The first thing you have to ask yourself is what is a trademark opposition? When you are going through the trademark registration process and you file your application for registration of your name or your brand as a trademark, you will wind your way through that long process, you may get an office action from the examining attorney telling you that there are various problems with your trademark registration. With a competent trademark registration attorney, you can typically overcome those challenges by the examining attorney.
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Welcome to the Trademark Law Radio. My name is trademark opposition attorney, Enrico Schaefer. We do a lot of different work in the trademark area at our law firm. We specialize in trademark law, but one of the things that we do is we work before the trademark trial and appeal board, the TTAB, on trademark opposition matters.
So, first thing you have to ask yourself is what is a trademark opposition? When you are going through the trademark registration process and you file your application for registration of your name or your brand as a trademark, you will wind your way through that long process, you may get an office action from the examining attorney telling you that there are various problems with your trademark registration. With a competent trademark registration attorney, you can typically overcome those challenges by the examining attorney.
Once your trademark is accepted for registration, it will be published in the official register, and then there will be what is called an opposition period. And this is a 30 day window when any third party can file a notice of opposition against your trademark. When someone doesn’t want to see you achieve trademark registration, they will file a notice of opposition. You can file a notice of opposition with the USPTO over a specific trademark for a variety of reasons.
Typically, it’s because someone else has a similar trademark, and they don’t want to see your trademark registration go through successfully, because they think it’s going to diminish or infringe on their pre-existing mark. Now, the pre-existing mark could be a registered mark, or it could be a common law mark that predates your first use in commerce. So, what you need to do is you need to work with your trademark opposition attorney to develop strategy around the opposition process. Typically you want to make sure, and your attorney will help you make sure that you are, in fact, correct that you’ve got superior rights.
That’s the whole point of a trademark opposition is that you believe or your trademark attorney believes on your behalf that you have superior rights to the person who’s trying to get through the registration process. If you are the one who’s going through trademark registration in order to secure your name or brand as a mark and someone files an opposition against you, then you have to respond to that trademark opposition by establishing that you have superior trademark rights in the name or brand that you are trying to get registered.
Now, one thing that you need to understand is there’s typically a 30 day window here in which all of this is going to operate, meaning that when your trademark gets published for opposition, the world has literally just 30 days to file paperwork, to file a notice of opposition in order to stop it. Now, this would never occur unless someone is monitoring the trademark database, and they are looking for the trademarks that are similar to theirs within similar categorizations of goods and services or within similar descriptions of goods and services.
And so, there are a lot of companies out there who do, in fact, monitor and receive reports on the trademarks that are looking their way through the registration system. And if you do ever have a trademark, you should be hiring your trademark attorney to, in fact, monitor on your behalf because the bar is fairly low, so examining attorney may let a trademark through the process to get to publication and to get to the opposition period, and you may have very valid claims against opposing that mark, so it doesn’t get registered.
Just because the examining attorney lets it through doesn’t mean that it’s a valid trademark and doesn’t mean that trademark might not infringe your pre-existing mark. If you, in fact, don’t exist in the trademark database because your name or brand or slogan hasn’t been filed for trademark registration, then you can still rely on your common law rights, because keep in mind in the United States the first to use a name or brand or slogan or word in commerce to identify their rights in services that, in fact, wins. You don’t have to register in order to win.
So, if you are going through a registration trademark process and you receive a notice of opposition during the registration process, work with your trademark registration attorney to develop a strategy around either a contesting the notice of opposition and fighting that proceeding, or perhaps, even negotiating with the party that has filed the notice of opposition to see if you can reach the accommodation.
If on the other hand, you are monitoring the trademark registrations going through the system at the USPTO and you see a trademark that you think is likely going to cause confusion with consumers about source and origin, that someone is trying to register a trademark that so similar to yours that you believe it violates your superior trademark rights, then you need to hire a trademark opposition attorney with experience before the TTAB, trademark trial and appeal board, to file your trademark opposition paperwork within that 30 day window so that you have a say and you can negotiate and potentially successfully oppose the trademark registration.
My name is trademark attorney, Enrico Shafer and we will see you next time.
You have been listening to Trademark Law Radio. Whether you are facing a trademark infringement, licensing, monitoring or trademark registration issue, we have a trademark attorney ready to answer your questions.