What is Trademark Opposition?
Trademark opposition is an objection that allows a third party to prevent a trademark application from being registered.
When you submit a trademark registration to the U.S. Patent and Trademark Office (USPTO), there is a 30-day period after its approval in which third parties have a chance to oppose the registration.
This can occur for various reasons, such as if a third party is trying to protect their brand by stopping the registration of a trademark that’s too similar to theirs.
Read the rest of this article to explore trademark opposition in greater detail, such as how the process works, why it’s important, and how a lawyer can help you navigate the process.
Why is Trademark Opposition Important?
Although trademark opposition can be frustrating if you’re the one whose trademark is being opposed, trademark opposition has several protective benefits for companies. It:
- Protects brand identity. It prevents other companies from registering similar trademarks that can create confusion in the market.
- Helps brands remain unique. When similar trademarks are stopped, it maintains the brand’s stake in the market.
- Resolves disputes before they go to litigation. By flagging any trademark disagreements as soon as they arise, a lawyer can help you prevent costly and time-consuming legal woes in future.
How Does the Trademark Registration Process Work?
There are common steps involved in the process of registering a trademark. At its most basic, these include the following:
- When a trademark application has been filed with the USPTO, an examining attorney reviews it.
- When approved, the trademark is published for opposition.
- A 30-day opposition period begins, allowing people to oppose the application.
- If there are no objections after a period of 30 days, a trademark will be issued to the applicant.
- If there are objections, the opposing party needs to provide specific reasons for them.
What are the Steps in the Trademark Opposition Process?
To object to someone's trademark application, there are certain steps to follow.
Step One: File a Notice of Opposition with the Trademark Trial and Appeal Board (TTAB)
This has to clarify legal grounds for the objection. It shouldn’t be vague or generic. Details matter to make a convincing argument. Some of the most common reasons for opposing a trademark application include:
- The trademark being proposed is too similar to an existing trademark. It should be opposed so that it doesn’t cause confusion among consumers.
- The trademark approval could dilute the strength of a well-known trademark.
- The trademark is generic.
- If approved, the trademark could suggest a fake connection or sponsorship.
Step Two: Gathering Evidence
Both parties can request information and documents from each other to gather as much evidence as they can about the opposition validity. This serves to help the opposer to provide evidence that the trademark being proposed is going to cause them harm.
Step Three: Trial Phase
Although the word “trial” makes it sound like you’ll go to court, that’s not the case. This type of trial includes written arguments and evidence from both parties. The TTAB will assess the case and decide if the trademark should be opposed or not.
Can Anyone Oppose a Trademark Application?
You have to meet certain criteria before you’re allowed to oppose a trademark application. You must have a real interest in the consequences of the trademark registration. It’s essential to show that the approval will have an effect on you, such as if the trademark being proposed is too similar to yours and will dilute your brand presence in the market.
What is a Letter of Protest and How Does it Work?
There are ways to protest a trademark application prior to it being published for opposition. A letter of protest can assist you in doing this. You’ll send this letter to the examining attorney who will review the application.
It’s worth noting that you might not receive updates on the process after submitting a letter of protest. The examining attorney won’t follow up with you. Instead, you’ll have to monitor the application to see if it’s approved. If not, and your letter was successful, the trademark application will receive an office action instead of an approval.
How Can a Lawyer Help You with a Trademark Opposition?
You shouldn’t have to go through the process of trademark opposition on your own. Since it can be tricky and require legal steps, a lawyer can help you. Here are some practical ways in which they can assist you:
- They’ll assess the strength and validity of your claim. They’ll ensure you have legal grounds for opposing someone’s trademark application.
- They’ll conduct legal research. This includes reviewing and searching for existing trademarks.
- They’ll help you to file the notice of opposition. You want it to be legal and professionally drafted to increase your chances of success.
- They’ll gather all the important evidence you need during the trademark opposition process.
- They’ll formulate a strategy for how you can negotiate and reach a settlement with the other party.
- They’ll draft arguments that are persuasive and based on evidence to strengthen your position.
- They’ll protect your brand in the long term. This can include guiding you through the process according to your business strategy.
Where to Find a Lawyer to Help You with a Trademark Opposition
If you need to work with a lawyer for help with a trademark opposition, you should consult a lawyer on ContractsCounsel, one of the largest online legal marketplaces where clients can quickly connect with vetted lawyers.
The platform makes it easy to find a lawyer with the relevant experience you need to navigate the trademark opposition process, without having to cold-call traditional law firms.
You can review lawyers based on various research provided by the platform, such as the lawyers’ expertise, years of experience, previous projects they’ve completed, and client ratings. This transparency helps you to connect with a reputable lawyer based on your specific requirements.
