Each year, thousands of companies seek to register their trademarks with the United States Patent and Trademark Office. But there is an interesting fact that nationally-advertised trademark registration services do not publish: over 33% of trademark applications get refused by the U.S. Trademark Office.
That’s right: obtaining a trademark registration is more complicated than LegalZoom would like you to believe.
Even after the U.S. Patent and Trademark Office has preliminarily approved a trademark application, any company or individual who believes that it may be injured by the registration has the right to object to the trademark application. This is done by preparing and filing a Notice of Opposition with the U.S. Trademark Trial and Appeal Board.
Responding to a Trademark Opposition
Recent U.S. Trademark Trial and Appeal Board trademark statistics reveal that thousands of trademark oppositions are filed every year. In the vast majority of these cases, many trademark applicants are ill-prepared in knowing how to properly answer the trademark opposition or how to utilize other strategies in an effort to successfully defend against the opposing party.
Here are some basic strategies available to trademark applicants who have received a notice of opposition:
1. Know the Opposing Party. A common ground for bringing a trademark opposition is for the Opposer to claim that the Applicant’s trademark is confusingly similar to the Opposer’s preexisting trademark. The Opposer will cite its own trademark in the Notice of Opposition, including whether it is the basis of a federal registration, state registration, and/or common law rights. Applicants are advised to verify if the Opposer’s trademark is indeed the subject of a valid registration, as well as research how and to what extent the Opposer’s goods or services under the trademark are currently being advertised and/or sold to the public.
2. Research any Possible Defenses. When a trademark applicant is served with a Notice of Opposition, it is required to file a formal Answer to each and every allegation in the Opposition. At that time, the Applicant may also file what are known as affirmative defenses, which are legally recognized grounds for why a trademark opposition should be defeated. Affirmative defenses that may be interposed in a trademark opposition proceeding include laches, unclean hands, and acquiescence. These are equitable defenses that should be considered, as well as any other factual or legal grounds that would tend to bolster the Applicant’s defense.
3. Become an Informed Client. In seeking the services of a trademark opposition attorney, the Applicant should ask the attorney to generally explain the Trademark Trial and Appeal Board process, his or her professional fees (hourly, flat-fee, or a combination of both), and potential options for early settlement of the case. The Applicant should also make clear to the attorney the applicant’s preferred business outcomes to the opposition case, which may include a discussion of the Applicant’s future plans for the trademark, and sales and marketing expenditure to date that are related to the trademark.
Each trademark opposition case is different, so it is important to become familiar with the legal process, potential defenses, and alternatives to litigation before proceeding. By having such knowledge, a client may be able to be in a better position to successfully defend against a competitor or other third-party who seeks to challenge the trademark applicant’s rights to registration.