Notice of Opposition
If you are involved with a trademark opposition, we can assist.
There are many steps to obtaining a trademark, and sometimes, even if a trademark application is approved by the U.S. Patent and Trademark Office (USPTO), it still may not register. One potential complication can arise if another party files a Notice of Opposition against a trademark with the Trademark Trial and Appeal Board (TTAB), claiming that the trademark should not be granted.
What is a Notice of Opposition?
Every two weeks, the USPTO publishes approved trademarks for possible opposition. If you have reason to believe that a new trademark should not be granted, you have the opportunity to file a Notice of Opposition. On the other hand, if your trademark application has been published, another party may file a notice to oppose your trademark, and you will be forced to defend against it.
There are different reasons why a trademark may be opposed, including:
- The proposed trademark is so similar to an existing trademark that it may be confusing to the public.
- The trademark may dilute the value of an existing well-known trademark.
- The trademark is a last name.
- The trademark is generic or merely descriptive.
- The trademark suggests a false connection or origin, or sponsorship.
How to File an Opposition to a Trademark Application
To file a valid Notice of Opposition, a party must have a legitimate interest or stake in stopping the trademark from registering. Generally, owning a confusingly similar trademark that may suffer damage will qualify as a real interest and thus standing to file.
In addition, a Notice of Opposition must detail the specific grounds on which a trademark is opposed with a clear explanation supporting those grounds. While you are not required to have a TTAB attorney to represent you in regard to a Notice of Opposition, an experienced trademark lawyer will know the best strategy and most persuasive arguments to use to support your claims.
What Happens after a Notice of Opposition?
After a Notice of Opposition is filed, the trademark applicant has 40 days to defend the application by filing an answer to the opposition. If no answer is filed, the plaintiff will automatically win and the trademark will not register.
If an answer is filed, the matter will proceed. The proceeding is similar to a lawsuit in federal or state court, with negotiations between the parties, a discovery phase, briefs, motions, possible oral arguments, and finally trial. If the parties cannot settle the matter, the TTAB will review the record and issue a decision usually in about 6 months. The losing party will have the opportunity to appeal an unfavorable decision, if necessary.
Consult with a Trademark Opposition Attorney Today
We are a very experienced law firm in handling trademark oppositions. Our years of experience with TTAB cases has allowed us to sharpen strategies that win notice of opposition cases quickly. As a result, we have a very high win percentage in trademark opposition cases. To review some the over 250 TTAB cases that we have handled, you may click here.
If you are involved a Notice of Opposition, please contact contact us today.
The results mentioned above were dependent on the facts of the case, and results of such cases differ if based on different facts, thus the above statements do not constitute guarantees‚ warranties‚ or predictions regarding the outcome of your legal matter.