Let’s say that your company has made it through the trademark application process and that your trademark has been approved for registration, but you receive a notice from the United States Patent and Trademark Office (USPTO) that your application is now being published for “opposition.” Even worse, your attorney informs you that another business is opposing the registration of your trademark. Or consider the opposite: You have a registered trademark, but the attorney handling your trademark maintenance informs you that another company is attempting to register a trademark that is strikingly similar to yours. What do you do? Ideally, you would turn to an Alabama trademark lawyer who could help you handle a trademark opposition.
What Are Trademark Oppositions?
Trademark oppositions are what they sound like — they are procedures through which a party may oppose the registration of a particular mark by the USPTO. Once the USPTO approves a trademark for registration, it publishes the mark in the “Official Gazette.” At that point, any party who believes it may be damaged by the registration has 30 days to file an opposition to the registration. The proceedings are handled by the Trademark Trial and Appeal Board (TTAB), a quasi-judicial body within the USPTO that handles trademark litigation-like matters.
Grounds for Trademark Oppositions
A party who wishes to oppose a registration (known as the “opposer”) must have a real interest in the mark, which generally is defined as having a direct and personal stake in the outcome of the proceedings. In many cases, owning a registered trademark in the same industry is sufficient to establish interest. No one may oppose a registration merely because they do not like the mark or the company attempting to register it.
Many of the grounds for trademark oppositions are the same as the grounds for refusal of trademark registration. Some of the most common are:
- The mark is confusingly similar to another registered mark
- The mark is not distinctive
- The mark is not being used in commerce
- The applicant does not have a bona fide intent to use the mark in commerce
- The applicant is not the rightful owner of the mark
Responding to Trademark Oppositions
When served with a notice of opposition, the applicant may file an answer within 40 days. The applicant must admit or deny each allegation contained in the notice of opposition in its answer, but need not argue the merits of the allegations. The applicant may also present affirmative defenses to the allegations (e.g., unclean hands, fraud, mistake, etc.) and, if the opposition is based on an existing trademark registration, may attack the validity of that trademark.
Get Help with a Trademark Opposition from an Alabama Trademark Lawyer
Trademark applicants and trademark owners can both be affected by trademark oppositions, so it is advantageous to incorporate a trademark opposition plan into your larger intellectual property strategy. To get started, please contact an Alabama trademark lawyer at AdamsIP in either our Birmingham or Huntsville office by calling 251-289-9787 or by using our online contact form.