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.

 

 

 

Tags: "notice of opposition", "trademark opposition attorney", "trademark opposition"
Print:
Email this postTweet this postLike this postShare this post on LinkedIn
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

Read more about James HastingsJames's Linkedin Profile
Show more Show less
Related Posts
Close up of clothing rack.Shirts hanging in rack in store.Selective focus with copy space for text.
Roots® Apparel Brand Prevails in Trademark Opposition
April 4, 2022
 Alzheimer's Non Profits Clash in Trademark Opposition
January 18, 2022
trademark-opposition-lawyer-color (1)
TTAB Notice of Opposition Filings for Week of August 9, 2021
August 11, 2021