After an application is published for opposition, any third party can file an opposition to prevent the trademark application from becoming a trademark registration
After the Examining Attorney reviews a trademark application and if he or she concludes the application meets all the requirements for trademark registration, the trademark application will be published for opposition.
Trademark Application is Published for Opposition
Screenshot of online publication of the Official Gazette which can be found here
When a trademark is published for opposition, it appears in the Official Gazette, which is released by the United States Patent and Trademark Office (USPTO). Once a trademark is published, any third party may oppose the application and prevent it from being a registered trademark with the USPTO within a thirty day window. It is important to note that people concerned with a trademark application cannot oppose before the opposition period begins, or after thirty days from when it is published. Therefore, it is important to pay attention to deadline and dates if a third party sees an application that they feel will harm them, most likely due to a likelihood of confusion issue.
Who can Oppose a Trademark Application
Anyone with a real interest in opposing a trademark application can file a trademark application. Generally, the person opposing the application must be able to show how the registration would harm them personally rather than just assert that the registration of the trademark is simply unfair. The most common example of an opposition proceeding is that the trademark application, if registered, will lead likely confuser consumers with an already registered or used trademark by the third party opposer.
Where to File the Trademark Opposition
Trademark oppositions are filed with the Trademark Trial and Appeal Board (TTAB), which is an independent body within the USPTO that functions as a court to handle and adjudicate opposition proceedings. In particular, a party seeking to oppose a trademark application during the thirty day opposition period can file the opposition online at the Electronic System for Trademark Trials and Appeals (ESTTA). Once the opposition is filed, the relevant parties, or any observers can follow the proceedings and cases status online at TTABVUE.
Screenshot of the ESTTA page where oppositions can be filed online
Reasons for Filing a Trademark Opposition
The most common reason for filing a trademark opposition is when a third party believes the registration of a trademark application will likely confuse consumers about the source of goods or services with the opposer’s prior use trademark. An opposition can be filed based on common law trademark rights or on a federal trademark registration. However, it is easier to win an opposition proceeding based on likelihood of confusion if the opposer does have a federal trademark registration.
In addition to opposing a trademark based on a likelihood of confusion issue, third parties can
oppose applications based if they believe the trademark is:
Generic for the applied for goods or services;
Descriptive of the applied for goods or services;
Primarily a last name;
Primarily functional for the applied for goods and services (e.g. orange cannot be a trademark for a traffic cone because it is "functional");
Not being used in commerce or has been abandoned;
Geographically descriptive or geographically misdescriptive;
Dilutes the opposer’s “famous” trademark
It is important to keep in mind that in order to oppose a trademark, the opposer needs to be able to show the registration of the trademark would harm them personally. In cases of likelihood of confusion, that is pretty easy to prove. In many other cases, it can be more complex and the opposition case may be thrown out before the TTAB even gets to the merits of the opposition. A person can file an opposition without an attorney, but it may be worthwhile and cost effective to hire an attorney to hire an opposition on your behalf.
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