After a trademark application has been approved by an examining attorney, the applicant may believe that it has cleared all the hurdles on the path to registration. But that is not the case. Before a trademark registers it will be published for opposition. The opposition period is when other trademark owners can oppose your application if they believe your desired trademark conflicts with their own.
The opposition period lasts 30 days, although there are circumstances in which the opposing party may be granted an extension. The opposition period is critical not only when you are attempting to register your trademark, but after your trademark is successfully registered as well. You will need to keep a sharp eye out for possible infringing activity, and file notices of opposition as necessary. Examining attorneys for the United States Patent and Trademark Office (USPTO) are human beings, and they do not always catch confusingly similar trademarks in the registration process.
Registering a Trademark
Trademarks can be federally registered with the USPTO office. Although it is not required to federally register your trademark, doing so offers greater legal protection for your brand. When your trademark is successfully registered, you will have the presumption of ownership should an infringement case end up in litigation.
Unregistered trademarks are still protected by common law rights, which typically only apply locally. It’s much more difficult to litigate common law trademark lawsuits, since there is no presumption of ownership or validity. Additionally, the courts are less likely to award damages in common law trademark cases. Because of this, it’s a good idea to prioritize federal registration.
Trademark applications typically take about four months to be reviewed by an examining attorney. If there is a problem with the application, the applicant will be contacted about the issue. The issue could be a conflict with an existing trademark or a problem with the information provided in the application. Applicants have six months to respond to office actions. Once an examining attorney has approved the application, the trademark will be published for opposition.
To avoid infringement issues including trademark oppositions, the best option is to have a trademark attorney conduct a trademark search prior to filing. The Trademark Electronic Search System, or TESS, is a free search engine tool for a basic search of federally registered trademarks. This should be supplemented with other searches, so you can spot unregistered trademarks as well. You can augment the search by researching your desired trademark on Google. You can also use a tool such as Name.com to find domain names in use that might conflict with your trademark.
The Opposition Period
You might wonder why the opposition period is necessary if an examining attorney has approved the application and determined that the trademark in question doesn’t conflict with any existing trademarks. But trademark attorneys can make mistakes like everybody else. There may also be infringement issues that arise that are not clear from the trademark application itself. A use that may not seem to be conflict at first blush can be clearer after further investigation.
The USPTO publishes the most recently approved trademark applications every two weeks in The Trademark Official Gazette (TMOG). During the 30 day opposition period, other business owners can come forward and attempt to prevent the registration. It’s important to note that only individuals who can demonstrate that they have a vested interest in the approval of the trademark can oppose the registration. Parties without stakes in the matter can’t simply oppose the trademark because they think it is unfair.
In order to oppose a trademark application, you will have to prove that the registration will be harmful to your brand in some way. This could be for a variety of reasons.
- The registration will cause a likelihood of confusion: This is the most common reason a trademark application is opposed. In infringement lawsuits, the main issue is whether the trademarks in question are similar enough to cause a likelihood of confusion among consumers.
- The trademark is descriptive or generic. Trademarks are not meant to grant one company the right to exclude others in the same business from using words that describe the products or services. So if a furniture store were able to register the words FURNITURE STORE, that would obviously cause problems for other furniture stores in offering their goods. In a case like that, one of the competitors may decide to oppose the application.
- The registration will dilute the value of an existing trademark. In many cases, identical trademarks can be registered if the industries are different enough. However, a company may oppose the registration of the trademark even if they are selling completely different products to different consumers. For example, McDonald’s is still likely to oppose your trademark if you open up a skincare line with the McDonald’s brand name. In that case, McDonald’s might argue that this usage dilutes the value of their brand.
When to Oppose a Registration
As a trademark owner, it is your responsibility to monitor the usage of your trademarks and act on any infringing activity you see. You should have a trademark watch set up to be notified of similar trademark filings, and keep an eye out on Google and social media sites to be sure that your trademark is not being infringed. It’s not feasible for many business owners to spend hours a week monitoring their trademark’s usage, so many choose to outsource this task to trademark attorneys.
It’s crucial to respond swiftly to any infringing trademark application, as you only have 30 days to oppose the registration. If you fail to successfully oppose the application in that window and the trademark is registered, you have the option of filing a trademark cancellation or sending the infringing party a cease and desist letter. Your next steps will be determined by the kind of response you receive from the letter.
Filing the Notice of Opposition
You are only permitted to oppose a registration during the opposition period. This means that if you notice somebody has filed an application with an infringing trademark, you cannot file an opposition until an examining attorney reviews the application. Until the application publishes, the only options are either a cease and desist letter or a letter of protest to the trademark office. Hopefully, during this period the examining attorney will reject the application on their own.
During the opposition period you can file a Notice of Opposition. The Notice of Opposition will usually cite a prior trademark and outline the reasons the application shouldn’t register. Once the notice is submitted, the applicant will be notified that somebody has opposed the registration of the trademark. The applicant will have 40 days to respond to the opposition.
This matter is then taken up by the Trademark Trial & Appeal Board (TTAB). The TTAB will issue the case schedule including all deadlines. Much of the process of a trademark opposition is similar to that of other infringement lawsuits. There is a discovery phase where each side can gather evidence from the other side to strengthen their case. You can also hunt for helpful information yourself but anything relevant to the case generally must be disclosed by the other side. Both parties are expected to abide by the timeline laid out by the TTAB. At any point in this process, the parties can reach an agreement and end the case.
TTAB cases are streamlined but they can still go on for a year or more before the TTAB issues a decision. If you are unhappy with the decision, you have the option of appealing the ruling to the Federal circuit, or the district court with the jurisdiction over the issue.
Responding to a Notice of Opposition
Receiving a notice of opposition can be jarring. It might be tempting to make a quick and emotional response. But you should be calculated in your response so you don’t inadvertently worsen the situation and admit liability. Apart from hiring a trademark attorney, below are the steps you should take upon receiving the notification of opposition.
- Reevaluate your trademark: You might discover from the notice of opposition that you are indeed infringing upon an existing trademark that is confusingly similar to your own. You lessen your chances of experiencing this unpleasant surprise if you conduct a trademark search before applying. To be certain of your rights in the situation, you can consult the Trademark Board Manual of Procedure. You can also seek legal counsel about your options.
- Identify the issues with your trademarks: The opposition will outline exactly what the problem is with your application. This might be an easy fix you are willing to make. In other cases, you might find the complaint and demands overreaching or unreasonable.
- Respond to the opposition: There is no universal template for a response to an opposition. The best way to respond is to go through the allegations laid out in the opposition point by point, and either deny or admit the accusations. You might find you have insufficient information to answer to the complaint one way or another, which you can state in your response. At this time, you might also outline counterclaims if you believe the other party is the one guilty of infringement.
Our goal when handling a trademark opposition is to resolve the dispute as quickly and efficiently as possible. We also tend to be aggressive in these cases because our experience is that it brings about the best result.