Trademark Oppositions
What Is A Trademark Opposition?
Why Would Someone Oppose My Mark?
A trademark opposition occurs when one party objects to the registration of an application for a mark. Typically, the third party learns of the application it wishes to object to after that application has been published for opposition in the Official Gazette. There are many reasons why a party would object to a proposed mark, including:
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Likelihood of confusion with an existing mark
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Descriptiveness
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Dilution
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Fraud
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Functionality
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Genericness
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No bona fide intent to use the mark
In any event, and no matter what the basis for opposition, each type requires its own assessment of the basis for opposition, a consideration of the best way to respond to the notice (informally with the objecting party or through formal Trademark Trial and Appeal Board (TTAB) proceedings) and a proper response aimed at overcoming the Opposition.
In the most general sense, an opposition is brought where the opposing party determines that registration of the complained of mark would damage the opposition's mark in some way.
What Is The Procedure After An Opposition Has Been Filed Against My Mark?
Failure to object to an opposition will be fatal to your application. You may be able to contact the opposing party directly to amicably resolve the dispute and have the opposing party drop the opposition. More likely than not, however, you will need to respond to the notice, known as an institutional order, that has been sent to you.
Once filed, the TTAB will send an institutional order to the applicant, notifying that party of the opposition and its' basis. If the applicant fails to answer the institutional order within 40 days, the TTAB will send a notice of default and the application will be deemed to be abandoned, unless the applicant responds to the notice of default.
After filing the answer with the TTAB, denying each of the claims within the opposition's complaint, both parties will need to comply with the initial disclosure requirements and the discovery deadlines indicated on the notice (usually within 30 days after the answer is due).
After discovery, the proceeding continues through motions and submission of evidence to the TTAB and then the submission of a brief laying out each party's argument succinctly and attempting to persuade the TTAB why that party's position should prevail. Oral argument before the TTAB may be requested as well, if so desired.
If you have received an Opposition, time is of the essence, and you should contact a knowledgeable attorney that can best respond to the opposition brought about by the third party. I can help assess the basis for the objection, formulate a proper response and/or suggestion that might sway the objecting party to drop the opposition (through negotiation, consent or co-existence agreement) or, if necessary, to continue the TTAB opposition proceeding and fight for your mark. For more personal information or for a more full assessment of your situation, feel free to book an office action consultation here. Intellequity is Portland's personal small business and trademark attorney!