What If My Trademark is Opposed?

February 7, 2021
CLARK.LAW

No one has accused the trademark registration process of being short and simple. Registering your trademark with the United States Patent and Trademark Office (USPTO) is a complicated process that requires careful attention every step of the way. Even months into the process, you can still hit snags that will set you back. One of these bumps in the road you may encounter is a trademark opposition.

Once your application has been filed with the USPTO, it will undergo the lengthy process of examination by an Examining Attorney and, hopefully, will reach the stage of approval for publication.  When it happens, you will get a notice that your trademark has been “Published For Opposition.”  It means that your trademark will be published in the USPTO’s Official Gazette, a catalog of federal marks where anyone can review trademarks.  After your trademark has been published, third parties have 30 days to come forward and challenge potential registration of your mark.  It happens when a third-party trademark owner considers your mark to be confusingly similar to that owner’s mark.  If no opposition is filed within the prescribed time period, your trademark will be registered. 

If someone does come forward with a trademark opposition, the process of registration of your mark will be delayed at the very least. Your case will enter a court trial, but it will be through the USPTO’s Trademark Trial and Appeal Board, not a federal judge. This is an administrative court, so they will not be throwing you in jail for losing, nor will they be awarding damage or lawyer fees if you win. Despite that, it proceeds in much the same way as a regular court case (and can take just as long.) If the opposer prevails in the opposition proceeding, it will prevent registration of your mark with the USPTO.  Losing opposition may also impact your agenda regarding the continued use of the mark in commerce.   Even though the opposition proceeding is not the correct tool to stop you from using the mark, the prevailing opposer may take a step further and enjoin you from the use of the mark through a separate legal proceeding.

Trademark Opposition is difficult because of the extra time and effort it adds on to the process. It does not, however, necessarily mean the end of the line for your trademark. There are ways to defend the opposition proceeding successfully or negotiate a plan with the opposer for peaceful co-existence on the Principal Register and in the marketplace.  If your business needs help registering a trademark, defending your position in the event of an opposition, or enforcing your trademark rights – contact CLARK.LAW.  Your trademark deserves justice, and we will be happy to fight the case on your behalf.

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