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Trademark Oppositions

After the USPTO Examining Attorney approves your trademark, your mark will proceed to publication. 

During publication, your trademark will be “published for opposition” for a period of 30 days. 

This 30-day opposition window is similar to the part of a wedding where they say “speak now, or forever hold your peace”. 

During this 30-day period, any third party can object with a Notice of Opposition against your mark. 

Essentially this means the third party is opposed to the USPTO giving you a trademark registration. 

A Notice of Opposition is a formal objection against the registration of a trademark filed with the Trademark Trial and Appeal Board.

Why Trademark Oppositions Occur:

  • Similarity to an Existing Mark: One of the primary reasons for oppositions is the belief that a trademark is confusingly similar to an already registered or pending trademark.
  • Lack of Distinctiveness: If the mark is deemed generic or merely descriptive without acquired distinctiveness, it can be opposed.
  • Bad Faith Filing: If it’s believed that the applicant has no genuine intention to use the mark or is trying to unfairly capitalize on an established brand.

Trademark Opposition Process:

  1. Notice of Opposition: The opposing party (opposer) initiates the process by filing a Notice of Opposition. This document outlines the grounds for opposition and the rights they seek to protect.
  2. Answer by Applicant: The applicant has a few weeks to file a response, called an “Answer”, addressing the concerns raised in the opposition.
  3. Discovery Stage: Both parties present evidence supporting their claims. This can include proof of use, market surveys, affidavits, or expert testimonies.
  4. Oral Proceedings: Depending on the jurisdiction, there may be a hearing where both parties present their arguments.
  5. Decision: The USPTO will review the evidence and arguments, and then issue a decision. This can result in the approval, denial, or modification of the applied trademark.

Possible Outcomes After Filing an Opposition:

Registration Proceeds: If the opposition is unsuccessful, the trademark will continue with the registration process.

Refusal of Registration: If the opposition is upheld, the mark might be denied registration.

Amendment or Withdrawal: The applicant might choose to amend the application or withdraw it entirely to address the concerns raised.

Settlement: Typically, most oppositions settle outside of the USPTO.

How To Avoiding a Trademark Opposition:

  • Comprehensive Search: Before applying, conduct thorough trademark searches to identify potential conflicts.
  • Strategic Filing: Careful selection and drafting of the goods and services listing to avoid conflict with prior marks. 

Getting past the opposition window is a crucial aspect of the trademark registration process. 

Opposition proceedings are also an effective way to ensure that trademarks do not infringe upon the rights of others. 

Both applicants and trademark holders should be proactive, understanding the process, and seeking legal expertise when navigating oppositions.

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