Many people assume that if they file a trademark with the United States Patent and Trademark Office (“USPTO”) and the Examining Attorney at the USPTO does not find any conflicting trademarks, that they are entitled to registration. However, there is another step along the way.
Federal law provides a way for a party to challenge the registration of a trademark during what is known as the publication period. The publication period occurs after the Examining Attorney’s preliminary approval and is intended to allow any person or entity who believes that they will be harmed by the registration an opportunity to oppose the mark. The publication period lasts for thirty days and commences on the day that the USPTO publishes the mark in the Official Gazette. If someone believes that their trademark will be harmed, then they can initiate what is known as an Opposition Proceedings.
Opposition Proceedings are the USPTO’s version of trademark litigation and includes a lot of the elements of traditional litigation: motions, written discovery, depositions, and written briefs. The major difference, however, is that the USPTO only deals with a single issue: based upon the evidence provided by both parties, is the applicant entitled to registration. The USPTO does not deal with issues of damages, injunctions, or other recovery related issues.
The USPTO receives thousands of oppositions each year. However, like with traditional litigation, the vast majority of the proceedings are resolved prior to the trial period, either by way of settlement or by one party merely conceding.
You may wish to oppose a trademark application if you believe the mark that has been applied for is confusingly similar to your own mark. Even if the USPTO has preliminarily approved the mark, you may be able to stop it if you can show that you will be harmed by registration of the mark. In order to make this showing you most typically prove to the USPTO that you have rights in a trademark and that the applied-for mark is confusingly similar to your mark and that consumers will be confused..
To oppose the mark, a party must make the opposition in writing and file it within 30 days of the proposed mark’s publication in the Official Gazette. The Official Gazette is published every Tuesday by the U.S. Patent & Trademark Office, and the year’s most recent issues are available online. Extensions may be requested, and hiring an intellectual property attorney can ensure you follow the proper deadlines and protect your rights.
When a Notice of Opposition is filed before the USPTO, the document should include the name of the party opposing the trademark application; a description of the nature of the trademark rights; and how the opposing party will be damaged if the application proceeds. The trademark applicant then has 40 days to answer or respond to the allegations in the Notice of Opposition by filing an “answer” stating any defenses to the claims. These steps are similar to general civil litigation.
The parties are then required to participate in a mandatory conference about “discovery,” or the exchange of documents and information. The parties may at that time reach a settlement, or agree to suspend the case for a length of time while they try to reach a settlement. If the settlement discussions fail, the parties must continue, and there may be a trial phase. However, all of the filings and testimony is exchanged through paper filings (unlike the courtroom setting of trials and hearings in the United States). Administrative law judges evaluate the facts and legal arguments and render a decision.
At the end of the proceeding, the judge may refuse to register the opposed mark; register the opposed mark; or, in some cases, order “concurrent registration of marks” and order conditions or restrictions on their use for the purpose of preventing consumer confusion in the marketplace.
For more information on trademark opposition, please contact an experienced trademark attorney at MYERS BERSTEIN LLP today.