A trademark opposition proceeding is commenced by timely filing a Notice of opposition with the United States Patent and Trademark Office. According to USPTO rules, any person who believes that he/she may be damaged may file an opposition against a pending trademark application. While the term "any person" is construed broadly for purposes of filing a Notice of Opposition, the Trademark Trial and Appeal Board has nonetheless held that the potential opposer must have a real interest or direct and personal stake in the outcome. In addition, the potential opposer must have a reasonable belief that he will be damaged if the registration issue. The grounds for filing a notice of opposition against a pending trademark application include:
- a likelihood of confusion with the opposer's trademark
- descriptiveness or genericness of the pending trademark
- geographic descriptiveness of the pending trademark
- dilution of the opposer's trademark
- fraud in the procurement of the trademark for which registration is sought
The complaint should set forth the basic facts giving rise to the claim. For example, for a complaint alleging a likelihood of confusion, it is advisable that the legal elements of proving a likelihood of confusion be generally alleged, including that the parties' marks are similar in sight, sound, and meaning and that the parties' respective goods and/or trade channels are similar such that confusion is likely.
A properly plead complaint is vitally important in ensuring the success of a trademark opposition case. Should a notice of opposition be legally or factually deficient, the defendant/trademark applicant can move to dismiss the complaint, leaving the opposer with a major legal challenge to their case and higher legal costs.
A qualified trademark opposition attorney should always be consulted to discuss options for filing and successfully proceeding with a trademark opposition.