US Trademark Opposition

As part of the US trademark registration process, your trademark is published in the Official Gazette. This is when you may experience a trademark opposition. Trademark opposition means that another party is challenging your trademark as to whether it should be registered.

Let us take a step back to understand the trademark filing process with the United States Patent Trademark Office. Once we as trademark agents file your application with the USPTO it will go to the examining attorney. They will see whether the trademark is actually registrable. In doing this they will do a number of things for example they try to ensure that your trademark is not descriptive, similar, scandalous, misleading, generic or causing conflict with anyone elses trademark. If after the examination none no problems are forseen it is published in the Official Gazette. The Official Gazette makes your trademark available to the public to object to your trademark and to challenge the registrability of the trademark to be registered. A valid reason must be established to challenge the objection. For example, one may contest that the mark to be registered will damage their business therefore cause loss of profits due to confusion of a similar mark.

The USPTO will make you aware of a notice of opposition. Following the timeframe and making a timely response is paramount. Failing to so will not be in your favor to get your trademark registered in that it can give the other party the chance to dismiss your application.  The opposition period is 30 days from when your trademark has been published in the Official Gazette. An objection can only be made during this time. If during this period the USPTO sends you a notice of opposition you have 40 days from the issue of the notice of opposition to file a response. Filing a response will require you to produce the best evidence that will support your case as to why your trademark should be registered. In the fortunate event that no one objects to your trademark it will be registered.

If you experience a trademark opposition, you will come across the Trademark Trial Appeal Board (TTAB). The TTAB opens a small trial in the setting of a hearing. This will allow both parties to put forward their arguments as to why the trademark should or should not be registered. Being well prepared with evidence can be crucial to your case. After the hearing the TTAB take several months to come up with a decision. If the decision is not in your favor and you disagree you have the right to appeal. The appeal of your case would be heard in the Federal circuit or a district court which has jurisdiction to hear the case.

In summary, being issued a notice of opposition for your trademark may come as a surprise. However, it does not mean that you cannot register your trademark. You may still be able to register your trademark by taking the above steps. It is also important to remember that trademark opposition is not a lawsuit for trademark infringement but a challenge as to whether your current trademark should be registered.

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