Many companies facing a trademark opposition are unfamiliar with the ramifications of a notice of opposition and how it could impact their business. Here are some things to remember when your trademark application is opposed:
Trademark Oppositions are Civil Litigation
An opposition proceeding is a form of civil litigation that is heard before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office. It has a complaint (in the form of Notice of Opposition), discovery phase (allowing the parties to file discovery items such as interrogatories, request for production of documents and to take depositions), and a trial phase, assuming the case is not settled. There is also the opportunity to prepare and file motions and legal briefs in support of your position.
Trademark Oppositions are Governed By Specific Rules
The rules governing trademark opposition procedures are found in the Trademark Board Manual of Procedure also known as the “TBMP.” The TBMP comprises 12 chapters that explain in specific detail the procedural and substantive requirements of a trademark opposition rules that must be followed. Chapters include topics such as Pleadings, Discovery, Stipulations and Motions, and Settlement.
The Failure to Follow the Rules Can Be Fatal to Your Case
The Trademark Trial and Appeal Board requires strict adherence to each and every rule. The failure to follow the rules can result in several unwanted consequences, such as a motion for default, a motion to dismiss, or motion for judgment. Quite often, these dispositive motions are due to a failure of one party to meet deadlines or other procedural requirements necessary to maintain their case.
The best practice is always to consult with a qualified trademark opposition attorney early in the proceedings to avoid risk to your trademarks or business.