Have you received a notice that someone has filed for an extension of time to oppose your trademark application with the Trademark Trial Appeal Board?
You may be thinking:
Receiving a notice that someone may challenge your trademark application can be nerve-wracking, but often these issues can be dealt with quickly, without needing to abandon your trademark application or fight an expensive and prolonged legal battle. This article will discuss what happens when a third-party files an extension of time to oppose your trademark application and provides some tips on some of the ways to move forward after an Extension is filed.
The Publication Period
You filed your trademark application and patiently waited months for the United State Patent and Trademark Office to review your application. You likely received notice that your trademark was approved by the government attorney for “publication.” This means that a government attorney, known as a Trademark Examining Attorney, reviewed your application and did not find any similar registered trademarks or other reasons to prevent you from registering your trademark. Congratulations! You are one step closer to obtaining your registration. While being “Approved for Publication” is an important step in the process, it is not the end of the road. Once approved by the Examining Attorney, your application is published in the “Original Gazette” an online publication of trademarks available to the public and the “Publication Period” begins.
The “Publication Period” is a period of time wherein any third-party with standing can challenge the registration of your trademark. The grounds for that challenge can be based on a number of different reasons, such as the third-party’s alleged prior trademark rights (e.g. they used a similar mark on related goods or services before you), allegations that your trademark is merely descriptive or generic, or a number of other reasons. Typically, the Publication Period lasts for thirty days. If no one challenges the application (by filing a Notice of Opposition) within the Publication Period, then your application will proceed to registration. However, a third-party may request additional time to oppose a trademark application and will be given up to ninety days to challenge your application.
During the Publication Period, you may check your trademark application’s online record, located as tsdr.uspto.gov, and see the following text:
A request for an extension of time to file an opposition has been filed with the Trademark Trial and Appeal Board. For further information, see TTABVUE on the Trademark Trial and Appeal Board web page.
As mentioned above, this means that a third-party is considering filing a Notice of Opposition against your trademark application.
You may also be sent a notice from the Trademark Trial and Appeal Board, the administrative court that handles all trademark oppositions, cancellations, and appeals for the USPTO.
This can be a scary and uncertain time for you as a trademark applicant, especially if you are unsure about your rights and responsibilities moving forward. However, now is not the time to panic. Now is the time, however, to prepare for a potential opposition and consider your options moving forward.
Best Practices when Dealing with Extensions of Time to Oppose
The first thing you should know is that, at this time, no one has filed anything that will permanently prevent you from obtaining a trademark registration. An Extension of Time to Oppose is a temporary extension that will give the third-party time to further review its legal position. It does not cost anything to file an extension and the USPTO will grant extensions up to 90 days automatically (in almost all cases).
The best way to proceed will completely depend on the facts of each case, but here are some best practices.
Sometimes, a third-party may request an extension of time to oppose and, at the end of that extension deadline, will decide not to do anything. They may not reach out to you; they might not file anything with the USPTO. Because extensions do not cost anything, they are an easy way to give the third-party time to make decisions. If the party requesting the extension does not file anything within the time allowed, they cannot file for further extensions and cannot (at this time) challenge your application.
Be careful, though. This does not mean that the third-party will never challenge your registration or will not object to certain uses of your trademark. They could simply be waiting to see how you use the trademark. They could potentially even file a trademark lawsuit instead of opposing your trademark application if they think you are egregiously infringing their trademark. The Publication Period is often the first time a potential competitor may have seen your proposed mark and an Extension to File could be the first warning shot in an all-out trademark war. It is important to know the strength of your case and the best way to move forward to protect yourself.
Contact An Attorney for an Evaluation of Potential Opposition Claims
Knowing the strength of the potential claims against you can help you plan for the future. While there is a lot of free resources available online, each case will include unique facts that could dictate the best way to move forward. You should contact a trademark attorney with experience in trademark oppositions to evaluate the situation and prepare a solid plan for moving forward. There are several different scenarios that could affect the likelihood that someone will end up filing a formal Opposition at the conclusion of its time to oppose.
Owners of Registered Trademarks
Trademark owners will often pay for “monitoring” of the USPTO’s database, searching for any new trademarks that may be confusingly similar to one of the owners’ existing trademarks. If a trademark owner allows similar trademarks to be registered for similar goods and services, then it will affect the overall strength of their trademark. In the future, they will find it harder to stop other third-parties from using similar marks as well.
Trademark Applications That May Be Denied Because of Your Application
A trademark applicant may also file an Extension because its application, filed after yours, was “suspended” while the USPTO reviews your application. There is a very good chance that when your trademark applications registers, the other applicant’s application will be denied. If the other side thinks that, for any reason, it has, for example, used the trademark first, it may consider filing a Notice of Opposition to stop your registration.
Third-Parties Who Think Your Mark is Descriptive, Deceptive, Offensive, Etc.
There are other reasons for filing Extensions. The other party might think that your trademark is merely descriptive or generic, and that everyone in the industry should have a right to use that phrase on their products. It might also think that you are not using the trademark or did not have a real intent-to-use your trademark when you filed. It might even think your trademark is offensive or immoral (although this may or may not apply in the future, as there are two cases currently before the Supreme Court on this issue as of May 1, 2016.) There are many reasons to file Extensions and a trademark attorney with experience in Opposition can help you navigate the potential claims.
Before you decide to take (or not take) any action, you should have a consultation with a trademark attorney experienced in dealing with trademark oppositions. The strength of the other party’s claim will significantly effect the best way to deal with them in the future.
If you receive correspondence, take and deep breath and think carefully before responding
Sometimes, during the Extension time period, the party filing the extension will send you a letter or other correspondence. It might be on intimidating letterhead and use a lot of legal language, but, at its heart, it will be a letter meant to lay out the other parties’ alleged claims and often will make demands. These types of letters usually seek to solve the problem quickly and may seek a wide range of demands and requests. Many times, the letter will contain terms in which the other party is willing to co-exist in the marketplace, usually detailed in a Co-Existence Agreement, wherein both sides agree to use their trademarks in a way to avoid the likelihood of confusion. However, sometimes these letters will contain demands that you stop using your trademark, restrict your use of the trademark, and/or abandon your trademark application.
Agreeing to any terms without carefully reviewing the facts is dangerous. Sometimes, companies will make far-reaching, broad claims to trademark rights that they are not legally entitled to. We often refer to these types of companies as “trademark bullies” and they can attempt to muscle out other valid trademarks based on aggressive legal tactics. Sometimes, a party may think they have prior rights in a trademark, but do not have all of the facts.
The consequences of accepting the opposing party’s terms without careful consideration can be extreme. For example:
If you abandon your trademark application, you will not have a federal registration, which gives you a number of important benefits that allow you to more easily enforce and protect your trademark rights against infringers. You will also lose your “priority date,” meaning that, if you applied based on an “intent-to-use,” you will forever lose that early application date. Others who use or file an application for a similar mark for similar services may be able to prevent you from obtaining a trademark registration in the future, and, in some cases can prevent you from using the trademark at all.
Sometimes agreeing to co-exist with another party seems extremely appealing, because it would allow you to avoid legal proceedings and may allow you to obtain a trademark registration. If you agree to co-exist with another party, this is usually done through a formal agreement known as a Co-Existence Agreement (and may also be accompanied by a Consent to be filed with the USPTO). However, you must keep in mind that this will narrow the scope of your trademark rights. Because you have signed a legal agreement stating that, under certain circumstances, you do not believe there will be confusion between the use and registration of two similar trademarks, this potentially means that if other third-parties use a similar trademark, you may not be able to stop them. Those third-parties would claim that, because you agreed co-exist with one party, the next party that comes along should also be able to co-exist without confusion. Exclusivity is important to enjoying a wide scope of trademark protection against potential competitors and agreements to co-exist can restrict that exclusivity and weaken your trademark (and scope of your federal trademark protection).
However, sometimes the facts of the potential claim can be interpreted in different ways and, if it proceeds to an Opposition, can cost a significant amount. It might make sense to enter into a co-existence agreement with a party, so long as it adequately protects your rights. These Agreements need to be carefully drafted to ensure that it is legally binding and that both sides are aware of their rights and responsibilities (and should always be reviewed by your trademark counsel).
Finally, another party may have a fairly straightforward valid claim to prior trademark rights. If, after review by an attorney, this appears to be the case, then you will likely want to consider changing your trademark and abandoning your registration. However, it is important to get a formal agreement in place wherein the other party agrees to release you from any prior liability for your use and/or attempted registration of the trademark in the past. Simply withdrawing your trademark application will not prevent a party with superior rights from bringing a lawsuit if it feels like your past use of the trademark damaged its business. A proper settlement agreement is important to spell out exactly what your obligations are to the other party in exchange for your agreement not to use the trademark.
If you have any questions about the publication process, the extensions that are allowed, the filing of an Extension of Time to Oppose or the filing of an opposition, contact an attorney experienced in trademark oppositions before the USPTO and make sure that you are taking the right steps to protecting yourself, your business, and your trademark. Don’t get bullied into making harmful admissions or giving up valuable trademark rights just because you may feel threatened or confused. Gerben Law Firm provides free consultations and can help you prepare a plan moving forward with your current and future trademarks. You may contact our attorneys by completing a CONTACT FORM on our Web site.