Trademark Disputes and Oppositions

By Marc Whitfield
​Partner, Taylor Porter
marc.whitfield@taylorporter.com

​What can you do if someone else is seeking federal registration of a trademark that is confusingly similar to, or weakens the distinctive quality of, your trademark? As part of the trademark registration process, the USPTO publishes each trademark in the Official Gazette prior to registration. Anyone that wishes to object to the registration of a trademark has 30 days from the date of publication in the Official Gazette to file an opposition to the registration of that mark. A trademark opposition is initiated by filing a notice of opposition with the Trademark Trial and Appeal Board (the “TTAB”) and paying the required filing fees. If you discover that someone else is attempting to federally register a trademark that is confusingly similar to your trademark, it is important that you promptly seek legal advice from a trademark attorney prior to the registration of the infringing trademark to ensure that your legal and proprietary rights are protected.

In a trademark opposition, the party opposing the trademark registration must identify its grounds for opposing the registration of the trademark.  In most cases, the opposing party claims superior rights of use or ownership of the mark in question or claims that the mark being registered is confusingly similar to the opposing party’s trademark.  The opposing party may also contend that the mark is merely generic or descriptive and therefore ineligible for registration or the opposing party could claim that the mark dilutes the distinctive quality of the opposer’s trademark or that the application is based upon false, inaccurate or fraudulent representations.  As part of the opposition process, the opposing party must also establish that it has proper legal standing to oppose the pending application.  Standing is generally established by alleging and showing that the opposing party has a direct and personal stake in the outcome of the opposition proceeding and would be harmed by the registration of the opposed trademark.

Once the notice of opposition has been filed, the TTAB will formally initiate the opposition proceedings and process and the opposition proceeding will proceed in a manner that is generally equivalent to a scaled-back or streamlined lawsuit. With input from each party to the opposition, the TTAB will establish a comprehensive schedule that establishes when each party is required to complete its particular steps in the opposition proceeding.  Similar to a lawsuit, the parties are able to conduct discovery and depose any witness and/or experts. However, rather than conducting an actual trial, the parties instead submit their evidence through depositions and affidavits and file legal briefs that apply the submitted evidence and their respective legal arguments.  Upon review of the submitted evidence and legal briefs, the TTAB will issue a formal ruling that either upholds or rejects the opposition.  If the opposition is upheld, the application for registration of the opposed mark will be denied.  If the TTAB rules in favor of the party seeking registration, the registration of the trademark will be allowed.

It is important to understand that the sole issue before the TTAB in an opposition proceeding is whether or not the mark is eligible for registration. The TTAB cannot award any form of monetary damages for trademark infringement or dilution.        

If you have any concerns about a trademark that someone else is attempting to register or a third party has filed an opposition to a trademark for which you are seeking registration, please feel free to contact us to schedule a consultation to review your proprietary rights and legal options.