What should you do if you receive a Notice of Opposition from the United States Patent and Trademark Office (USPTO) while you are going through the process of registering your trademark?
First, let us give some background on what is happening.
One of the stages of the USPTO trademark process is called Publication. This stage is a 30-day period when your application is published to give anyone notice that they can oppose the registration of your trademark. If someone wants to oppose, then that person or company will file a Notice of Opposition with the Trademark Trial and Appeal Board (TTAB), which is the administrative board that handles these proceedings. A Notice of Opposition is the filing that formally begins a TTAB Opposition proceeding, and is analogous to a plaintiff filing a complaint in civil court.
This article focuses on Oppositions; however, be aware that the TTAB also handles similar proceedings called Cancellations. In that proceeding, a party will file a Petition for Cancellation to cancel your registered trademark.
Why is someone opposing your trademark application?
There can be several reasons why an opposer files a Notice of Opposition. Some of the more common reasons are:
- The opposer believes that your application is confusing the public into thinking that there is a connection between your mark and the opposer’s goods or services;
- The opposer believes your mark is disparaging or will hurt the opposer’s reputation.
- The opposer believes that your mark’s registration will limit the opposer’s rights in some way.
What should you do if you receive a Notice of Opposition?
The first thing that you want to do is review the Notice of Opposition to understand the alleged claims and arguments. You should consider the following as you read through the notice:
- Is your mark similar to the mark owned by the opposing party?
- Are the goods or services of the two marks similar?
- Was the opposing party’s mark used in commerce before your initial use?
Next, do some research on the opposing party. As with any legal proceeding, you want to know whom you are up against. An opposer may be an individual or it could be a large corporation. It is important to know your opposer, so that you can determine an effective strategy.
Third, you should consult with an experienced attorney to help you further understand your situation, explore your options, and evaluate whether you are going to hire an attorney to represent you in the proceeding. TTAB proceedings require compliance with the Federal Rules of Civil Procedure, Trademark Law, and Trademark Rules and Procedures, so it is difficult to handle without an attorney. The proceeding consists of all of the stages of litigation, including pleadings, disclosure requirements, discovery (depositions, interrogatories, requests for production of documents and things, and requests for admission), motions, briefs, and a trial. The TTAB board highly recommends that both parties have legal representation.
What is an Extension of Time To Oppose?
This is not the same as a Notice of Opposition. If someone is planning to file a Notice of Opposition but needs more time, then the person or corporation will file a request to extend its time to oppose, and you will receive a copy. This puts you on notice that there is an issue. The most important thing to know about TTAB Proceedings is that you do not want to ignore and miss the deadline to file an Answer. If you fail to file a timely Answer, then the opposing party wins by default, and your application will be abandoned.
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