Trademark Opposition Proceedings
Our trademark attorneys can help you file or defend a trademark opposition proceeding against a third party. A trademark opposition proceeding is a proceeding in which a party seeks to prevent a pending trademark application from being granted registration. If you believe that you will be damaged by the resulting registration of another’s trademark application, then our attorneys suggest you file a trademark opposition proceeding against the trademark application with the Trademark Trial and Appeal Board (TTAB). In the United States you will have 30 (thirty) days to oppose a trademark application after it is published in the Official Gazette. After the filing of the Opposition, eventually a formal decision will either uphold or dismiss the opposition, thereby refusing or granting the registration. The decision will be issued in writing by the TTAB. Some matters, after the Opposition is filed, are resolved through a settlement agreement. The settlement agreement may amend the opposed application, withdrawal the opposition and/or restrict the use of the mark to a geographical area.
If you believe that you will be damaged by a third party registration, then you may file a Notice of Opposition with the TTAB. The TTAB is the administrative tribunal that hears and decides oppositions.
If you succeed in an Opposition proceeding, then you will prevent a third party from registering a trademark. The TTAB cannot enjoin a third party from using the mark, nor can it award attorneys’ fees or costs.
In the United States, the effect of an opposition proceeding is the prevention of a registration of a trademark that is similar to and that is likely to cause consumer confusion with an Opposer’s trademark. An opposition proceeding may be used to create leverage when seeking a coexistence agreement with an applicant of a trademark being opposed. When an applicant is threatened with an opposition proceeding, the applicant may be receptive to entering into an agreement that defines the scope of use of the applied for mark.
In the United States, the legal result of a successful opposition proceeding is the prevention of a mark from being registered. Note, the TTAB does not have the authority to prevent the use of an unregistered mark, only the United States Courts have that power. A successful opposition proceeding may influence the Courts in further proceedings, for the ruling of the local trademark office may influence the Courts when rendering a decision.
Please contact our team of experienced trademark attorneys if you need assistance initiating or defending a trademark opposition proceeding.