Trademarks: A Brief Recap
On the most fundamental level, a trademark is a source identifier – when an individual sees a trademark attached to a good/service, the viewer immediately understands the source of that good/service, or the company, which produced it. A trademark may be a word, logo, phrase, sound and serves to distinguish a product from those of the company’s competitors. Assuming that a trademark is sufficiently distinct and does not infringe upon an existing trademark already registered in the USPTO (by being too similar to an existing mark or representing goods/services which are too similar to those of an existing mark), the trademark will be eligible for registration in the USPTO.
How to Monitor Your Trademark
Every couple of weeks, the USPTO provides the public with a list of approved trademark applications to its Official Gazette in order to give notice to individuals/companies who may want to oppose the registration of the proposed trademark. When a mark reaches the Official Gazette, it is said to be Published for Opposition and will remain on the Official Gazette for a period of 30 days. Very often, trademark holders will hire a trademark monitoring service to periodically check the Official Gazette and flag any pending trademarks that might infringe on the senior holder’s mark so that the senior has the chance to oppose the mark.
Can Anyone Oppose a Trademark?
The USPTO is concerned with balancing the competing interests of protecting the trademark holder from unnecessary harassment while still providing a legitimately concerned party with the opportunity to oppose the trademark. Thus, anyone with a “real” or bona fide interest in the proceeding of the trademark is eligible to oppose it. An abstract opposition to the publishing of the trademark is not enough – the opposer must somehow personally be affected by the registration of the mark, which very often takes the form of a Likelihood of Confusion claim. Here, the opposer will argue that the proposed trademark is excessively similar to his trademark and the registration of the trademark will adversely effect his own stake in the mark. Less common but still notable grounds for opposing a trademark include claiming that the mark is descriptive, scandalous, disparaging, primarily a surname, is functional, or the applicant is either not presently using the mark in commerce or lacks the intent to use it in commerce.
How Do I File a Trademark Opposition
Critically, Trademark Oppositions do not happen in a Federal Court but rather at the level of the Trademark Trial and Appeal Board (TTAB), which is an arm of the United States Patent and Trademark Office (USPTO). Thus, the TTAB does not have jurisdiction to consider any associated damages that may arise from trademark infringement but rather only establishes the merits and legitimacy of granting or denying a federal trademark registration.
In order to oppose a trademark, one must file a Notice of Opposition with the TTAB. The Notice of Opposition must state and articulate both the Opposer’s standing to file the opposition and the substantive grounds for the opposition. Typically, the applicant will have 40 days to provide an answer to the opposition and the Trademark Trial and Appeal Board (TTAB) will provide a series of deadlines accounting for each stage of the opposition proceeding.
What Does a Trademark Opposition Consist Of?
While a Trademark Opposition Proceeding does not occur in Federal Court, it has many of the same procedural aspects of a lawsuit including pleadings, discovery, and trial. Pleadings are fairly straightforward with the Opposer making an initial claim as to why the mark should be denied followed by the applicant’s response to the motion. The discovery phase, conversely, like any lawsuit, is an extensive and resource-consuming process and consists of requests for production of documents, admissions, written interrogatories, depositions etc. The trial phase of the proceeding is where both sides will make their respective cases in full substantive strength. Because, going through an entire trademark opposition proceeding can be so tremendously expensive (for both sides), it is very often the case that the two parties will reach a settlement before the proceeding becomes too advanced.
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