Let’s suppose that your business has filed a trademark application, and it has been approved for registration by the United States Patent and Trademark Office.  Does that mean that you now have been awarded a trademark registration?  No!

Each and every trademark application that gets approved for registration first must be published in the Official Gazette of the Trademark Office to permit any third-party that believes that your trademark is confusingly similar to their own to oppose your trademark application. This is what is known as a trademark opposition.

In selecting a trademark opposition lawyer, you should keep in mind the following tips:

  • Experience – has this attorney represented clients in other trademark opposition cases before the Trademark Trial and Appeal Board?
  • Fees – does the trademark opposition attorney represent clients on a flat-fee basis, rather than an hourly rate?  
  • Philosophy – is the attorney open to listening to your needs and preferred outcomes both in time and expense to your business?

Since trademark opposition cases before the Trademark Trial and Appeal Board (TTAB) fall within the exlusive jurisdiction of the United States Patent and Trademark Office, you may hire a trademark opposition lawyer in any state in the United States to represent your interests before the TTAB.  By doing a little homework and asking the right questions, you will better protect your trademark rights and interests.

 

 

 

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Photo of James Hastings James Hastings

James Hastings is an attorney with the U.S. Trademark Trial and Appeal Board Practice Group of Practus, LLP.  He is a certified mediator of the INTA Panel of Mediators, an international roster of select professionals with expertise in trademark dispute resolution.

James is…

James Hastings is an attorney with the U.S. Trademark Trial and Appeal Board Practice Group of Practus, LLP.  He is a certified mediator of the INTA Panel of Mediators, an international roster of select professionals with expertise in trademark dispute resolution.

James is the publisher of Trademark Opposition Lawyer, an online advisory dedicated to helping brand owners understand important issues that arise in proceedings before the U.S. Trademark Trial and Appeal Board.  His commentary has been featured on Corporate Counsel, Law.com, LegalZoom,and other digital publications.

He devotes his practice to trademark opposition and trademark cancellation proceedings before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office.  Over the course of his career, he has represented the interests of numerous national and international brand owners in trademark litigation matters in both the U.S. District Courts and before the U.S. Patent and Trademark Office.

Prior to his current affiliation with Practus, LLP, James was in-house counsel to a New England-based catalog retailer, where he was responsible for developing trademark portfolio acquisition, protection, and licensing strategies.  Earlier in his career, he was a partner and associate at intellectual property law firms in New York, where he was engaged in trademark portfolio and intellectual property protection work on behalf of well-known fashion and personal care brands.

James is a member of the New York and Connecticut bars.  He has lectured at University MBA programs and legal education conferences on the issues of trademark protection and e-commerce law.

Past and Present Membership

  • International Trademark Association
  • Association Corporate Counsel
  • National E-tailing and Mail Order Organization of America