This is a second-part of an article regarding U.S. Trademark Opposition strategies.
U.S. trademark opposition proceedings need not be expensive or protracted. This is one of the surprising conclusions for global trademark owners who seek to protect their rights in the United States.
Commencement of action. Under U.S. law, trademark applications that have been approved
Third-parties routinely seek extensions of time to file a Notice of Opposition against pending trademark applications. The time to oppose a trademark application is 30 days from the date of publication. An additional 30-day extension will be granted upon request, while 90 day extensions must allege good cause.
Below is a list of representative trademark
Updated: January 2022
U.S. Trademark Opposition: FAQ
A trademark opposition is a contested proceeding before the U.S. Trademark Trial and Appeal Board. Any third-party may oppose the trademark application of another party. An opposition may be filed only when the subject application is published in the Official Gazette of the U.S. Patent and Trademark Office. The time to file an opposition is within 30 days of publication. Extensions of time to file an opposition may be granted for an additional 30 days upon request, and up to 90 days for good cause shown.
Continue Reading Trademark Opposition Checklist for Opposers
A trademark opposition may be commenced based on a likelihood of confusion with a prior registered mark. The statutory basis for a likelihood confusion cause of action may be found in Section 2(d) of the Trademark Act.
To prevail on a Section 2(d) claim, the Opposer must prove by a preponderance of the evidence
Over 5,000 U.S. trademark oppositions are filed against trademark applications every year. Often, the opposer is a competitor of the applicant or a company that believes that it would be damaged if the U.S. trademark application were to proceed to registration.
Here are considerations to take into account when determining whether to file a U.S.
A recent trademark opposition decision by the U.S. Trademark Trial and Appeal Board is an example in how an Opposer should properly establish use analogous to trademark use.
In Dexas International, Ltd v. Ideavillage Products Corp., the Opposer filed an Opposition against Applicant’s Mark, SNACKEEZ DUO for “beverage ware; household containers for foods; thermal
A recent trademark opposition is a lesson in what happens when there is a crowded field of similar trademarks.
In Inter-Industry Conference on Auto Collision Repair v. LM Industries Group, Inc., Applicant sought registration of the mark ICAR or land vehicles in International Class 12. Opposer filed a notice of opposition against the ICAR application
(This article has been updated for 2021).
How to answer a trademark opposition is an important first step in defending your trademark rights.
What is a notice of opposition? Trademark opposition proceedings are contested matters before the U.S. Trademark Trial and Appeal Board (TTAB). The complaint, known as a Notice of Opposition, is filed by the Opposer, who may allege several grounds for refusal of a trademark application. Once the Notice of Opposition has been served upon the Defendant, the TTAB will issue an Order setting forth the relevant dates for each successive phase of the proceeding. This includes the time to file an Answer, the initial conference, initial disclosures, discovery, and trial dates. The failure to comply with the case management dates could irreversibly jeopardize a party’s rights.
Here are six steps to consider when preparing and filing an Answer to a Notice of Opposition:
When your company is faced with a trademark opposition, there are many misconceptions of what it is and what it is not. Be sure to have a clear understanding of what to expect to help guide your decision making process.
Governing Rules. Trademark oppositions in the United States are heard before the U.S. Trademark Trial
When a brand owner’s trademark application is opposed, there is a helpful checklist that it should consider. By doing so, it will help the applicant assess the merits of the case, and determine the best course of action moving forward. Here are some of the top defenses that can call into question the likelihood of