Trademark Oppositions–Worth Fighting?

7 01 2012

Many people file trademarks without the assistance of an attorney, either through the USPTO website, which is quite user friendly, or through an online service. Once you file your trademark, however, the process isn’t over. You may receive an office action, which asks you to submit additional information or explanation with regard to your mark. You will also have to file an additional form if you did not submit a specimen when you filed the mark.

Another issue that may arise after you file your trademark application is a trademark Opposition. An Opposition may be filed against you by another party who believes it may be damaged by your registration of the mark. This often occurs if your mark is similar to another mark, but the similarity was not picked up by your examining attorney.

The first rule of trademark Opposition is: Don’t Panic! Just because someone says your mark is confusingly similar to theirs, doesn’t mean it is. Many trademark owners hire aggressive law firms to protect their rights, and these firms oppose any mark that is even slightly related to their client’s mark, even if they are unlikely to win on the merits. Because so many trademark applicants default on Oppositions, these firms succeed in spite of the fact that they often have no case.

Your best option is to hire an attorney who regularly fights trademark Oppositions. That attorney will be able to analyze your case and determine the most cost effective way to proceed. You may, after consultation with an attorney, decide to abandon your mark. You also may decide to fight the Opposition.

Opposition Procedure:

  • If you choose to fight the Opposition, either on your own or with the assistance of an attorney, the first step is for you to file an answer. The answer looks a lot like the answer you would file in a lawsuit. It tells your side of the story and includes any affirmative defenses you may have.
  • Thirty days after the answer is due, the parties must participate in a pre-discovery conference, where they discuss the case. Subjects covered in the pre-discovery conference include the possibility of settlement and the issues surrounding discovery. You may conduct this conference on your own with the opposing party, or you may have a Trademark Trial and Appeal Board representative participate in the conference with you.
  • The next step is for each party to exchange initial disclosures, which disclose the identities of individuals with discoverable information that you may use to support a claim or defense, and copies or descriptions of documents and tangible things that you may use to support a claim or defense. You can’t seek discovery or move for summary judgment until after you make your initial disclosures.
  • Discovery begins after the initial disclosures, and it is very similar to the discovery conducted in a regular lawsuit. The discovery devices available in a civil action are all available in an opposition, and the motions available in a civil action are generally available.
  • Thirty days before the close of discovery, the parties must make expert disclosures, and fifteen days before your testimony period, you must make additional, pre-trial disclosures.
  • There is no live trial in a trademark Opposition. Each party has a period in which they are permitted to submit trial evidence, and the opposer has an opportunity to submit rebuttal evidence. Briefs are filed after the evidence is submitted, and a written decision is provided within three to six months.
  • The loser can file a request for reconsideration, or an appeal in a U.S. District Court.