In the event a mark that is published for opposition is of concern to an owner of an already registered mark, the USPTO (the United States Patent and Trademark Office) offers trademark opposition proceeding as a tool to pause the registration process This process is designed to protect the interests of businesses and consumers alike. In this post, we’ll go over the basics of trademark opposition proceedings.
It’s a “tale as old as time.” You start a business, apply for trademark registration for the name, logo, and slogan, and eventually, develop brand recognition. If you’re successful, you are going to start seeing some competitors do similar things. Imitation can be the highest form of flattery, but it can also expose your brand to manipulation.
A tool that often utilizes trademark enforcement: Trademark Opposition Proceedings
The basics of the trademark opposition proceedings are pretty simple. Trademark owners have many ways of protecting their brand ranging from cease and desist letters to federal litigation. But if you have a competent portfolio management strategy, then you have a trademark attorney or someone in-house, constantly monitoring your brand’s exposure to possible infringement.
When you apply for a trademark, the USPTO will check to make sure that there are no similarities to other trademarks. Sometimes, though, things slip through and are published in the official trademark gazette. This is where the burden shifts, usually on the trademark owner, to enforce their trademark rights against a possible infringement. The mechanism to oppose is limited to applications for registration in the principal register.
How is Trademark Opposition different from Trademark Cancellation?
There are two types of proceedings when it comes to trademarks: opposition and cancellation. Cancellation proceedings can only happen after a trademark is registered, while opposition proceedings usually happen before a trademark is registered.
More specifically within 30 days of the applied-for mark being published in the official trademark gazette. As a trademark owner, you have 30 days to file a notice of opposition after you discover a trademark infringement. . An initial extension through the filing of a notice of opposition is usually for 30 days and costs no extra fees.
Basis (scenarios) for filing an opposition
The most common ground for opposition is the likelihood of confusion. The confusion does not need to be possible, actual, or inevitable. The only thing the board at the trademark trial and appeal board (TTAB) will be looking at is if the conflicting mark would confuse a considerable amount of consumers.
Other grounds for opposition:
- Dilution – a fancy way of saying: “This applied-for mark weakens my registered mark”
- No bonafide or intent to use the mark in commerce
- Good old fraud
A complete list of grounds of opposition and the proceeding procedure can be found in this link.
Difference between a TM Opposition vs TM Infringement proceedings
You might think both of them kind of sound like lawsuits. Are they different?
A relief granted by the TTAB is limited to rejecting the applicant’s mark from being registered. However, a TTAB decision is often a deterrent for the applicant and can have a preclusive effect in civil proceedings to receive injunctive relief. Opposition hearings are usually less expensive than a trademark infringement lawsuit.
When the TTAB looks at the conflicting marks, they often use a test that is favorable to the person who opposes the mark. The board looks at the mark as it is applied, instead of how it will be used in the marketplace. This is a narrower assessment than the one the federal court applies.
This is not to say an opposition hearing won’t last long. It can. It can also leave your brand vulnerable to third-party actions and lead to future lawsuits.
Before filing a notice of opposition, it is always important to note the opposer’s realistic expectations with specific desired outcomes. The likelihood of success should dictate the opposer’s strategy and any possible settlement alternatives should be reviewed. Common settlement options include coexistence agreements, amendments to goods or service descriptions, geographical restrictions, etc.
Ways to Defend an Opposition Proceeding (Common Defenses)
There are many ways to defend an opposition proceeding, but the opposer’s best case scenario is for the applicant to abandon the application after the filing of the notice of opposition. However, a good strategy includes the expectation of a response, narrowed down to the applicant’s best arguments against the grounds listed in the notice of opposition.
The applicant’s most common defenses include
- Rebuttal of the asserted grounds: Each ground requires a methodical approach for rebuttal. For example, a likelihood of confusion rebuttal must include:
- Evidence of first use.
- An argument stating the opposer’s mark is weak and entitled to none or limited protection.
- An argument stating the opposer’s mark is similar to others in a crowded marketplace.
- Evidence, if available, that the parties have coexisted for a long period without any evidence of confusion.
- Evidence on how the marks are dissimilar in appearance/sound/connotation and how the goods/services are unrelated.
- Acquired distinctiveness / Secondary meaning: This is specifically a defense to the grounds of descriptiveness, deceptively misdescriptiveness, geographical descriptiveness, and surname. The applicant will have to prove the applied-for mark has acquired secondary meaning through evidence.
- If an applicant owns a registered trademark that is the same or essentially the same mark as the applied-for mark and also has the same goods and service description, they can use the Morehouse defense.
- The applicant also has the option to file a counterclaim action in the way of a cancellation proceeding. If the basis for standing for an opposer comes from the ownership of a prior registered trademark, the applicant can then challenge the validity of the opposer’s registration by filing a cancellation proceeding. Please feel free to watch my video on cancellation hearings here.
It all begins with a competent portfolio management strategy. This is the foundation of any successful investment plan and without it, you are more likely to fail than succeed. However, with a sound strategy in place, you can maximize your chances for success.
As an applicant, you can save time by conducting a proper search and clearance through a trademark attorney. As an opposer, you can implement an enforcement strategy that includes monitoring and swift action when needed.
As you can see, trademark opposition proceedings are a powerful tool that businesses can use to enforce their trademarks and protect their brands. However, these proceedings can be complex and it is important to have a strong understanding of the process before moving forward. If you would like more information or want to discuss your specific situation, please don’t hesitate to contact us. We would be happy to schedule a discovery call with you and help you determine the best course of action for protecting your brand. Thanks for reading!
If you have any questions about Trademark Opposition Proceedings and would like help getting a better understanding of it, we’d be happy to schedule a discovery call with you. During this call, we can discuss your situation in more detail and come up with a plan tailored specifically for you.
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Sahil Malhotra is an Intellectual Property Attorney, who founded Drishti (“vision”) law because of his vision in protecting dreams and ideas.
He provided individuals and small businesses with an opportunity to enhance their IP’s value by helping them register trademarks and successfully argue against office actions. In addition to his training and experience, he has been deeply involved in the multifaceted IP portfolio at UIC and continues to be associated with IP organizations and conferences.
To know more about Sahil Malhotra — Click Here