What Is a Trademark Opposition?

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After working tirelessly on its application, you may feel confident that your mark will soon be officially registered with the United States Patent and Trademark Office (USPTO). But you may experience an unexpected bump in the road, in which a third party initiates a trademark opposition against you. You may be surprised that you are already encountering legal issues, given that you have not formally introduced your mark to the marketplace yet. At any rate, please continue reading to learn more about the potential of trademark opposition and how an experienced New Jersey trademark lawyer at The Ingber Law Firm can help prepare you for this upcoming, pivotal legal process.

What should I know about a trademark opposition?

In its simplest terms, trademark opposition is a formal legal process that allows a third party (i.e., an individual or company) to challenge a trademark application pending with the USPTO. Essentially, it is when a third party challenges whether you hold the right to register this mark in the first place.

To backtrack a bit, if your mark passes through the USPTO’s initial review process, they will publish it in their Official Gazette, a public record where other parties can view it. Therefore, a third party may be prompted to commence this legal action against you if, after viewing the Official Gazette, they find that they have a problem with your new mark.

What are the potential grounds for a trademark opposition?

Of note, a third party may only have 30 days from when your new mark was published in the Official Gazette to file a trademark opposition. If they do, you and the third party may stand before the Trademark Trial and Appeal Board (TTAB) and share your oral arguments and supporting evidence. Now, this legal case may only get to this point if the TTAB finds that the third party outlined valid grounds within their notice. Examples of valid grounds are as follows:

  • The third party believes that your new mark will cause a likelihood of confusion amongst consumers.
  • The third party believes that your new mark is too scandalous or offensive to be used in the marketplace.
  • The third party believes that your new mark is descriptive or functional rather than distinguishable.

What are the possible outcomes of this legal process?

As soon as you receive a Notice of Opposition, you should take it seriously. This is because a strong argument in front of the TTAB may make all the difference in helping your mark continue through the application process. On the contrary, if the third party ultimately wins this argument, the USPTO may abandon your trademark application altogether.

This means you may also lose the application fees you have paid thus far. And while you may have an opportunity to appeal this decision to the U.S. Court of Appeals for the Federal Circuit or a U.S. District Court, this may mean additional legal fees and serious time commitments.

In conclusion, at this time, what matters most is that you retain strong legal representation to get you through this critical case. Please contact a skilled Essex County, New Jersey intellectual property lawyer from The Ingber Law Firm today.