Trademarking intellectual property is an extremely complex area of law. Under the best of circumstances, having a trademark registered is time-consuming and steeped in legal processes and minutiae, often requiring the expertise of an Orange County trademark attorney. The complexities and the need for legal assistance become even greater when a party files an opposition to your trademark request.
It’s important to understand the potential for your trademark to be opposed and what steps to take if it is.
When Does Opposition to a Trademark Occur?
After you file for a trademark, whether as an individual or a business entity, your application will be examined in a lengthy review process that can take months. Once the examining trademark attorney for the United States Patent and Trademark Office determines the registration is appropriate and all applicable fees have been satisfied, the examiner publishes the application for opposition.
The publication takes place in the Trademark Official Gazette, which is issued online each Tuesday with representative drawings of the mark being published and bibliographical information for searchability. The Tuesday your mark is published kicks off a 30-day opposition period.
A party seeking to oppose a trademark can file an opposition with the USPTO during the 30-day window or ask for an extension to the opposition period.
Who Can Oppose a Trademark?
Opposition can’t be filed by just anyone. The party filing opposition must have a stake in preventing the mark from being approved, such as potential loss of value to one of their existing trademarks. This limitation prevents a third party from attempting to block a trademark based on malice, a belief the trademark is unfair, or trolling trademark applicants with flippant oppositions.
Demonstrating the damage a new trademark would cause to the opposer’s existing trademark is the most important legal aspect in determining if the opposition will be upheld. This damage is most often argued based on the potential for confusion on similarities between marks.
Besides similarity-inspired confusion, some of the other interests someone may take in opposing a trademark include:
- The mark is generic as it relates to the good or service provided by the applicant.
- The mark describes the good or service offered without creating distinction they are being offered by the applicant.
- Scandalous or disparaging marks that denigrate an existing trademark.
- A mark suggesting a false connection to an opposing enterprise.
- The mark involves geographic description.
- Lack of intent to use the mark for commerce.
- It’s an abandoned mark.
- The opposer’s mark is famous, and the new mark would dilute its recognizable value.
An opposer can come up with any number of other explanations of why they are challenging the mark, but at the root must be the interest of the opposer and the impact on them.
Discovery of Who Opposed
When an opposition is filed to your trademark application, the USPTO will notify you of the opposer and the grounds on which the opposition is filed. Each of those grounds must be formally replied to within 30 days, after which the timing for a trial phase will be established with time for discovery, exchange of written submissions, and possibly oral arguments if requested. This will add several more months to the trademark approval process and brings the potential of an unfavorable ruling. If the board overseeing the case rules against your case, your legal options involve appealing in federal court.
The opposer filing for an extension to the initial opposition for additional time to bring their challenge can work to an applicant’s advantage. The extension filing will trigger a notification to the applicant that identifies who the potential opposing party is. You and your Orange County trademark attorney can preemptively examine the causes for which the challenge is being taken and have defenses ready. It can also provide an opportunity to negotiate.
Failure to respond to a notice of opposition in a timely fashion can lead to a notice of default, the equivalent of a summary judgment in favor of the opposing party. In the event of a default, you will need to take additional steps to have the default lifted before attempting to continue the trial or resubmit the mark. It’s not an option to start over and attempt to relitigate the mark with different arguments.
When you know the identity of the opposition filer, you and your attorney may ascertain if negotiating with the opposer has a better chance of leading to success than moving forward defending the mark in a patent and trademark trial. Edits to the mark or compensation for withdrawing opposition are an option a talented trademark attorney can navigate as potential options.
How Did the Opposer Find My Mark?
In the vast expanse of marks published each week for the opposition, it may seem to a novice applicant that an application will slide through unnoticed. The onus is on the holder of a trademark to defend the value of their mark for commerce, meaning many companies and entrepreneurs work with trademark monitoring services to watch for worthy oppositions. If you succeed in registering your trademark, you’ll want to be aware of potential threats to it as well.
There are more than four million trademarks currently registered. Do your research and seek expert assistance in examining your mark’s chances of being opposed before you file.
Beware of “Trademark Bullies”
Deep-pocketed trademark holders who routinely overstate their own rights while opposing more vulnerable applicants are trademark bullies. The company with greater resources uses its legal team to try to outlast a smaller company or independent applicant who lacks the know-how or finances for a long contest. If a trademark bully comes for your application, make sure you have an Orange County trademark attorney ready for the fight.
Finding the Right Attorney
Whether you are filing for your first trademark, are facing opposition to a trademark for the first time, or your business regularly deals in trademarks but needs new representation, choose a firm with the necessary specialization. Blake & Ayaz is an Orange County trademark cancellation and opposition lawyer ready to help you win important battles to protect your intellectual property. Contact us to schedule a consultation today.