A trademark dispute arises when a senior user takes issue with a junior user’s use of a similar trademark. Frequently these disputes are settled quickly and without significant expense. If the junior use has existed for a long period of time, or if there is a significant amount of money at issue, the dispute may take longer to resolve.
How to Dispute a Trademark
Trademark disputes typically start with a trademark cease and desist letter. If the issues cannot be resolved with a letter, the two most common forums for trademark disputes are the Trademark Trial and Appeal Board (the TTAB) and trademark litigation in federal courts.
In the TTAB, the options are a trademark opposition if a trademark application is pending or a trademark cancellation if the disputed trademark has already registered. Other from of trademark disputes include a letter of protest to the USPTO and domain name dispute filed with ICANN.
While each of these options have different requirements to initiate, which forum is appropriate typically comes down to how long the infringing use has taken place.
Cease and Desist Letter
A trademark cease and desist letter is the most common tool in a trademark dispute. In fact, this type of notice plays a large role in keeping over 97 percent of legal disputes from ever making it to the courtroom. Sending a cease and desist letter lets infringers know that the trademark owner is ready to protect their property, and this is typically enough to end the infringement.
Many trademark disputes begin with the owner sending a non-aggressive message to an infringer regarding the trademark. For minor infringements this may resolve the issue, but it is generally not recommended. Instead it is advisable to have a trademark lawyer review the entire situation and then if appropriate send the letter.
The following elements are included in a cease and desist letter:
- Information regarding the trademark (e.g. registration number, date of first use, geographic area).
- Circumstances, dates and examples of alleged violations.
- Stating the infringing actions that you’re demanding to be ceased.
- Stating that further legal action that will be taken if the infringement continues.
- A deadline for a response (typically 10 days).
Although cease and desist letters often end trademark disputes, they don’t carry the same legal force of a court order. They can be used as evidence of willful trademark infringement, though, if violations continue after the fact. They can also serve as evidence that active measures were taken to defend the trademark.
Letter of Protest
When a trademark application has been filed, a letter of protest is the earliest available mechanism to dispute a trademark since a notice of opposition cannot yet be filed. These letters are filed with the USPTO to be considered when the application is examined. Letters received after the trademark has been published in the Official Gazette are usually considered untimely.
A letter of protest cannot be used to circumvent opposition proceedings. If evidence from outside parties would be required to prove that a registration shouldn’t be granted, then a Notice of Opposition must be filed.
Notice of Opposition
A Notice of Opposition can be filed during the 30-day period after a trademark is published in the Official Gazette. An opposition can only be filed by those with legal standing to do so. This means you must be able to prove that you would be negatively affected by registration of the trademark in question.
When filing an opposition, you’ll need to explain why you have standing to oppose – along with the grounds you’re claiming on why the trademark should not register. The most common ground for filing is that the trademark is likely to cause confusion with a pre-existing trademark. Another common ground is a claim that the trademark is descriptive of the goods or services. Once filed, the applicant has 40 days to respond. If an answer is not filed, the opposer will automatically win and the trademark application will be refused. If an answer is filed, the matter will proceed like traditional court proceedings.
This means there will be discovery, motions, and trial briefs if the matter cannot otherwise be settled. TTAB cases are usually resolved quickly with one party or the other giving up.
Petition to Cancel
Once a trademark has registered, a Petition to Cancel is the appropriate trademark dispute process. This course of action is nearly identical to opposition proceedings.
If you’re able to file for a cancellation within five years of registration, you can do so under the same grounds that an opposition would have been accepted. Once this time period has passed, trademark disputes involving a likelihood of confusion become more difficult. The following are the most common grounds for cancellation after five years:
- Trademark abandonment has occurred.
- Fraud was committed during the application process.
- The trademark is merely descriptive or has become genericized.
- The owner has no control over use of trademark.
Generally oppositions and cancellations are on the rise. Over 2000 petitions to cancel are filed each year.
Domain Name Dispute
Wide use of the internet has taken trademark disputes into the digital world. Cybersquatting is the most common form of infringement that takes place among domain names. This occurs when someone registers an domain name that is similar to a trademark owned by another company.
These disputes are sometimes handled through the Uniform Domain Name Dispute Resolution Policy (UDRP). The World Intellectual Property Organization (WIPO) handles over 3000 of these cases each year. Going through this process can help you gain rights over a domain name, but it’s important to remember that WIPO isn’t an American organization. If someone is infringing your trademark via deceptive digital means, you may be better served by filing a lawsuit in federal courts in the United States.
Court decisions are fairly established in cybersquatting cases, but this isn’t true for legitimate claims involving non-competing use. United Airlines®, United Van Lines® and the United Way®, for instance, could all legitimately purchase united.com. These cases can be far more complex. If a brand purchases a domain in an attempt to hinder a competitor, however, the courts will typically rule against them.
Trademark Disputes in Court
While filing a trademark dispute through the TTAB can be appealing, doing so will not allow you to receive monetary damages. If you’re seeking compensation for infringement, you’ll need to file a lawsuit in federal court. A judge may grant an immediate injunction to prevent further misuse of the trademark in these cases.
Like TTAB proceedings, the responding party must file an answer with the court. If they fail to do so within 21 days, the plaintiff may seek a judgment by default. Of the trademark cases filed in federal courts each year, over 80 percent of damages (i.e. $4.6 billion) were issued via default judgments. Courts also have the power to cancel trademarks registrations when appropriate.
If you need assistance with a trademark dispute, please contact us for a free consultation.