establish that you have standing, which means you have a real interest in the outcome of the proceeding. You also need to have valid grounds for opposition, such as likelihood of confusion, descriptiveness, or genericness.
• Prepare and file a Notice of Opposition: Draft a Notice of Opposition, clearly outlining the grounds for opposition and providing necessary supporting information. File the Notice with the TTAB within the 30-day opposition period, along with the required fee. You can file electronically using the TTAB’s Electronic System for Trademark Trials and Appeals (ESTTA).
• Service of the Notice of Opposition: Once the Notice is filed, the TTAB will serve it on the applicant or their attorney of record. The applicant will then have 40 days from the date of service to file an answer to the Notice of Opposition.
• Discovery phase: If the applicant files an answer, both parties enter a discovery phase, where they can request documents, interrogatories, and depositions from each other to gather evidence supporting their respective positions. The TTAB sets specific deadlines for the discovery process.
• Pretrial disclosures: Before the trial phase, both parties are required to submit pretrial disclosures, identifying the witnesses and evidence they plan to use during the trial.
• Trial phase: The trial phase involves submitting testimony and evidence to the TTAB in the form of written testimonies, exhibits, and briefs. Oral hearings may also be requested, although they are not common.
• TTAB decision: After reviewing the submitted evidence and arguments, the TTAB will issue a written decision either granting the opposition (and refusing registration of the opposed application) or dismissing the opposition (and allowing the application to proceed toward registration).
• Appeals: The losing party may appeal the TTAB’s decision either to the United States Court of Appeals for the Federal Circuit or by filing a civil action in a U.S. District Court.

Keep in mind that the opposition process can be complex and lengthy. It’s advisable to consult with our trademark attorneys to assist you in navigating the process and representing your interests before the TTAB.

Trademark Opposition Filing Deadlines

As noted above, an individual or business that believes it will be damaged by the registration of an applied-for trademark may file a trademark opposition with the USPTO within 30 days from publication of the applied-for trademark in the Trademark Official Gazette.  In most situations, the 30 day opposition filing period is not enough time to properly evaluate the trademark to be opposed.  Therefore, the USPTO will provide one automatic 30 day extension of time on request without the need to show good cause.  Note, an additional 60 day extension (after the automatic first extension) may be granted only if good cause is shown.

Prior to the expiration of the 30 day opposition period, or any extension of time to oppose, a notice of opposition must be filed by the plaintiff or opposer.  The notice of opposition must allege facts tending to show why the opposer believes it would be damaged by the registration of the applied-for trademark and state specific grounds for the opposition.  Note, a showing of actual damage is not required in the opposer’s notice of opposition.

Should I Hire A Trademark Attorney?

It is generally advisable for a person or company to hire a trademark attorney to assist with an opposition proceeding before the TTAB of the USPTO, especially if they have limited experience with trademark law and the opposition process. Our trademark attorneys have specialized knowledge and experience in trademark law, which enables us to navigate the complex procedures and rules associated with opposition proceedings. We can help identify the strengths and weaknesses of your case, draft a compelling Notice of Opposition (or Answer to a Notice of Opposition), and represent your interests throughout the process.

Additionally, our trademark attorneys are experienced in handling the discovery phase, gathering evidence, and presenting arguments before the TTAB. We can help ensure that you meet all deadlines and requirements, which is crucial to the success of your opposition.

Furthermore, having our trademark attorneys on your side can also help level the playing field if the other party is represented by counsel. This is particularly important if the opposition proceeding becomes contentious or if settlement negotiations are necessary.