Trademark Opposition: What You Need to Know

A trademark opposition is a legal challenge to the right to register a particular trademark, which is instituted by filing a notice of opposition with the Trademark Trial and Appeal Board (Board).

The notice of opposition must be filed within 30 days of the date that the trademark application is published for opposition unless a request for an extension of time to oppose is filed with the Board.

There are thousands of trademark oppositions filed every year, which certainly sounds like a lot but is relatively small when you look at the overall number of trademarks filed.

The Trademark Opposition Process

Commonly, a trademark application is opposed by someone who owns prior rights in a similar or identical trademark. But, trademark applications can also be challenged on other grounds including, the opposer’s belief that the trademark is merely deceptively misdescriptive, generic, functional, or likely to dilute the distinctive quality of the opposer’s famous trademark.

The opposer must also communicate that it has a direct and personal stake in the outcome of the proceeding and that it could be harmed by the registration of the trademark.

Shortly after a notice of opposition is filed, the Board will institute the opposition proceeding and provide a schedule. This schedule keeps the parties abreast of many important dates and deadlines for which certain actions must be taken.

Trademark Opposition Period

Once the opposition schedule is issued, the owner of the application has 40 days in which to properly respond to the notice of opposition. If no response is filed, a default judgment is entered against the owner of the application, the opposition is sustained in favor of the opposer, and the application goes abandoned.

If a response is filed, then the opposition will simply go forward as scheduled. In the event the owner of the application is eventually successful in defending the opposition, the application will be allowed to proceed through the registration process. If the Board rules in favor of the opposer, the worst that can happen is that the application goes abandoned.

Under no circumstances can the Board award any type of monetary damages, attorneys’ fees, or other financial compensation to either party.

How a Trademark Opposition Attorney Can Help

When faced with a notice of trademark opposition, the first thing to do is to seek advice from a trademark opposition attorney. If you have any questions about pursing trademark opposition against someone else’s application, or need some help defending an opposition filed against your trademark application, please contact intellectual property attorney, Steven J. Laureanti, who is well-versed in the complexity and detail of trademark opposition rules of evidence and procedure.

Call us today at (480) 426-8397 to learn more about how we can help you with trademark opposition issues.

 

 

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