Defending a Trademark Opposition

So you filed for your trademark application with the United States Patent and Trademark Office (USPTO), the application was reviewed by the examining attorney and approved for publication, and the application has in fact been published for opposition for the thirty (30) day period.  Rather than sailing through the opposition period en route to registration, you have received a Notice of Opposition.  The Notice of Opposition, which comes from the Trademark Trial and Appeal Board (TTAB), identifies a third party opposer who believes that registration of your trademark will harm their trademark for any number of reasons, with the most common being that your trademark creates a likelihood of consumer confusion with their prior trademark rights.  What do you do you now?

As experienced Trademark attorneys, we can tell you that the answer typically is “it depends”.  That said, TTAB opposition matters do not necessarily have to result in protracted dispute.  Instead, once we are able to review your trademark rights, the claims set forth in the trademark opposition, and identify potential defenses and/or legal leverage, more often than not there is an opportunity to discuss an amicable resolution.  That resolution would allow such things as peaceful co-existence with the opposer, registration of your mark or registration of an alternative with some modifications, and the avoidance of any continued dispute or federal court lawsuit that would subject you to legal and financial damages.  Understanding the strength of your position is the first step, and thereafter our Trademark lawyers can advise you regarding the best way to approach your unwelcomed trademark opposition.  At times, it may even be advised that you not only defend the opposition but also go on the offensive via submission of counterclaims or otherwise.  Ultimately, the recommended course of action will depend upon your specific set of trademark facts and the trademark laws as applied to them.

Rest assured, a Notice of Trademark Opposition should not automatically lead you to believe that you are not going to get your trademark registered or be able to use it.  Rather, it simply means that a little more work is needed in order to sure up what undoubtedly is one of the most important assets of your business, namely your trademark.