It is possible to oppose the approval of trademark registration application filed with the US Patent and Trademark Office (USPTO). It may be, in fact, your obligation to enforce your mark against infringement.
The USPTO Examiner approves new trademark registration applications based upon its estimate of conflicts only. You may harbor your own opinion as to whether a an application infringes upon your registered trademark. If so, you can oppose the final registration of the mark even when a USPTO Examiner allows it through.
An Opposition proceeding is third-party adversary litigation before the Trademark Trial and Appeals Board (TTAB) of the USPTO. It is a form of Federal litigation. However, don’t let that scare you.
Well, maybe it let it scare you just a little.
We will explain that, but, first, a quick refresher on the US trademark registration application process.
The US Trademark Registration Process Timeline
The trademark registration process in the US currently takes about a year. This does not include the time spent between an applicant and its trademark attorney clearing the business name, product name, slogan, or logo prior to drafting and filing the application.
Drafting and filing a trademark registration application is a relatively quick process when you have retained a trademark attorney. An attorney files the application electronically through the USPTO website.
Upon filing, nothing happens for a while. The USPTO currently takes more than 9 months to Examine new applications.
During Initial Examination, the USPTO Examiner will review the application to determine whether there is any likelihood of confusion with any prior registered trademark (among other possible issues).
If the Examiner believes that there is a conflict, the application will be refused with the issuance of an Office Action.
The applicant then has 3 months to respond to the Office Action.
If the applicant successfully overcomes the Office Action, the application will then move onward. The next stop for an application is the Publication phase of the trademark registration process. This is where third parties have the opportunity to oppose approval of the trademark registration application.
If no one Opposes, it is Approved for Registration:
- If the application is an “in-use” application, the certificate of registration will issue about 11 weeks later, give or take.
- If the application is an “intent-to-use” application, the applicant will have 6 months to file a Statement of Use before the application is Abandoned.
Grounds Needed to Oppose a Trademark Application
You can’t just oppose approval of a trademark registration application because it rubs you the wrong way. As with any US legal action, you must have the proper legal grounds to oppose. That is, there must be some negative impact on your trademark registration.
This is “standing.” To file suit of any sort, you must have the proper “standing.”
Trademark registration opposition proceedings are no different.
The most common grounds needed to oppose a trademark application’s approval are as follows:
Likelihood of Confusion
Likelihood of confusion is the argument that US consumers will be confused as to who is selling what. In other words, this basis alleges that the new trademark is too similar to yours. US trademark law exists to protect consumers right to know what they are buying. And from whom.
A trademark registration can be opposed on the grounds that the applied-for mark is generic and therefore not registrable. A generic mark is a term that is commonly used to describe a particular class of goods or services and cannot be exclusively identified with a particular source.
A trade mark is deceptive if it misleads consumers about the nature, quality, or characteristics of the goods or services it represents.
If the trademark application is too descriptive of the goods or services offered, it can be opposed on the grounds that it is not distinctive enough to function as a trademark.
If the mark has been abandoned, it can be opposed for registration. A mark is considered abandoned if it has been discontinued for an extended period of time without any intent to resume use.
This basis is the allegation that the new trademark erodes the distinctiveness of a famous mark. Dilution diminishes the uniqueness of an established mark, regardless of whether or not confusion is likely. Your mark must, as noted, be “famous” to support this basis.
Likelihood of Dilution by Tarnishment
This ground to oppose approval of a trademark registration applies when the use of a mark may negatively create a negative association. That is, it applies if approving the registration will associate a prior registered mark with unsavory or unwholesome topics, products or services, causing harm to that trademark’s reputation.
False suggestion of a Connection
It’s when a mark may falsely suggests a connection with person, institution, or belief, and this can be a ground of opposition.
It’s important to keep in mind that these are just some examples of grounds for opposition, and not an exhaustive list. Also, while these grounds apply to the US, it’s important to check the specific laws of your country if you’re operating outside of the US.
The Trademark Registration Opposition Process
When the USPTO Examiner allows an infringing trademark application to slide through, it is your job to oppose approval of that application. You have 30 days only to file a Notice of Opposition once the application enters the Publication period.
If you need more time to consider the option, your trademark attorney can also file, within that 30-day stretch of time, a Request for Extension of that deadline. This is routinely granted and will establish a new deadline to file your Notice of Opposition.
However, it is simple to initiate an Opposition. First, you retain an experienced Michigan trademark attorney to draft and file a Notice of Opposition.
Notice of Opposition is filed with the USPTO’s Trademark Trial and Appeals Board (“TTAB”). The filing of a Notice of Opposition will suspend the applicant’s registration process until the disagreement is resolved. The Notice of Opposition will require that you establish your standing to Oppose and submit sufficient evidence supporting your claim for the basis of the Opposition.
One you file the Notice, the applicant will have 30 days to respond (or file some other request or motion for extension of that deadline). If the applicant does not do so, the TTAB may award you a default judgment, canceling the application.
If the applicant does respond, congratulations! You’re now in litigation.
After Opposition Response
When you Oppose approval of a trademark registration application before the USPTO TTAB, the course of events at this point resembles most other Federal litigation. That is, the same procedural rules roughly apply in this forum that apply in other Federal courts: the Federal Rules of Civil Procedure.
Trademark litigation roughly follows these steps once the applicant files a Response:
- Status Conference
- Motion Drafting and Filing
- Evidentiary Hearings if Requested (often not)
The TTAB issues a decision in the matter that may or may not be “precedential” (binding on later decisions). The decision can be appealed to Federal Court.
The ultimate timeframe that such litigation encompasses may be—years. It is an expensive process. Very expensive. Parties often negotiate co-existence agreements and other settlements rather than going the full distance.
Thus, before you Oppose approval of a trademark registration application, it is vital that you consult an experienced trademark attorney to discuss the costs and benefits of taking such action.
Consult a Metro Detroit, Michigan Trademark Attorney
The bottom line is that the decision to oppose approval of trademark registration application is not one to be taken lightly. However, it is an option that any trademark owner must keep in mind to retain the legal right to enforce the trademark against later infringement.
If you don’t enforce your trademark rights, you will, by law, lose them.
Noble Path Trademark Law is a boutique US law practice located in Metro Detroit and assisting entrepreneurs, solopreneurs, artists, musicians, start-ups, and larger enterprises with robust intellectual property portfolios in all industries and in all states with trademark registration, trademark renewal, trademark monitoring, and Office Action refusal response matters.
We offer virtual consultations, premium customer service, and the expertise you need to maximize your odds of trademark registration, Letter of Protest, or Opposition success.