Trademark Oppositions: What Should You Do If Your Trademark is Opposed?

As a company owner or business owner or individual filing for a trademark, you will pay all of your fees and insistence wait several months for a trademark examination and review the application by trademark Authority. At the end of the examination process, if your application fulfills all of the standard for registration, the examiner will publish your application in trademark journal for “opposition.” But what does this mean? This article talks about the trademark opposition process before the Trademark Trial & Appeal Authority.

Trademark application has been “published for opposition.” What does that mean?

After your trademark application has been assess and approved by trademark examiner, the Trademark will be published for opposition, which signify that the mark opposition period starts. The trademark opposition period is a period of four (4) month 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 official Gazette of trademark department, an online trademark journal publication that carry all of the brand/trademark that have been published for opposition.

Who can oppose my trademark?

Anyone was a “real” or “lawful owner” interest in the trademark  may oppose a trademark form registration. Generally, this means that the opposing party must have a direct and personal pole in the outcome, and the belief must be logical and shows a real interest in the issue.  Therefore, a party cannot become an opposition because it thinks the registration of trademark would generally be unfair. He must show that it will have a personal intrest on the opposer. If the opposer is claiming that it owns the registration for a puzzling similar mark, the ownership proof of a trademark registration is generally sufficient, as long as the owner can show that in some way his or her registered trademark might be damaged.

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What are some of the reasons my trademark can be opposed by another party?

A party can oppose a trademark a various reasons, but the most time is based on a basis of confusion. Typically, registered trademark owners take benefit of trademark track services that alert those when someone is trying to get register a similar trademark for indistinguishable goods and services. They, along with their trademark consultants, will look at the trademark to see if would potentially damage their trademark already registred.

Sometimes, registered trademark property rights far beyond the reach of their registrations in order to stop competition. This is often known as “trademark bullying,” because it often occurs when a company with vast resources targets organization that may lack the knowledge or resources to fight these incorrect claims.

Apart from the more common likelihood-of-confusion oppositions, there are some other reasons a party may file an opposition, including:

The mark is general for the Applicant’s goods and/or services;
The mark is merely illustrative of its goods and services;
The mark is “disreputable”;
The mark is “belittle”;
The mark mendacious suggests a connection with the opposer;
The mark is primarily merely a last name;
The mark is utilitarian for its goods and services (i.e. the color red-green cannot be trademarked for safety vests);
The applicant is not using the mark or lacks a bona-fide intent to use the mark in business;
The mark has been reject;
The mark is geographically illustrative or geographically mis descriptive;
The mark would weaken 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 notice has been filed against your trademark application, you must file an reply within thirty days. This answer must respond to each of the statement made in the notice of opposition. Once your answer is filed, the Trademark Department will set a trial calendar with the deadlines for each stage of the opposition proceeding.

Opposition legal proceedings are like mini-trials. The Trademark Board allows limited revelation and parties are expected to respond within each of the trial dates assign. During this stage, you (or your trademark attorney) should be asking for evidence or information that will help you build your defense. Any evidence not set forth in the record cannot be referred to in briefs or motions. Either side may request an optional oral argument.

After some months later, the trademark department will issue its decision. If you are unhappy with the decision, you may appeal the decisions.

Hiring a trademark attorney to assist in responding to a Notice of Opposition.

It is vital to consider engaging a trademark attorney to appear for you before the Trademark Department.  When replying to a Notice of Opposition you must meet some legal process, and, ensure you follow by all the deadlines set by the Trademark Department.  It can be incredibly difficult for a trademark owner to reply to a Notice of Opposition and incessant meet all the requirements of the opposition proceeding without the guidance of trademark 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 reply to a notice of opposition or did not provide document required within the trial calendar. Generally, the trademark department will issue a favorable ruling for the opposing side..

What can I do to lower the chances someone opposes my mark?

With over more than 4 million existing registered trademarks on the Trademark Registrar, sometimes a trademark opposition is going to be unavoidable. However, the best way to stay away from a trademark opposition is 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 deliberately convert to maximize the chances of a successful trademark registration.