A Trademark Opposition Needs Your Immediate Attention.
A trademark opposition is an objection filed by an aggrieved, concerned party against a pending trademark application. One of the fundamental reasons you have to actively monitor your trademarks is to make sure you are timely addressing any adverse actions that may impact your trademark rights, such as a trademark opposition.
Who Can File a Trademark Opposition?
— Anyone.
Any person or entity that believes they will be harmed by the registration of your trademark may file a trademark opposition.
Where Can an Aggrieved Party File a Trademark Opposition?
— Trademark Trial and Appeal Board (TTAB) in USPTO.
A Notice of Opposition must be filed with the Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office (USPTO).
When Can a Party File a Trademark Opposition?
— Within 30 days after the publication of a trademark application in the Trademark Official Gazette.
The publication of a trademark application in the Trademark Official Gazette allows any third party to file an opposition or an extension of time to file an opposition within 30 days after the publication date. This period recognizes the rights of third parties to oppose your trademark by filing a Notice of Opposition with the TTAB of USPTO. Oppositions or extensions of time will be null and void if filed after these 30 days.
How Do You Respond After Receiving a Trademark opposition?
Be calm and prepared. If an opposition is filed against your mark, you will receive a Notice of Opposition identifying the third party with their grounds for opposition, which will provide additional details, including the reason(s) why the third party has issue with your mark. At this point, you will be able to evaluate and assess your trademark application in preparation for next steps.
Take note of deadlines. Along with the Notice of Opposition, you will also receive a Notice of Institution stating critical deadlines such as the time to file your answer, discovery conference, disclosures, etc. As a general rule, you will have 40 days to file your answer. After your submission, you will undergo a mandatory discovery conference where the parties are required to discuss the matter.
Assess Options. Once you receive a Notice of Opposition, it is important to review and assess your options. This can include vigorously defending against the opposition to discussing potential settlement with the third party. If both parties agree to compromise, this can include, but is not limited to:
- Limiting certain products/services;
- Amending or revising to the identification of goods and services;
- Altering the classification of goods and services;
- Setting boundaries as to the usage of mark geographically; and/or
- Changing your trademark and filing a new application.
Do you need to have an attorney?
Responding to a Notice of Opposition is all or nothing. Bear in mind that failure to answer the notice of opposition constitutes an ultimate abandonment of your trademark application. The TTAB will provide a Notice of Default as your grace period, but you have to show reasonable judgment why your trademark application should not have defaulted.
When in doubt, Miu Epstein Lawis ready to assess and provide advice on your particular situation. So, don’t wait as oppositions are time sensitive. Reach out to us for a free initial consultation today!