TRADEMARK OPPOSITION

One step in the process in registering a trademark on the Principal Trademark register of the USPTO is passing through the phase termed “publication for opposition”. Recall the first step in the registration process is filing of the trademark application. The application is either based upon actual use in commerce, or a good faith “intent to use”. The application is examined by a trademark examiner. The examination steps include searching the data base for similar marks. It also includes examining the proposed description of goods or services associated with the mark.

Assuming the examiner is eventually satisfied with the application, the examiner gives approval for publication of the mark for opposition. The mark is published in the Official Gazette of the Patent and Trademark office. (Most owners of major or valuable trademarks subscribe to the Gazette or have services that monitor the Gazette for publication of potentially conflicting marks.)

The publication of the mark starts a thirty (30) day period during which a third party can file an opposition to registration of the mark. This is the first opportunity for third parties to oppose or object to the prospective mark. Note that pending applications are published or accessible to the public via the USPTO website. Therefore a third party can be aware of the processing of the application and waiting for the start of the opposition period.

The 30 days in which to file an opposition can be extended upon written request filed with the Trademark Trial and Appeals Board (TTAB). At this stage, the examiner is no longer involved with the application.

An opposition is typically a claim filed by the owner of another registered trademark alleging that the issuance of the new mark is likely to cause confusion in the mind of the consuming public.

The owner of the pending application is given a copy of the claim, termed a “notice of opposition”. The applicant is given thirty days to file an answer, If no answer is filed, the application is dismissed. Therefore receipt of an opposition notice must be taken seriously.

The opposition procedure is similar to civil litigation. There is first a discovery period. The time period for discovery is set by the TTAB. The deadlines may be extended on written request. The discovery comprises depositions, interrogatories, production of records, and request for admissions. These are the typical tools used in civil litigation.

The TTAB has specific rules governing the conduct of an opposition, including the discovery phase. Similar to civil litigation, motions can be filed addressing alleged failure of one party or the other to comply with the TTAB rules of procedure.

What is unlike civil litigation, is the use of testimonial depositions, which are separate from discovery depositions. The TTAB does not conduct open or oral hearings. All matters are resolved by written record.

Most often, the parties, i.e., the trademark applicant and the opposer, come to some business agreement regarding use of the trademark. In such event the opposition is resolved by a separate settlement agreement and the opposition is dismissed. Depending upon the terms of the settlement, the trademark application may, or may not, proceed to issuance.

Although the trademark application process can be straight forward and it may be possible for the applicant to register a trademark pro se, it is advisable to obtain professional assistance when faced with a notice of opposition.