Responding to Trademark Opposition

One of the most important assets for any business owner is a trademark. This form of intellectual property allows an individual or company to hold ownership of a logo, design, or other distinctive identifier that designates its products or services as being from a particular source. Owning a trademark protects your intellectual property and prevents other people from using it without your permission.

Sometimes, however, businesses come into conflict over who can own a particular trademark.

If you have applied for a trademark and someone else is opposed to your receiving this protection for your intellectual property, that person might choose to file an opposition. 

What Are Grounds for an Opposition Proceeding?

There are several grounds that your opposer may use to claim that your proposed mark is not fit for protection from the United States Patent and Trademark Office (USPTO). These include:

  • There is already a similar mark in use.
  • The mark applied for is likely to create confusion in the market (making false claims).
  • Your proposed mark is too vague or generic.
  • You do not actually intend on using the trademark in commerce.

After You Have Received a Notice of Opposition

Although your application is filed with the USPTO, opposition proceedings are handled by the Trademark Trial and Appeal Board (TTAB), which will notify you when an opposition has been filed. Once this information has been relayed to you, you have 30 days to answer the petition. Should you find yourself in this situation, you strongly should consider hiring an attorney to help you navigate this process. 

As soon as possible, you and your legal advisor should sit down and analyze the contents of the opposition. Understand where the opposer is coming from and take the time to prepare an answer. Alternatively, you might engage the opposer to see if a settlement can be reached. In fact, many opposition cases are settled through negotiation. Be aware, however, that you probably will not be able to take back an answer once you have sent it, so negotiation may not be possible at that point. Your attorney can advise you on the best course of action to take.

If you choose to send an answer, there are specific requirements and formats that must be followed. Once the TTAB receives your answer, there will be a discovery phase for your case similar to that of other civil matters. Eventually, you will send back a written brief and attend a final hearing to plead your case. 

Conclusion

After pouring so much time and energy into your trademark application, it can be very frustrating to have to respond to an opposition as well. It is important, though, to keep a level head and concentrate on the path forward. This is best done with a competent attorney; for knowledgeable legal counsel, get in touch with IGC at 925-399-1529 to discuss your options today.

Written by Integrated General Counsel

Our focus includes handling a variety of corporate matters and also includes litigation in state and federal courts. Our current practice includes providing transactional services and representing a variety of small and medium-sized companies as their outsourced general counsel.