If you are in business and you distinguish your goods or products by using a particular logo, design, phrase, or word, then it may be the case that you already have a trademark. These marks distinguish your products or services from others operating in the same commercial setting. Trademarks are probably the reason why you would never mistake Adidas for Puma or Apple for Dell.
When you officially register your trademark, and you can from the comfort of your home, it attracts several advantages to you and your business. For more information on these advantages and how you can register your trademarks with the United States Patents and Trademarks Office (USPTO), check out our previous blog post here.
The Trademark Registration Process
As a business owner, after identifying the need to protect your trademark, you also have to decide how far you want the protection to extend. If, for instance, you operate a small company that mainly does business within a particular state, trademark registration at the state level might be a more appropriate option. However, if you want to obtain widespread federal rights across the United States, then a proper trademark application has to be made to the USPTO. Even if you are located in one spot, but you sell your products over the internet, it is advisable to obtain federal-level protection in order to ensure that your design or logo is protected, no matter where your goods are sold.
After initiating your application, you will be asked to highlight how you already use the mark (actual-use) or how you intend to use the mark (intent-to-use). Also, you would be required to submit several other documents, including one containing an actual drawing of the mark (if what you are trying to trademark is a graphic or logo).
After submission, the USPTO assigns an examining attorney to each intending trademark. The roles of the attorney include ensuring that the application was correctly filed and that the mark is not confusingly similar to any other mark already in use. If the application passes this stage, it is then approved for publication. The registrant will receive a, trademark official gazette publication confirmation when their mark is approved for publication.
Once every week, thousands of intending trademarks awaiting final approval are published in the Federal Gazette of the USPTO. The Gazette is made publicly available, just like the Wall Street Journal or the New York Times. At this stage, third-party brands or companies with a legitimate interest in a mark might raise an issue with the use and registration of that particular mark for any number of reasons, including:
- Confusing similarities with an already existing trademark, which could lead to customer confusion
- Dilution of a famous trademark
- Intending trademark is a generic or descriptive term
- Intending trademark suggests a false connection or origin
- Intending trademark is a surname
So important is the concept of trademarks and intellectual property that some larger companies often have their own teams monitoring the Gazette and could oppose an intending trademark in the appropriate circumstances. However, the said opposition must be done within a window period of 30 days, extendable by up to 90 additional days, if there is a request for such extension within the initial 30-day period. This extension is typically used to properly analyze the situation and decide whether or not an opposition is worth it in a particular case.
Trademark Opposition Stage
In the unlucky event that a third-party company picks an issue with your trademark, you’ll be served a “Notice of Opposition” emanating straight from the Trademarks Trial and Appeal Board (TTAB) itself. This notice usually contains the full description of the complaints and claims made by the other party.
At this point, there is the option of contacting the opposing party directly in hopes of some sort of negotiation. Better still, it is recommended that you hire an attorney to thoroughly review the complaints and claims of the other party and file an answer to defend against these claims within the 40-day deadline. If this 40-day answer window is missed, the applicant risks losing their entire trademark application, and their entry would be marked as abandoned.
While there might be narrow alternative routes to file a late response, it is more advisable not to take chances and instead to employ the services of a knowledgeable attorney.
Tackling the Trademark Opposition
Several steps can be taken to resolve the opposition issue at this stage. As stated earlier, you may reach out to the opposing party directly to try and negotiate an agreement, so the matter does not escalate.
Alternatively, you can hire an attorney to file your answer to the notice. This answer contains all the informative defenses and counterclaims that you might have. Within 30 days of filing your answer, both parties would meet in what is called the Mandatory Discovery Conference to discuss each other’s claims and defenses. They are also obligated at this point to discuss possible avenues of settlement.
Settlements at the TTAB are a very technical stage that can take many forms. For instance, there could be an agreement to limit the scope of use of the intending mark to only one area of business (e.g., footwear), to modify the mark slightly, limit trade channels for the sale of the goods, or narrow the description of your goods or products in order to minimize confusion with the other party’s business. In addition, there could be an agreement to limit geographic locations, e.g., parties may agree to operate on different coasts (East Coast v. West Coast). Also, parties could sign what is known as a “Consent and Coexistence Agreement.”
Alongside these, there are dozens of other avenues for settlement available. In fact, about 95% of all trademark opposition cases settle at some point before reaching trial. Again, this highlights the need for an experienced attorney who is well versed in this area of law to be able to argue your case forcefully and insist on a better settlement for you.
What Not to do in the Event of a Trademark Opposition
Sometimes, when trademarks get opposed, the owners, due to a lack of financial or legal means to deal with the opposition, choose to let the mark go abandoned without engaging in any negotiation or litigation but keep on using the mark anyway.
This is highly inadvisable for two main reasons. Firstly, by your silence, your application would be marked as abandoned and a default judgment given in favor of the opposing party, affirming all of their claims. Subsequently, if the opposing company finds out about your continued use of the mark, they could sue you for willful infringement before a federal court. Secondly, you could be held liable for a triple award of damages and attorney’s fees because you knew about a third party claim against the mark, unilaterally ignored it, and continued with its usage.
In order to avoid any of these possible scenarios, it is important to either engage in some form of negotiation with the opposing party or to rebrand the mark entirely. The thing NOT to do is ignore the notice and continue using the mark because the rug could be pulled out from underneath you when you least expect it.
Pre-Application Stage: Preventing an Opposition from Happening in the First Place
No matter how straightforward it may seem, trademark opposition proceedings are very time-consuming. In fact, going to trial is guaranteed to take at least 1 ½ to 2 whole years before getting any sort of ruling from the TTAB. As such, it would be wise to take steps when preparing your initial trademark application to minimize the chances of getting opposition. Some of these steps include:
- Conduct a clearance search: Whether you decide to employ the USPTO’s Trademark Electronic Search System, TESS, or you decide to outsource the task to those companies who conduct thorough trademark searches in advance of filing, the goal is one and the same. Identifying similar marks ahead of time enables you to make last-minute changes or adjustments in order to prevent opposition. While this might not be a 100% guarantee, it at least gives you a good idea of the risks involved.
- Watch out for the big guns: Regardless of the area of trade you are operating in, it would be wise to watch out for the big names and famous trademarks. This is because these brands are granted an extended scope of protection at the TTAB. They have the ability to raise what is known as a “dilution claim,” only available to famous brands. This privilege exists even though you might be operating in what you deem is outside the scope of their business space. For instance, if you decide to trademark “McDonald’s Shoes,” the main company can oppose such trademark of dilution, despite the difference in the goods and services offered. As such, there is a need to be particularly wary of big names.
Careful consideration must be given to these factors above to reduce the chances of getting a trademark opposition. If you would like to learn more about the pre-application stage, such as trademark searches, check out our YouTube Video Trademark Searches 101.
Skillsets of a Knowledgeable Trademark Attorney
It is advised that you employ the services of a Trademark Attorney if you receive an opposition notice. In doing so, certain skills should be looked out for, and questions to be asked. Firstly, this person must be skilled in Intellectual Property Law and Trademark Law. This is because it is a highly specialized area of law. As such, some loopholes or exceptions may not be visible to you as a layman but would be credible weapons in the hands of an experienced attorney.
Secondly, you may ask questions about the attorney’s specialty and experience with litigation, particularly before the Trademarks Trial and Appeals Board (TTAB). This is because the TTAB has many of its own bespoke rules and regulations, which must be complied with. And only an attorney well versed in handling proceedings before the Board would know how to navigate those nuances.
Thirdly, you might want to sample the attorney’s initial opinions on the Notice of Opposition. Everyone wants an attorney who is honest, straightforward, and says things the way they are, including honestly identifying the possible risks in the case.
Finally, you would also want an attorney familiar with submitting documentary evidence before the TTAB, versed in skillful negotiation and passionately arguing your case, and ensuring a beneficial agreement regardless of who the third party company is.
Costs of Dealing With a Trademark Opposition
Hiring an attorney or a firm to defend against the opposition claims does not come cheap. Some firms might require an upfront retainer and then bill hourly down from that retainer, while others may operate a flat fee basis for each stage of the trademark opposition process stage. For firms operating in the second category, a specific fee (say $1,200) may be charged in order to file an Answer to the Opposition claim. The next stage, which is the Mandatory Discovery Conference, may be in the rough range of around $600. Other stages also attract different fees.
Whether you are the one opposing a trademark or it is your trademark being opposed, failure to act knowledgeably and decisively can result in a total loss of your rights. It is a very technical process, and proper legal representation could prove to be a major game-changer. Here at Dana Legal Services, we have extensive experience with trademark opposition matters. So if you have concerns or need help with your trademark opposition process, feel free to contact us for a free consultation at email@example.com or visit our contact page.