About trademark oppositions

Once all objections of the examining attorney regarding a trademark application have been addressed, a trademark application is approved for publication. Anyone who believes that their mark will be damaged by the published mark can initiate a trademark opposition proceeding before the United States Patent and Trademark Office's (USPTO) Trademark Trial and Appeal Board (also known as the TTAB). More specifically, the legal grounds are:

"An opposition is a proceeding in which the plaintiff seeks to prevent the issuance of a registration of a mark on the Principal Register. 'Any person who believes that he would be damaged by the registration of the mark' may file an opposition thereto, but the opposition may be filed only as a timely response to the publication of the of the mark..."

Trademark Trial and Appeal Board Manual of Procedure (TBMP), Section 102.02.

The most common grounds for a trademark opposition is for the senior trademark holder to claim that the junior trademark is confusingly similar to the senior trademark. The senior trademark holder has to show their superior trademark rights, and this is commonly shown through a trademark mark registration, or trademark registrations. It is also possible to oppose a trademark through common law trademark rights. There are more less common grounds for trademark oppositions, which include:

• descriptiveness or genericness of the trademark
• fraud in attempting to register the trademark
• a trademark that disparages a particular group
• a trademark that is scandalous; and
• a number of other grounds set forth in Section 300 of the TBMP

The trademark opposition process is the equivalent of a full court proceeding, conducted before the TTAB. Due to the complexity of the trademark opposition process, including depositions, discovery, motions and counter-motions, it is not generally recommended for individuals to either initiate or defend a trademark opposition on their own. This is certainly possible, however the learning curve is substantial- and you only have one opportunity before the TTAB for your trademark opposition. While it is common for an applicant can often file and prosecute a trademark application on their own, it is advisable to utilize the services of a trademark opposition attorney. It is possible to win or settle a trademark opposition, and a trademark opposition attorney can provide many strategies and ideas about how to move forward.

Our firm has experience with trademark oppositions. We can provide you with a trademark opposition attorney at a reasonable price. Recent changes in trademark law make it important to utilize the services of a trademark opposition attorney to achieve a successful resolution to your trademark opposition.

If you would need the help of a trademark opposition attorney, please contact us. We represent trademark clients in and around Southern California, across the United States, and around the world. Our office provides a ten minute telephone consultation free of charge. To schedule a consultation, please contact us online, or call us at 310-277-0444. In office consultations, and in depth telephone consultations, are available for a $80 consultation fee.

InventionPatent.Net- An intellectual property information resource for patents, trademarks, and copyrights, written and edited by Owen Smigelski, Esq.

As in-house counsel, I cannot provide legal advice or information to individual clients.
I recommend consulting with:
Raymond Wagenknecht
Biotech Beach Law Group PC
Toll Free: 886-875-9562
Tel: 619-238-1179
www.biotechbeachlaw.com