Every two weeks, the United States Patent & Trademark Office publishes all of the approved trademark applications to the Original Gazette for opposition. Whether you’re an attentive trademark owner who checks the Gazette frequently, or you subscribe to a trademark monitoring service you may see a trademark that you, as a trademark owner (or, as we will discuss later, a member of a group being disparaged by an application) object to. This article discusses the trademark opposition process before the Trademark Trial & Appeal Board.
I see that a trademark confusingly similar to mine has been “Published for Opposition?” What does that mean?
After a mark is reviewed by an examining attorney at the USPTO, the mark will be published for opposition, which means that the trademark opposition period starts. The trademark opposition period is a period of thirty days when anyone with a real interest in the proceeding can oppose the trademark application and attempt to stop the trademark from being registered. While this does not mean that the applicant is entitled to any benefits of a federal registration, it means that the examiner found no issues with the application and has approved it. If no one opposes the mark, it will issue.
Who can oppose a trademark?
Anyone was a “real” or “legitimate” interest in the proceeding may oppose a trademark. Generally, this means that the opposer must have a direct and personal stake in the outcome, and the belief must be reasonable and reflect a real interest in the issue. Therefore, a party cannot bring an opposition because it thinks the registration would generally be unfair. It must show that it will have a personal effect on the opposer. If the opposer is claiming that it owns the registration for a confusingly similar mark, the ownership of a trademark registration is generally sufficient, as long as the owner can show that in some way his or her trademark might be damaged.
How did the USPTO let this happen?
Trademark examiners at the USPTO are human beings and can sometimes miss registrations that are confusingly similar to the applied-for mark. This is precisely what the trademark opposition period is for, but trademark owners must be diligent in order to prevent a confusingly similar mark from gaining a federal trademark opposition.
What are some of the reasons that I can oppose a trademark application?
A party can oppose a trademark filing for a variety of reasons, but the most frequent is based on a likelihood of confusion. Typically, trademark owners take advantage of trademark monitoring services (link to ours) that alert them when someone is trying to register a similar trademark for similar goods and services. They, along with their trademark attorneys, will look at the mark to see if would potentially hurt their trademark registration.
Aside from the more common likelihood-of-confusion oppositions, there are other reasons a party may bring an opposition, 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 bona-fide 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.
I want to file a notice of opposition. What do I do now?
In order to file an opposition, you must file a notice of opposition with the USPTO. In this notice, you must plead the grounds of your opposition and explain why the application should not register. Once your notice of opposition is filed, the applicant has thirty days to respond with an answer. The Trademark Trial & Appeal Board will set a trial calendar with the deadlines for each stage of the opposition proceeding.
Opposition proceedings are like mini-trials. The Trademark Trial and Appeal Board allows limited discovery and parties are expected to respond within each of the trial dates set forth. During this stage, you (or your attorney) should be asking for information that will help you build your defense. Any information not set forth in the record cannot be referred to in briefs or motions. Either side may request an optional oral argument.
Several months later, the TTAB will issue its decision. If you are unhappy with the decision, you may appeal the decisions to the Federal Circuit or to a district court with jurisdiction over the matter.
I noticed that a trademark application was just filed and I know I want to oppose it. Can I just oppose it immediately?
Trademark oppositions can only be filed during the opposition period and not before. Chances are, if you see a mark that is confusingly similar to your own, the trademark examiner will deny the application. If not, then you may bring an opposition once it has been published for opposition.
Is it a requirement to hire a trademark attorney to file a Notice of Opposition on my behalf?
While it is not a requirement to engage an attorney to assist you in preparing and filing a Notice of Opposition, it is highly recommended. If your Notice of Opposition is not properly drafted it may be easy for the other party to have your opposition dismissed. The attorneys here at Gerben Law Firm are experienced TTAB attorneys and can assist you in evaluating your case and filing your Notice of Opposition.