Before trademarks become registered, the USPTO offers the public a 30 day window to challenge any potentially infringing trademark applications through what is known as a notice of opposition. New applications are regularly posted in the Official Gazette, the official journal of the USPTO. Typically, a trademark owner may hire a trademark watching service to monitor new applications and promptly alert owners of potential infringement and misuse. As there is only a 30 day period to file for opposition, trademark owners need to take action quickly if they believe the application will negatively impact or damage them. If an owner neglects to file for an opposition or extension request within the 30 days, the owner may choose to file for cancellation instead.
There are many instances in which a trademark owner may want to oppose an application. Typically, the most common reason to challenge an application is based on a likelihood of confusion. If the trademark application includes a name or logo that is confusingly similar to the opposer’s trademark and is in the same or a very similar market, then the opposition is likely to be successful. Instances such as these in which the opposer can prove that they will be damaged if the application becomes registered are the most successful. Other reasons that may also justify an opposition include that the applicant’s trademark is generic, that it deceptively conveys association or sponsorship to the opposer, or that it may cause dilution to the opposer’s trademark.
Once an opposition has been filed, the applicant will have 30 days to file an answer. If an opposition has been filed against your application, you will need the help of a trademark attorney to file an appropriate response. If the applicant neglects to file a response, the opposition is usually granted in favor of the opposer. Whether you have had an opposition filed against you or you plan to take action against an infringing application, having the help of an experienced trademark attorney is necessary to guarantee the best outcome for your legal needs. It is also important to be mindful of the time frame. Once an application is registered, the only way to remove an infringing trademark is through cancellation, which is generally more limited in scope to what it can accomplish, especially as more time passes by. As oppositions are best handled promptly, do not hesitate to contact our attorneys if you believe another party is infringing upon your rights or if you discover that a notice of opposition has been filed against your application.
Written by: David Sacasa Ⓒ 2021 Alcoba Law Group P.A.
Picture Credits: Miri Paez Bolet.
Reviewed by: Ruben Alcoba