As the owner of a trademark, your material exists solely for the benefit of yourself or your business. If you suspect another business is aiming to use your trademarked material for their own benefit, you can contest their trademark rights through the US Patent and Trademark Office (USPTO). This is true even in business partnerships, where written agreements are crucial.
The USPTO has approved two different types of proceedings based on how much progress the infringing party has made in the trademark registration process. Trademark opposition proceedings allow you to challenge the validity of another party’s application to register a trademark after it has already been published. Trademark cancellation proceedings are filed after another trademark is registered and allow you to request registration cancellation due to trademark infringement. Both proceedings are filed with and heard by the Trademark Trial and Appeal Board (TTAB) within the USPTO.
HOW DO TRADEMARK OPPOSITION PROCEEDINGS WORK?
After an examiner from the USPTO has approved a trademark application, the trademark is published over a 30-day period. At this time, any party who feels they may be harmed by the trademark registration in question can launch opposition proceedings to challenge the registration. It is only after this period has expired that the USPTO may register the trademark. Trademark opposition can be based on various grounds, but the most common reasons for opposing a trademark include:
- The proposed trademark is substantially similar to an existing trademark, and allowing registration is likely to result in customer confusion.
- The validity of an existing and well-known trademark may be diluted if the proposed trademark achieves registration.
- The proposed trademark involves a surname.
- The proposed trademark is too generic for approval or is simply a descriptive term.
- The proposed trademark would harm an existing trademark owner by suggesting a false connection, origin, or sponsorship in relation to the existing trademark.
THE TRADEMARK OPPOSITION PROCEEDINGS TIMELINE
You can expect the trademark opposition proceedings to follow the timeline below:
- File a Notice of Opposition
The process begins when you have a prior interest in the other party’s trademark or believe that your business will be damaged by allowing them to complete registration of their trademark. You can initiate trademark opposition proceedings by filing a Notice of Opposition within the 30-day trademark opposition period. In some cases, it is possible to receive an extension, but this requires proving you are facing a serious issue that prohibits you from filing within the 30-day period. The Notice document initiates the proceedings with the TTAB, during which they review your Notice of Opposition to determine whether approving the proposed trademark would directly affect you.
- Wait for the Applicant to File a Response
After receiving your Notice of Opposition, the applicant must file an answer within 40 days. Failure to do so results in the abandonment of the trademark application.
- Attorneys Engage in the Discovery Process
At the beginning of the TTAB case, your attorney and the attorney representing the other party will conduct a conference to discuss their plans for the discovery process. This process involves requesting information related to the case, including interrogatories, admission requests, document requests, witness depositions, and expert testimony.
- Testimony Period
Next, the proceedings move to the testimony stage, during which both sides present evidence to the TTAB in alternating periods. As the petitioner, you begin by submitting your evidence over 30 days; then, the applicant is given 30 days to submit their evidence. Finally, you have 15 days to rebut the evidence.
- Trial Briefs
After both sides have presented all evidence and the case concludes, the respective attorneys file case briefs, also in alternating fashion. First, your attorney will file a Trial Brief; then, the applicant files their Trial Brief before you are allowed to file a rebuttal brief.
- TTAB Decision
The TTAB will review all evidence submitted by both sides, along with any oral arguments that may have been used to support this evidence. Then, the TTAB will issue their decision on whether to approve the application for trademark registration. You can expect to receive an official decision within six months after the case concludes. If the trademark applicant loses the case, they have the right to appeal this decision.
PROTECT YOUR TRADEMARK RIGHTS
If your trademark rights have been violated, opposition and cancellation proceedings are the first steps to combatting the infringement of your business’s trademarked intellectual property. These proceedings can prevent another party from registering a new trademark or cancel an existing trademark to avoid further trademark infringement. Unfortunately, in some cases, the infringing party fails to desist their illegal actions. When this occurs, the initial proceedings should be followed by federal litigation with assistance from an experienced attorney who specializes in handling intellectual property law cases.
At Blake & Ayaz, our team of Orange County trademark attorneys can guide you through every step of the TTAB proceedings to ensure you reach a favorable outcome in your case. We can also litigate your case in federal circuit court. With our guidance, you can present your evidence at a trademark trial to acquire a court order to stop the offender from continuing the infringement and secure compensation for any damages your business incurred due to the illegal actions.
Do not allow your competitors to reap the benefits of your hard-earned research and development efforts and steal your customers through trademark infringement. Contact our team today to protect your trademark rights and safeguard the future of your business.