What Do I Do If My Trademark Has Been Opposed?
A few months after filing your trademark, you will hear from a Trademark Examiner regarding your application. Assuming there are no issues, an Examiner will publish your mark for “opposition.” This blawg will explain what it means to have an application published for opposition, and this process with the Trademark Trial and Appeals Board (TTAB).
Once your application is approved, you will receive a notification of notice of publication. This notification will inform you that on a certain date, your mark will be published for opposition. This date is the date that the opposition period will begin. The opposition period lasts for 30 days, and this is the time when anyone with a similar mark or real interest can oppose your application. If this occurs, another individual or company can attempt to suspend your application, stopping the registration process. All marks are published in the Official Gazette (https://www.uspto.gov/learning-and-resources/official-gazette), which is updated weekly by the USPTO with all the marks published for opposition.
As noted, anyone with a similar mark can oppose your trademark. Additionally, if an individual or company has a legitimate interest in a proceeding, they may oppose your mark. For example, Apple’s signature “i” in front of their products is a significant source identifier for the tech company. If you were to file a trademark application for “iLove” for computers or smartphones, Apple would likely oppose your mark because they would have a reasonable and legitimate interest in protecting their intellectual property. Also, in these situations, showing a trademark registration that would be confusingly similar is justified to oppose.
On the other hand, a party could not oppose an application just because a mark would be unfair, or they simply did not like it. An owner must show that their trademark registration, business, brand or prior-pending application would be damaged in some way. Normally, trademark applications are opposed because marks are confusingly similar to already registered trademarks, however, there are other reasons. A trademark may be opposed because a mark is generic, disparaging, inappropriate, functional, merely descriptive, geographically descriptive, would dilute a famous mark and various other reasons that would directly damage the Opposer.
If your trademark has been opposed, an answer must be filed with the USPTO within 30 days from receipt of the opposition. If you are filing the answer individually, or with the help of a Trademark Attorney, every part of a complaint must be responded to. Since an opposition proceeding is similar to a trial, the TTAB schedules trial dates, and permits parties to enter into discovery. You or your trademark attorney will use this period to build an argument, ensuring a strong defense to bring forth to the TTAB. Responding to the TTAB requires certain legal requirements, and strict deadlines. For these reasons, we strongly encourage you to hire an experienced Trademark Attorney to assist you throughout the proceedings.
After hearing both sides, the TTAB will issue a decision within a couple of months. If you are disappointed with the outcome of the proceeding, you may appeal the decision to a federal court or district court with proper jurisdiction.
If you or your business have questions about notices of publication or trademark opposition and you require advice regarding trademarks, contact the Business Law and Business Litigation Attorneys at The Jacobs Law LLC at 1-800-652-4783 or email TRADEMARKS@THEJACOBSLAW.COM.