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
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:
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.