Trademark Opposition Proceedings and Services

 

As is hopefully self-evident at this point in the reader’s journey, Trademarks matter. A lot. Imagine for the moment that you have a trademark registered for a name, logo, or slogan and under its banner, your brand has performed magnificently. Suddenly, another person or company files a trademark in the USPTO that is remarkably similar to yours.  If you suspect that this competing trademark is sufficiently similar to yours to the extent that it is an infringement of your trademark rights, you may very well be able to avail yourself of a Trademark Opposition Proceeding.

Trademark Opposition Proceeding Services

 

Who Can File a Trademark Opposition Proceeding?

Anyone with a “legitimate interest” in a rival trademark filing can file an Opposition Proceeding. 

This means anyone who can prove that they risk losing money or business because of confusion between the two similar trademarks. Most countries have some sort of proceeding preventing a similar logo or trademark being used by two businesses, in order to prevent the loss of business from confusion, and/or the attempted unauthorized use of another person’s intellectual property. When you file an Opposition Procedure, you attempt to oppose, and therefore overturn, the filing of the rival trademark.

Should I Begin the Trademark Opposition Process?

 

There are a number of situations in which it would be beneficial to use an Opposition Proceeding.

Filing an Opposition Proceeding is especially useful to small businesses going up against the big guys. Trademark opposition is relatively simple, which means it won’t necessarily be cost prohibitive if you have a limited budget. Basically, if the cost of fighting the trademark application is less than the cost to your business if it goes through, it’s worth filing an Opposition Proceeding.

For instance, let’s say a big company wanted to start using a logo that was very similar to that of a small business. If the small business was weighing the cost of the proceeding, they would have to consider things like how much they have paid to advertise the trademark and how long, how much it would cost to effectively notify customers of a change, how much it would cost to pay for a change of signage, business cards, websites, and other branded content, and what damage might be done to their brand recognition, not to mention the cost of filing a new trademark. Considering all those costs, it might be worth it for the small company to file an Opposition Proceeding.

It should also be noticed that it’s rare for an Opposition Proceeding to lead to a court trial. Usually, complaints are settled before a trial begins. This makes it even more appealing for small businesses to pursue an Opposition Proceeding.

 

There are also some situations where filing an Opposition Proceeding isn’t the best idea.

In the case that you don’t actually have a registered trademark, it will be much more difficult to prove that your intellectual property belongs to you, especially when going against a larger company who has already filed multiple trademarks in different countries.

 

This is one (among many) reasons why Trademark Registration is Important.

It is much, much easier to prove legal ownership of a trademark if you have had the trademark registered. This applies to both US and international cases, and also makes it easier to use Customs to protect your IP. For instance, if a company trademarks its logo (like, for instance, the Nike swoosh), it can take legal action against similar logos in the US, and expand their ownership overseas to prevent knockoffs.

Trademark Opposition Proceedings – Timing Really Matters

 

Stay Focused on the Date

As a general matter, you have thirty days after a trademark application has been reviewed to file a Trademark Opposition Proceeding.  It is, however, possible to file an extension request, but you must file that request within the original 30-day time frame. Also, the extension only lasts 180 days from the original 30 day period.

 

The process of filing an Opposition Proceeding is relatively simple.

First, you file a Notice of Opposition with the court, explaining why you oppose the trademark. The Trademark Trial Appeal Board (TTAB) will then send out an order for both parties to review and answer the Opposition. This is done on a 40 day deadline.

The company with the trademark you’re opposing will either admit or deny the trademark violation, to see whether the full case should be brought to court. At this point, most cases are settled.

If the case isn’t settled, the TTAB then assigns the case to three judges, who will look over the materials and issue written decisions.  In cases of dissenting opinion among the judges, the majority opinion (two out of three) is held.

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