It’s Happening: Here’s How to Respond to a Trademark Opposition
Perhaps most importantly, it is critical to understand that Trademark Opposition proceedings along with all of the other proceedings (trademark cancellations etc.) available under the jurisdiction of the Trademark Trial and Appeal Board (TTAB) are akin to real, bona fide lawsuits filed in federal court. There are motions, discovery, and trial and as such, a trademark opposition proceeding should be taken very seriously and with the understanding that they can be time-consuming and costly indeed.
Remember, the TTAB’s primary purpose is to decide whether or not a given trademark deserves trademark registration in the United States Patent and Trademark Office (USPTO). After granting preliminary approval of a trademark, it is published to the Official Gazette for 30 days which allows any individual/company the opportunity to Oppose to the registration of the mark if the Opposer can demonstrate that he has standing (a legitimate interest in the case) and a substantive argument
I Have Been Served With a Trademark Notice of Opposition – Now What?
It is up to the TTAB to set the relevant dates for each part of the proceeding but typically, from the date of the filing of the Notice of Opposition, the defendant (yes, you are now a defendant in litigation!) has 40 days to file a formal answer with the TTAB. Of course, there are certain instances under which the TTAB will grant an extension of time to answer if the defendant can show good cause. When filing the answer to the opposition, there are several fundamental things to keep in mind.
- Read the Complaint very carefully and make an honest assessment, with the help of a trademark litigation attorney, of the strength of the complaint and the plaintiff’s likelihood of prevailing. It is incumbent on the plaintiff in the Notice of Opposition to provide an explanation as to why he has standing (how the registration of the trademark will be adverse to his own interests) along with a more detailed substantive argument which calls into question the defendant’s (that’s you!). Can you find any holes in the complaint (the registration of the trademark wouldn’t affect him one way or another)? Should the plaintiff’s standing be called into question? Is the substantive argument weak (Likelihood of confusion would be a preposterous outcome of the mark’s registration)? If the complaint seems weak and the case winnable, it might very well make sense to push forward to proceed with a response.
- Submit an Answer to the complaint which both satisfies the procedural rules of the TTAB, which can be found in the TBMP, and addresses the substantive arguments set forth in the complaint. Remember, this is litigation so there are formal and meaningful rules which must be followed. What is interesting about the format of the Answer is that while there are no strict structural guidelines to a proper response, there are certainly best practices. Each paragraph in the complaint must be addressed separately and will typically entail either denying or admitting (or claiming a lack of sufficient knowledge) to the facts contained in each respective paragraph of the complaint.
Trademark Opposition Attorneys
The complex and nuanced rules of the Federal Rules of Civil Procedure along with the idiosyncrasies of trademark law, as governed by the Lanham Aact (15 U.S.C. 1051) mean that trademark litigation is quite simply, very complicated. Speak with a Trademark Opposition Attorney to both discuss whether or not responding to a trademark opposition is worth pursuing and the best legal strategy to ensure that it is a success.
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