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Ahaji Amos 3/5/19 Ahaji Amos 3/5/19

THE TRADEMARK OPPOSITION PROCESS

This article walks a reader through the trademark opposition process, including filing a notice for opposition, defending the opposition, the trademark opposition timeline, the trademark opposition process, what to do when your trademark application is opposed, and the grounds for a trademark application opposition.

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What is a trademark opposition? What to do if your trademark is opposed?

Once the United States Patent and Trademark Office approves a federal trademark application, the trademark is published for opposition. Publication is accomplished by listing the trademark in the Official Gazette, a weekly USPTO publication. The trademark appears in the Official Gazette for 30 days, but this "opposition window" may be extended if a party files a request to extend the time.

Notice of Opposition

If a party, or group of parties, feels that registration of the trademark will be harmful to them, they may file a Notice of Opposition during the opposition window. A Notice of Opposition is nearly identical to a federal court complaint. The filer, or "opposer," must set forth a fact supporting each element of its claims. The opposer must also establish standing, or his right to oppose the registration by demonstrating how the opposer would be damaged.

Grounds for Trademark Opposition

Typical grounds for opposition include the likelihood of confusion, priority (opposer was the first to use the mark), the trademark is descriptive of the goods or services claimed, the mark is not distinctive, or the mark has become a common descriptive name of an article or substance. Other, less asserted grounds for opposition include, abandonment of the trademark through non-use, fraudulent or illegal registration, applicant is precluded from the registration via court order, the trademark includes a government insignia, the trademark contains immoral, deceptive or scandalous matter, and the mark identifies a living individual without that person's consent. Many of the same grounds can also be asserted in a trademark cancelation proceeding.

Answer - Defending A Trademark When Notice of Opposition is Filed

Once the Notice of Opposition is filed, the owner of the trademark being opposed has 40 days to file an Answer. The Answer must either admit or deny every allegation in the Notice of Opposition. The Answer must also include any affirmative defenses or counterclaims the applicant wishes to assert. An affirmative defense acknowledges an apparent right held by opposer but relies on some new matter by which opposer's rights are defeated. As such, an applicant must be careful about asserting such defenses. A counterclaim is a claim that an applicant has against the opposer that arises out of the same occurrence or transaction that is the subject of the opposition. A counterclaim can include a request to cancel or restrict one or more of the registration on which opposer relies. If a counterclaim is asserted, the applicant must remember to pay the fee associated with the request for cancelation.

What's Next

The opposer has the opportunity to reply to the Answer, and the opposition moves on to discovery and a lengthy opposition schedule, which does not typically includes several motions that are filed by both parties.

Here's a sample opposition schedule:

Time to Answer 11/28/2018

Deadline for Discovery Conference 12/27/2018

Discovery Opens 12/27/2018

Initial Disclosures Due 1/27/2019

Expert Disclosures Due 5/26/2020

Discovery Closes 6/26/2020

Plaintiff's Pretrial Disclosures Due 7/10/2020

Plaintiff's 30-day Trial Period Ends 8/24/2020

Defendant's Pretrial Disclosures Due 9/8/2020

Defendant's 30-day Trial Period Ends 10/23/2020

Plaintiff's Rebuttal Disclosures Due 11/7/2020

Plaintiff's 15-day Rebuttal Period Ends 12/7/2020

Plaintiff's Opening Brief Due 2/5/2021

Defendant's Brief Due 3/6/2021

Plaintiff's Reply Brief Due 3/21/2021

Request for Oral Hearing (option) Due 3/31/2021

Oppositions can be complicated, expensive and lengthy.

Call me

Ahaji Amos is patent and trademark attorney with 17 years of experience in intellectual property litigation and prosecution at Ahaji Amos, PLLC, a law firm that represents startup and small businesses in all matters including patent prosecution, trademark prosecution, copyrights, trade secrets, oppositions, cancelations, equity funding and commercial litigation. Ahaji Amos, PLLC is dedicated to representing entrepreneurs, inventors, and innovators.

This article is for information and advertising purposes and does not constitute legal advice. No attorney-client relationship is formed in the absence of a fully written and executed engagement agreement between Ahaji Amos, PLLC and its clients. Ahaji Amos can be reached at ahaji@ahajiamos.com. More information can be found at https://ahajiamos.com.

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Ahaji Amos 2/18/19 Ahaji Amos 2/18/19

TRADEMARK CANCELATION V OPPOSITION

This article explains the differences between TTAB trademark oppositions and cancelations.

Once the United States Patent and Trademark Office (“USPTO”) approves a federal trademark application, the trademark is published for opposition. The trademark appears in the Official Gazette for a 30-day opposition window. If a party, or group of parties, feels that registration of the trademark will be harmful to them, they may file a Notice of Opposition during the opposition window seeking withdrawal of the trademark registration by the USPTO.

Even after the opposition window has closed, a party who believes they may be harmed by a trademark registration may have the trademark registration canceled, either fully or partially. I'm often asked to help determine whether an opposition or cancellation should be initiated. While the proceedings are similar, there are differences between other than the limited opposition window.

Both an opposition and a cancellation proceeding are adversarial proceedings initiated in the United States Patent and Trademark Office's Trademark Trial and Appeal Board ("TTAB") that seek to nullify and trademark registration or application for registration. Both require a Notice of Opposition/Cancelation that is nearly identical to a federal court complaint. The filer must set forth a fact supporting each element of its claims and must also establish standing, or his right to oppose the registration by demonstrating how the opposer would be damaged.

Typical grounds for both a cancellation and an opposition include the likelihood of confusion, priority (opposer was the first to use the mark), the trademark is descriptive of the goods or services claimed, the mark is not distinctive, or the mark has become a common descriptive name of an article or substance. Other, less asserted grounds include, abandonment of the trademark through non-use, fraudulent or illegal registration, the applicant is precluded from the registration via court order, the trademark includes a government insignia, the trademark contains immoral, deceptive or scandalous matter, and the mark identifies a living individual without that person's consent.

If a registration is five or more years old, however, certain grounds for cancellation are not available. See below for grounds for cancellation:

Within 5 Years of Registration

likelihood of confusion;
a merely descriptive, merely geographically descriptive mark, or a mark that is merely a surname;
a mark that falsely identifies the source of goods or services;
non-use or lack of bona fide intent to use for intent to use applications;
abandonment of a mark of at least 3 years;
fraud;
dilution