Trademark

USA Trademark Opposition

Opposition of a trademark can occur once your applied for mark has been applied for with the United States Patent Trademark Office and has been published. Opposition of a trademark can result in a proceeding with the Trademark Trial and Appeal Board. However, this is not always the case and can be dealt with amicably.

The USPTO publishes all trademarks in an online publication system called the Trademark Official Gazette for a 30 day period for opposition. All trademarks have to be published before they reach the final stage of the trademark process. This is the approved official certification of the trademark. The trademark is published for opposition which can be made by anyone who believes that their trademark will be damaged by confusion or similarity of the published mark. The online gazette is routinely monitored by trademark owners to watch out for marks which may jeopardize their own trademark.

If opposed a Notice of Opposition has to be filed with the USPTO within the 30 day period from the date the mark was first published. However, if you failed to file within this 30 day period an extension to file an opposition can be filed for with the USPTO.

In the Notice of Opposition you need to explain why the mark should not register, this is called pleading of the grounds and can be filed online with the USPTO. In response to the notice of opposition an Answer is required. The Answer has to be filed 30 days from receiving the notice of opposition.

If need be, the TTAB will set a date for trial. The TTAB are a body within the USPTO who hear and decide adversary proceedings between two parties like for example oppositions of trademarks. However, this may not be necessary if the Opposer of the mark and the applicant agree to consent.

Consent is when both parties agree that dispite the similarities between the marks both marks can co-exist. The parties may draw up a consent agreement for the parties to obide by whilst both marks co-exist. The parties may not feel that the mark is a grave risk if both marks have co-existed for a long period of time and there has not been any cause of confusion among consumers. This is one way to deal with trademark opposition amicably without going to a proceeding before the TTAB board.

Not all trademark applicants or trademark owners will face a trademark opposition claim. Trademark opposition can be avoided by conducting a good trademark search which highlights identical and similar marks which are likely to cause a conflict.

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