Trademark Opposition (Part A)

When a trademark is filed with the United States Patent and Trademark Office (USPTO), it will pass through an initial phase of examination and acceptance. Once accepted, the mark will then be open to objection for a limited period of time. During this time, third parties may choose to oppose a trademark if they feel that a mark is confusingly similar to their own.

Therefore, you may choose to officially oppose a trademark to protect your own registered trademark. To oppose a trademark, you will have to initiate a trademark opposition proceeding before the USPTO's Trademark Trial and Appeal Board (TTAB). To oppose a trademark before the TTAB, you can get the professional help of a New York Trademark lawyer.

Trademark Opposition

According to the United States Trademark Act, "Any person who believes that he would be damaged by the registration of a mark...including as a result of dilution...may, upon payment of the prescribed fee, file an opposition in the Patent and Trademark Office."

As we previously mentioned, the most common reason to oppose a trademark is that a mark is confusingly similar to your own. To oppose a trademark, you must show that your trademark rights have been violated by another mark or application. When you oppose a trademark with the TTAB, the opposition process is similar to a legal court proceeding.

To oppose a trademark, you must file your Notice of Opposition with the USPTO within 30 days of the trademark's publication.

The process of opposing a trademark may include depositions, discovery, motions, and counter-motions. Factors that will be considered in a trademark opposition proceeding include:

• the degree of similarity between the trademarks;
• who has senior rights in the terms of the dates of first use;
• whether the current senior mark is in use;
• the degree of similarity between the goods or services offered by the opposing parties; and
• the applicant's good faith, or bad faith, in adopting its own mark.

Before you proceed with a trademark opposition, you should get the advice of an experienced New York trademark lawyer. A New York trademark lawyer can evaluate your case, and advise you on how to proceed with your trademark opposition claim.

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