How do I oppose a trademark registration?

A trademark is something used to identify the source of a product. A trademark can be something as simple as a single word, or something as complex as the shape of a package is which a product is delivered. A trademark owner is granted certain exclusive rights to a trademark. If someone other than the trademark owner uses a trademark that can be considered trademark infringement. Whether a defendant in a trademark infringement lawsuit is found liable for trademark infringement depends on whether the defendant’s use of the trademark causes a likelihood of confusion in the average consumer.

In the United States trademark rights are granted to a trademark owner when the trademark is first used to mark products. Trademark rights are granted to trademark owners through a combination of common law principles, state laws and federal laws. Registration of a trademark is not required to first use a trademark, however registration of a trademark is a good idea because it will strengthen the exclusive rights associated with the trademark.

In the United States a trademark can be registered with the United States Patent and Trademark Office. To register a trademark the trademark owner must file a trademark application with the Untied States Patent and Trademark Office. The trademark application must demonstrate that the trademark meets all the requirements in the trademark law to be granted registration. The United States Patent and Trademark Office will review the trademark application and, if the United States Patent and Trademark Office concludes that the trademark meets all of the statutory requirements the trademark will be published for opposition. If the United States Patent and Trademark Office does not receive any public opposition to the trademark than the trademark application will be approved, assuming the trademark owner has met all other requirements.

The publication of trademark applications is intended to put the public on notice that something is going to be granted trademark status. Trademark applications are published in the Official Gazette which is a weekly publication of the United States Patent and Trademark Office. After the mark is published in the Official Gazette, any person who believes they may be damaged by registration of the trademark has 30 days from the publication date to file either an opposition to registration or a request to extend the time to oppose. An opposition is similar to a proceeding in a federal court, but is held before the Trademark Trial and Appeal Board, an administrative court within the United States Patent and Trademark Office.

Because trademark registration is not required, sometimes a trademark owner will try to save some money and not bother to register their trademark. One day that trademark owner might be shocked to learn that someone else is attempting to register the trademark. The question then becomes, how do I file an opposition to a trademark registration?

An opposition to a trademark application can be filed via letter, fax or electronically through Electronic System for Trademark Trials and Appeals. As of June 2018 email is not accepted. A notice of opposition will be sent to the applicant if the opposition is sufficient. An opposition is formatted very similarly to a lawsuit which would be filed in federal court. A notice of opposition must include (1) a short and plain statement of the reasons why the person opposing the trademark application believes they would be damaged by the registration of the trademark, and (2) a short and plain statement of one or more grounds for opposition. The key things which must be plead in an opposition is that the opposer’s use of the trademark predate’s the trademark applicant’s use of the trademark and that there is a likelihood of consumer confusion.

Proceedings before the Trademark Trial and Appeal Board are complex and full of unique legal issues, if you believe you need to file an opposition to a trademark registration it is best to consult an experienced trademark attorney.

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