Trademark Oppositions are an immensely powerful tool. If you feel that your trademark has been infringed upon by a competing party, and you catch the newly filed trademark in time, a Trademark Opposition proceeding may be your new best friend. If you are on the receiving end of a Trademark Opposition, it’s time to hire a Trademark Attorney.
Trademark Opposition and You: What it Means, and What to Do
You’ve taken significant steps to file your trademark. You’ve enlisted the help of an attorney, paid all the applicable fees, and jumped through the various hoops necessary to move the trademark process along.
Now your attorney says that the USPTO needs to publish your trademark application to the Official Gazette for opposition. This is another vital step in obtaining your trademark, and it’s important to understand exactly what the trademark opposition process and period is designed to do.
Trademark Oppositions: Grounds for Filing the Motion
Publishing a trademark for opposition is the beginning of the “trademark opposition period”, which is a period of 30 days where your trademark can be opposed. In order for someone to have the right to file a trademark opposition, he/she needs to show that the registration of the trademark would have a direct, negative effect on the applicant. These individuals must have a “real” or “legitimate” interest in the proceeding. As a general matter, trademark oppositions are filed because the individual/company already owns a registered trademark which he/she believes to be sufficiently similar to the junior trademark so as to cause consumer confusion if the secondary mark were to register. There are, however, other reasons why trademarks can be opposed. They include, but are not limited to:
Being too generic: opposed on the grounds that they are too general, or generic, for the goods and services offered.
Being disparaging: opposed on the grounds that they put down, disparage, or attempt to defame or discredit competitors.
Being false: opposed on the grounds that they falsely claim or even suggest a connection with another brand, individual, entity, or trademark
Being a surname: opposed on the grounds that they merely constitute a surname, which cannot, in of itself, be trademarked.
Being functionally necessary: opposed on the grounds that they are needed in order to provide the goods and services more generally. For instance, the color neon yellow on safety vests, or the color orange on traffic cones, cannot be patented, because they are necessary in order for the cones/vests to function.
Being unused: opposed on the grounds that the applicant is not using the trademark and does not intend to use it in the future.
Being geographically descriptive: opposed on the grounds that the trademark is simply a geographical description of an area. This opposition can also be used if the trademark is misdescriptive.
Diluting a “famous” mark: opposed on the grounds that the trademark clearly echoes a well known mark, and therefore could dilute that mark.
The Trademark Opposition Process
If someone decides to oppose your trademark, they file a notice of opposition. This notice will list any and all allegations and their reasons why they believe your application should be rejected.
Once the notice has been filed, you have 30 days to answer. This answer will respond to all of the allegations and attempt to prove that they are baseless, or at least not reason enough to reject your application. It is crucial that you answer within 30 days. If you do not, you will receive a “Notice of Default.” This may result in a ruling in favor of the opposition, which would be binding for your current application and any future applications you might try to file for the same mark – stick to the timetable and answer within 30 days.
If you respond within 30 days with your answer, the Trademark Trial and Appeal Board (TTAB) will then set dates and deadlines for the next steps in the proceeding. At this point, if you don’t already have a trademark attorney, it is advisable to hire one. Representing yourself as a trademark owner (or applicant) before the TTAB is complicated indeed – contact an experienced trademark lawyer to discuss your case.
When your attorney prepares your case for the trademark opposition proceedings, the objective will be to gather evidence which bolsters your case and which the opposing party may or may not be ordered to disclose for discovery. During the proceedings themselves, each side will present their points in briefs and motions, as well as optional oral arguments. Remember, the plaintiff’s job is to marshal evidence supporting the claim that the new trademark should not register while the defendant in a trademark opposition proceeding will attempt to prove why the trademark should register.
The Trademark Trial and Appeal Board will then deliberate. Generally, it takes several months for them to do so. At the end of the deliberation period, they will issue a decision.
If the TTAB decides to reject your application, you can appeal to Federal or district courts with jurisdiction over the trademark process.
Avoiding Trademark Opposition Proceedings
Remember, trademark oppositions happen because there is some question as to the legal viability of the new trademark – either it is too similar to an existing trademark or from a trademark law perspective, it is inherently non-trademarkable. Speaking with a trademark attorney before filing your trademark application will help you identify if your desired mark already exists and/or if your trademark is something that you cannot protect.