As a business owner or individual filing for a trademark, you will pay all of your fees and patiently wait several months for a trademark examining attorney to review your application. At the end of the examination process, if your application meets all of the criteria for registration, the examiner will publish your application for “opposition.” But what does this mean? This article discusses the trademark opposition process before the Trademark Trial & Appeal Board.
My trademark application has been “published for opposition.” What does that mean?
After your trademark application has been reviewed and approved by an examining attorney, 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. The mark is published in the Original Gazette, an online USPTO publication that contains all of the trademarks that have been published for opposition.
Who can oppose my 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.
What are some of the reasons my trademark can be opposed by another party?
A party can oppose a trademark a variety of reasons, but the most frequent is based on a likelihood of confusion. Typically, trademark owners take advantage of trademark monitoring services 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.
Sometimes, trademark owners assert rights far beyond the scope of their registrations in order to prevent competition. This is commonly known as “trademark bullying,” because it generally occurs when a company with vast resources targets companies who may lack the knowledge or resources to fight these false claims.
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.
Someone has opposed my trademark application. What do I do now?
Once a notice of opposition has been filed against your trademark application, you must file an answer within 30 days. This answer must respond to each of the allegations made in the notice of opposition. Once your answer is filed, 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.
Hiring a trademark attorney to assist in responding to a Notice of Opposition.
It is important to consider engaging a trademark attorney to represent you before the Trademark Trial and Appeal Board (the “TTAB”). When responding to a Notice of Opposition you must meet certain legal requirements, and, ensure you abide by all the deadlines set by the TTAB. It can be incredibly difficult for a trademark owner to respond to a Notice of Opposition and continuously meet all the requirements of the opposition proceeding without the assistance of an attorney. If you would like a free consultation with a trademark attorney you can complete our contact form.
I received a “notice of default.” What is that and what can I do?
If you received a “notice of default,” this means that you did not respond to a notice of opposition or did not provide information required within the trial calendar. Generally, the TTAB will issue a favorable ruling for the opposing side. In some cases, you may be able to file a motion to lift the default judgment and continue on with the trial. If a default judgment is issued against you, the judgment is binding against any future applications you try to file for the same mark. You cannot simply start over and argue different arguments before the USPTO.
What can I do to lower the chances someone opposes my mark?
With over 4 million existing trademarks on the Federal Register, sometimes a trademark opposition is going to be inevitable. However, the best way to avoid a trademark opposition is a comprehensive trademark search before you even file your trademark application. By using a trademark search specialist to review federal, state, and common law trademarks that might be similar to your mark, your application can be carefully tailored to maximize the chances of a successful registration.