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What to Do If Your Trademark Application Is Opposed

What to Do If Your Trademark Application Is Opposed

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When you submit a trademark application, you hope for a smooth journey toward registration. However, it’s possible that your application may be met with opposition. Knowing how to navigate these waters can make a significant difference in the outcome of your case. Here, we discuss the trademark opposition process and outline the three crucial steps you should take if your trademark application is opposed. 

The Trademark Opposition Process 

The trademark opposition process is a formal procedure governed by the Trademark Trial and Appeal Board (TTAB). When a third party believes that your trademark could cause confusion with their existing mark, dilute its distinctiveness, or otherwise harm their brand, they might file an opposition. This process begins after your trademark application is published in the Official Gazette, a weekly publication of the United States Patent and Trademark Office (USPTO). 

An opposition must be filed within 30 days of publication. If an opposition is filed, the TTAB will notify both parties, and you, as the applicant, will need to respond with an answer. The process also involves several stages, including discovery, potential settlement negotiations, trial, and final decision. Here are the three essential steps you should take if your trademark application faces opposition. 

  1. Immediately Docket the Matter

Upon receiving notice of opposition, your first step should be to immediately docket the matter. Docketing involves recording all relevant deadlines and dates related to the opposition process. This ensures that you do not miss any critical timelines, which could result in default judgment against you. Effective docketing keeps you organized and helps you track the progress of your case systematically. 

Here are some examples of how you can record these deadlines: 

  • Digital Calendar: Use a digital calendar like Google Calendar or Microsoft Outlook to set reminders for each key deadline. This can include the date to file your answer, discovery deadlines, and any other important dates set by the TTAB. Set multiple reminders leading up to each deadline to ensure you don’t miss them. 
  • Project Management Tools: Utilize project management software such as Trello, Asana, or Monday.com to create a dedicated board or project for your trademark opposition. You can create tasks for each deadline and assign them to team members if you’re working with a group. 
  • Spreadsheets: Maintain an Excel or Google Sheets spreadsheet that lists all the relevant deadlines, along with details of what needs to be done. Include columns for the task description, due date, responsible person, and status. This allows you to have a clear overview of the entire process. 
  • Physical Planner: If you prefer a more traditional approach, use a physical planner or wall calendar to mark down important dates. Highlight these deadlines in different colors to make them stand out and ensure they catch your attention. 
  1. Hire an Attorney with TTAB Experience

Trademark opposition proceedings are complex and require specialized knowledge of TTAB procedures and trademark law. Engaging an attorney with extensive experience in handling TTAB cases is crucial. Here are some key qualities to look for when hiring an attorney for your trademark opposition: 

  • Experience with TTAB Cases: Ensure the attorney has a proven track record of handling TTAB opposition cases successfully. 
  • Understanding of Trademark Law: The attorney should have deep knowledge of trademark law and the nuances involved in trademark opposition proceedings. 
  • Strong Communication Skills: Your attorney should be able to clearly explain the process, your options, and the potential outcomes. Effective communication is key to a successful attorney-client relationship. 
  • Strategic Thinking: Look for an attorney who can develop a strategic approach to your case, whether it involves negotiating a settlement or preparing for trial. 
  • Reputation and References: Check the attorney’s reputation within the legal community and ask for references or testimonials from previous clients. 
  1. Timely File Your Answer

Filing a timely answer to the opposition is a critical step in the process. The TTAB sets a strict deadline for submitting your response, typically 40 days from the date you receive the notice of opposition. Failing to file an answer within this period can result in a default judgment against your application. Your answer should address each claim made by the opposing party and present your arguments and defenses clearly. An attorney can help you draft a comprehensive and compelling answer to increase your chances of a favorable outcome. 

Facing a trademark opposition can be a daunting experience, but taking the right steps can help you navigate the process more effectively. By immediately docketing the matter, hiring an attorney with TTAB experience, and timely filing your answer, you can position yourself to defend your trademark application successfully. Remember, professional guidance and a proactive approach are key to overcoming the challenges of trademark opposition and securing the protection of your brand. 

If you or your business need assistance with trademark application, our experienced legal team is here to help. Request a call today.

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