Trademark Oppositions: What Are They and What You Can Do
Trademark Oppositions can be the death of your Trademark Application. And if you’re watching this video, you’re probably wondering what is a Trademark Opposition in the first place?
Well, Trademark Oppositions occur during examination of the Trademark Application. Examination is Step 4 in our Trademark System. And specifically within Examination, there’s the examination that occurs in the Trademark Office and then there’s the examination that occurs through publication of the Trademark in the Official Gazette for purposes of getting public feedback, and that’s where the opposition is filed or when the opposition is filed. Because you’re watching this video, you’re also probably on the receiving end of an opposition. Well, in my experience, opposition proceedings are actually kind of predictable — that is to say if you do your homework by doing Trademark Searches and evaluating those searches and filing a proper application, Trademark Oppositions should be fairly rare or it’s going to be a decision — a business decision that the Trademark applicant makes (you make) based on a hope that your mark will be seen as distinctive enough and different enough from some other mark that’s out there such that you won’t face an Opposition Proceeding. And so, why do you not want an Opposition Proceeding? Well, first and foremost, it’s the cost. It culminates in a mini-trial, but it’s like litigation. There is something called a discovery process that’s an exchange of questions and answers and documents with the opponent in the Opposition Proceeding. And then you have potential depositions, so this is a trial. It takes place in Alexandria, Virginia which is just outside of Washington DC at the Trademark Office.
So, ultimately, you have to ask yourself the question: What is it worth to register this Trademark? once you’ve received an Opposition Notice. Now, if you’re opposing a mark that’s been published for opposition, well you’re seeking to stop a potential dilution of a mark that you already have registered or you’re seeking to stop a company from potentially stealing your customers. Often I see this happen when a former business partner or former employee is trying to be clever about a spelling of a name or the the look of a logo and trying to push something or sneak something through the Trademark Office. And your Opposition Proceeding gives you the ability to put a check and a stop on that mark from registering in the event that the trademark examiner missed the potential confusion. Now, in my experience, as long as things are innocent, as long as there isn’t a bad intent by a former employee, bad intent by a competitor, a bad intent by a former contractor or partner, usually you can get a negotiated settlement that avoids the need for most of the expensive discovery process and/or the litigation itself. But this is a complex process and so what you need to do is give me a call and let’s set up a consultation and discuss your options and get really grounded in the realities of what this process entails, so that you can make the best decisions for you and your business.
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