More: Reply to Trademark Objection. The Applicant, contrary to the required trademark registration provisions, never had a bona fide intention to actually use the mark in commerce when the trademark application was submitted. Below is a list of the most commonly cited grounds for filing a trademark opposition: Critically, it is incumbent on the trademark Opposer to prove any of the above-mentioned claims by a preponderance of the evidence, which reinforces the idea that it is ultimately incumbent on the Opposer, rather than the USPTO, to stop trademark infringement. Mere descriptiveness. The applicant is required to file his reply in 30 days from the examination report. Trademark Objection - An Overview. Here's What you Need to Know, Copyright law covers “original works of authorship” - If someone has stolen or reproduced your work without your permission, sending a cease and desist letter is the first step. Once the Notice of Opposition has been served upon the Defendant, the TTAB will issue an Order setting forth the relevant dates for each successive phase of the proceeding. Of course, none but the most prophetic among us can guarantee an outcome but there are at least enough markers and guideposts to look to in order to evaluate one’s chances of success or failure. First, cost awards won’t cover all your proceeding costs. The legal costs of opposition. Reasons for responding to a Trademark objection The current trademark will be rescued from being abandoned or denied and will be regarded for any further processing. Read the Complaint very carefully and make an honest assessment, with the help of a trademark litigation attorney, of the strength of the complaint and the plaintiff’s likelihood of prevailing. Therefore, the TTAB requires the Opposer to provide both procedural and indeed substantive arguments, which support the proposition that the trademark should not register. An experienced professional can significantly improve chances of successful trademark registration by filing a professional response, addressing all the concers cited in the Trademark Examination report. Clearly, “Damaged” is a word that is vague and subject to interpretation – this should not be a difficult threshold to cross. 15 U.S.C. £200: Opposition based on, or including, any other grounds. A counterclaim is where the Defendant/Applicant seeks to attack the pleaded registrations of the Opposer. Failure to do so will move the mark to abandoned state and anyone will be free to apply for its registration. Oral Arguments: Oral arguments are not necessarily part of every Trademark Opposition proceeding however both sides reserve the right to request oral arguments, which can provide a more compelling medium to support the arguments made in trial briefs. Read More, How to Oppose a U.S. If you cannot do so, then state that you have insufficient facts to either admit or deny the claims. It takes about three (3) months from the close of the opposition period (including extensions) until a registration issues if the case is not an Intent to Use case. does your trademark contain a logo design or other words that are not descriptive of your goods or services? Trademark Opposition is a step-by-step procedure which can be filed by anyone including companies, partnership firms or individuals. Do Nothing.Let your trademark protection lapse and likely lose any legal protection for your brand. The Trademark Act provides a series of Causes of Action, or reasons, for which an individual/company may bring a trademark opposition case. Time limits for filing Notices of Opposition or Requests for Extensions of Time to Oppose are strictly enforced. Contact Ebizfiling for Trademark Objection and Trademark Objection Reply. Standing generally requires that the Opposer have a real interest in the outcome of the proceeding and that the allegations of damages have a reasonable basis in fact. Trademark Search Trademark Order TM Office Action. (This article has been updated for 2021). ii) The opposition must indicate the grounds on which it is based. Remember, one of the most common grounds for a Trademark Opposition is the claim that the newly published trademark would create a likelihood of consumer confusion with the Opposer’s existing trademark (under Section 2(d) of the Trademark Act). The response can also be made by an agent authorized by the trademark applicant. Trademark Trial and Appeal Board Practice Group of Collen, where he is Of Counsel. Remember, this is litigation so there are formal and meaningful rules which must be followed. Is the substantive argument weak (Likelihood of confusion would be a preposterous outcome of the mark’s registration)? you have evidence of business plans going back to your time of filing related to efforts to develop or market goods to be offered for sale under the mark; if you did not have a written business plan, that you have other evidence that demonstrated your objective intent to use your trademark in commerce as of the filing date (for example, emails to third-party website developers, manufacturers, or marketing agencies). Trademark Opposition Lawyer is a publication of the TTAB Practice Group of Collen, a leading U.S. brand protection law firm. The Opposition Division of the EUIPO uses the five languages of the Office (English, French, German, Italian and Spanish). 9 November … Fight Back On Your Own.To do this effectively, you will need to learn how to navigate the Federal Rules of Civil Procedure properly. Very often, trademark holders will hire a trademark monitoring service to periodically check the Official Gazette and flag any pending trademarks that might infringe on the senior holder’s mark so that the senior has the chance to oppose the mark. So, now that we know who may file the opposition, on what grounds can the trademark opposition be filed? Within one month of receiving the Affidavit and evidence under Rule 46 or of the letter intimating the waiver of right to file such Affidavit and evidence from the applicant, the opponent again has the option to adduce further evidence in support of the opposition in the form of an affidavit in reply, including exhibits, if any. Fundamentally, the objective of the conference is to facilitate an open discussion about the “nature and basis of the involved claims and defenses, the possibility of settlement of the case or modification of the pleadings, and plans for disclosures and discovery…” TTAB 408.01(a). Depending on the facts of the case and relative strengths of the parties’ positions, doing so could provide needed leverage at the discovery conference and later settlement discussions. You basically have three options: 1. By continuing to use this website, you agree to the use of cookies. Pleadings are fairly straightforward with the Opposer making an initial claim as to why the mark should be denied followed by the applicant’s response to the motion. Can you find any holes in the complaint (the registration of the trademark wouldn’t affect him one way or another)? If the Opposer cannot establish standing, the action will be dismissed before any of the substantive arguments can be raised. The Notice of Opposition must state and articulate both the Opposer’s standing to file the opposition and the substantive grounds for the opposition. 37 C.F.R. If an opposing party has legal representation from a trademark attorney and an invested interest in the outcome of the opposition, there is little chance that an applicant will be able to fight the opposition on anything but the merits: the owner of the pending mark must defend his or her mark based on the grounds for the opposition and come up with a response … Such a registration is raised by the trademarks examiner. Stage 1 – Filing a Notice of Opposition/Filing a Counter-Statement: Any person wanting to oppose a mark can do so by filing a Notice of Opposition on the prescribed form along with the prescribed fee within four (4) months of advertisement of the mark. If the Opposer is claiming that you did not have a bona fide intent to use your mark in commerce at the time of filing, verify that: Step #3.  Review the U.S. The plaintiff than has a final 15 days to provide a rebuttal to the evidence supplied by the Respondent. The requirements for a properly drafted Answer may be found in TBMP Section 311. Trademark Opposition Process: A Complete Procedural Guide to the Trademark Trial and Appeal Board (TTAB Oppositions) written by trademark attorneys. TTAB Issues a Decision: Typically, within six months of the evidence being submitted and the trial’s completion, the TTAB will issue a decision and rule in favor of one of the parties. Consider affirmative defenses. As the applicant of Trademark, one is expected to respond to these objections in the prescribed format. on failure of filing the counter-statement the application for registration deemed to … Step #4. The most common grounds are a petition to cancel one or more of the Opposer’s pleaded registrations based on abandonment. Trademark opposition guidelines may be found in the Trademark Board Manual of Procedure. You may file a petition to cancel, after the trademark registers. The complex and nuanced rules of the Federal Rules of Civil Procedure along with the idiosyncrasies of trademark law, as governed by the Lanham Aact (15 U.S.C. can your trademark be considered to have more than one meaning such that it is not merely descriptive of your applied for goods and services? We use cookies to improve your experience on our website. The Answer is not the place to respond to the merits of the Notice of Opposition. Such defenses include that the Applicant should be entitled to registration subject to certain restrictions to its identification of goods or services. Conclusion:  As a defendant in a trademark opposition proceeding, it is important to have a well-crafted answer, affirmative defenses, and counterclaims, where appropriate. Updates on developments related to IPR (Intellectual property). Apart from a Trademark Registration, EbizFiling.com also helps you with Trademark Objection filing, draft Trademark objection reply letter, Trademark Renewals, Trademark Assignment, Trademark withdrawal, Trademark opposition and Trademark rectification services. It is first sent to the Registry for review and if all the formalities are met, the Registry will then serve the notice on the other party.A … Critically, the facts and arguments contained within the brief must have already been presented (in some form) at the trial and may not involve new information. Trademark examination report shall contain the reason for objection. This can include abandonment of use of some of the goods contained in the Opposer’s registration, or all of the goods. The party that files a notice of opposition is called the Opposer. The briefs contain a discussion of the facts of the case, the relevant statutory and case law, affirmative arguments and a rebuttal of the party’s adversary’s arguments. does your trademark describe an ingredient, function, or feature of your goods? It needs to be submitted to the same registration office where the applicant has applied for the trademark. Step #2:  Analyze the Opposer’s claims. Trial Briefs: Trial briefs allow for each respective side to present a coherent argument and summation of their positions in alternating fashion. Trademark opposition proceedings are contested matters before the U.S. While a Trademark Opposition Proceeding does not occur in Federal Court, it has many of the same procedural aspects of a lawsuit including pleadings, discovery, and trial. The complaint, known as a Notice of Opposition, is filed by the Opposer, who may allege several grounds for refusal of a trademark application. What is interesting about the format of the Answer is that while there are no strict structural guidelines to a proper response, there are certainly best practices. Trademark Application, Trademark Opposition of ICAR Mark Dismissed, Recent TTAB Cases - No Likelihood of Confusion, Follow the Rules in Trademark Opposition Proceedings, The impact of COVID-19 on TTAB activities, U.S. trademark opposition statistics during COVID-19, COVID-19 impact on TTAB filing statistics. Substantive Arguments: Making the Trademark Opposition Case. In case if the examination report contains any observations, the same will be communicated to the applicant/trademark agent for submitting a reply to the examination report. An answer to a trademark opposition may include affirmative defenses.Examples of affirmative defenses are Opposer’s unclean hands or fraud in bringing the opposition. First, the Opposer files its brief, then the trademark Applicant files its brief, and then the Opposer is presented with the opportunity to file a rebuttal brief. If you want to oppose the registration of a trade mark then you must file a TM7 ‘Notice of opposition and statement of ground’. There are motions, discovery, and trial and as such, a trademark opposition proceeding should be taken very seriously and with the understanding that they can be time-consuming and costly indeed. This includes the time to file an Answer, the initial conference, initial disclosures, discovery, and trial dates. If your opposition is only based on … Possible grounds for oppositi… Thus, the TTAB does not have jurisdiction to consider any associated damages that may arise from trademark infringement but rather only establishes the merits and legitimacy of granting or denying a federal trademark registration. This situation is known as Trademark Opposition. Alternatively, the Opposer may mount a likelihood of confusion argument and will be required to demonstrate how under the 13-part test outlined in the In re E.I. After around 3-4 months, the applicant will either receive an office action outlining certain defects within the trademark application and how it may be cured or, if the trademark does not have any issues, the examining attorney will publish the trademark to the Official Gazette for “Opposition”. Even for counter statements, the fee incurred shall be with respect to each class to which the counter is being filed. With written reply to the report, one put can put forward the arguments on how the objections are not applicable to the TM application and show the mark’s distinctive features. Oftentimes, during the trademark registration process, the Trademark Registrar raises objections on the intended trademark if it violates rules and laws of trademark registration. Abe is committed to his client's success. Here is a recent example of an office action filed with the USPTO that succeeded in overcoming both a likelihood of confusion refusal with a registration under Trademark Act Section 2(d), 15 U.S.C. Opposition proceedings are like mini-trials. Trademark Board Rules. The report sets out the grounds for opposition to a trademark, such as the existence of a conflicting mark; or that the trademark is non-distinctive, etc. Trademark is a unique mark, symbol or label that distinguishes your product from those of your competitors helping in its easy identification. Principally, the testimony period allows for alternating periods in which each respective side can present the evidence that they have gathered. If the complaint seems weak and the case winnable, it might very well make sense to push forward to proceed with a response. The USPTO recognizes that just because an examining attorney determines based on a preliminary review that a trademark is suitable for registration, that doesn’t necessarily mean that relevant third parties with an interest in the trademark should not have the right to oppose the mark’s registration. i) The opposition period is three months, which is inextensible. § 1063(a) [Trademark Act § 13(a)] Any person who believes that he would be damaged by the registration of a mark upon the principal register, including the registration of any mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may, upon payment of the prescribed fee, file an opposition in the Patent and Trademark Office, stating the grounds therefor, within thirty days after the publication under subsection (a) of section 1062 of this title of the mark sought to be registered.”. Remember, one of the most common grounds for a Trademark Opposition is the claim that the newly published trademark would create a likelihood of consumer confusion with the Opposer’s existing trademark (under Section 2 (d) of the Trademark Act). Initially, the TTAB will send a Notice of Default containing an order allowing the respondent 30 days to show cause why judgment by default should not be … The notice of opposition may only be filed in one of these languages and the language must also coincide with one of the two languages chosen by the applicant for the European Union trade mark, as indicated upon publication of the application in the EU Trade Marks … It is up to the TTAB to set the relevant dates for each part of the proceeding but typically, from the date of the filing of the Notice of Opposition, the defendant (yes, you are now a defendant in litigation!) In conjunction with the Answer, a list of  possible affirmative defenses and potential counterclaims should also be considered. Usually, the registrar takes around 3-5 months to respond to the reply filed by the applicant in respect of the examination report. Assuming that a trademark is sufficiently distinct and does not infringe upon an existing trademark already registered in the USPTO (by being too similar to an existing mark or representing goods/services which are too similar to those of an existing mark), the trademark will be eligible for registration in the USPTO. The Trademark Trial and Appeal Board (TTAB) is an absolute stickler for dates and procedural accountability; deadlines must be met and rules must be followed. However, where the EUTM is designated in an International Registration, the three month opposition period will start one month after the initial republication by the EUIPO. Trademark Trial and Appeal Board practice group of Collen, a leading U.S. intellectual property law firm. To establish a prima facie case of abandonment, the complaining party must allege at least three years of consecutive non-use of the mark with an intention not to resume use. In the event that you did not respond to a notice of opposition (or potentially other required information), you will likely receive a Notice of Default which means that because of your inactivity, the TTAB has issued a ruling favorable to the party who has filed the Opposition. When the applied trademark is published in the Journal of Trademarks, anyone can oppose the published trademark within 3 months from the date of journal publication. James Hastings is an attorney with the U.S. Because, going through an entire trademark opposition proceeding can be so tremendously expensive (for both sides), it is very often the case that the two parties will reach a settlement before the proceeding becomes too advanced. 1051) mean that trademark litigation is quite simply, very complicated. Recall from earlier in this Trademark Opposition Guide, we learned that, “Any person who believes that he, she or it would be damaged by the registration of a mark on the principle register may file an opposition addressed to the Trademark Trial and Apppeal Board.” The Opposer must demonstrate with sufficient reason and conviction that he/it does indeed have a legitimate stake in the outcome of the prospective trademark’s registration by illustrating how he will be damaged if the registration proceeds. Abe is managing partner of Cohn Legal, PLLC, Head of the firm’s Intellectual Property and Transactional Group, and works in the New York office in Midtown Manhattan. The counter statement shall typically comprise the following: Thus, anyone with a “real” or bona fide interest in the proceeding of the trademark is eligible to oppose it. The party that filed the application that is being opposed is known as the Applicant. In order to oppose a trademark, one must file a Notice of Opposition with the TTAB. Using a trade mark attorney, you can be sure that your opposition will be made in time and in the correct manner and avoid unnecessary costs. While there is no standard format for an Answer, it is generally best to answer each numbered paragraph of the complaint by providing a short statement either admitting or denying the alleged facts. How to answer a trademark opposition is an important first step in defending your trademark rights. An Opposer may raise any available statutory ground for opposition that negates the defendant’s right to registration, including likelihood of confusion, mere descriptiveness, or that the Applicant lacked a bona fide intention to use the mark at the time of fling. Of course, there are certain instances under which the TTAB will grant an extension of time to answer if the defendant can show good cause. The application shall contain: the name of the aggrieved party, Speak with a Trademark Opposition Attorney to both discuss whether or not responding to a trademark opposition is worth pursuing and the best legal strategy to ensure that it is a success. In order to demonstrate prior use, the Opposer may illustrate either earlier trademark use or actual prior registration date. Trademark Law FundamentalsLearn Trademarks, Trademark Oppositions and Cancellations are very serious matters indeed whose procedural dictates must be followed to the letter. 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