When a trademark application receives preliminary approval from the U.S. Patent and Trademark Office, it is published in the public record in the Official Gazette. During the publication period, other parties have an opportunity to file a ‘Notice of Opposition’ to the trademark application if they believe it should be prevented from registering. The most common ground for opposition is an alleged likelihood of confusion with another trademark that has priority by virtue of earlier use or an earlier application filing date.
If the trademark applicant defends the Notice of Opposition, the first step in the proceeding – which is akin to litigation – is the filing of an Answer.
An answer contains several key elements:
- A response to each allegation in the Notice of Opposition
- Affirmative defenses
- Amplification of statements made in Answer that deny or address the claims in the Notice of Opposition
- Appointment of Counsel (if applicable)
- A certificate of service of the filing to the other party
- Filing with the Board
Below is an Answer filed in an proceeding at the Trademark Trial and Appeal Board (TTAB). The records from the TTAB for the proceeding can be viewed here.
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So, back to the issue of trademark bullying: was this a case where quality legal representation by EMP&A warded off potential bullying? Did Carefirst really think they had a valid case for opposition? Looking at the history of the TTAB proceeding, one could conclude that Carefirst had no intention of answering the interrogatories you sent, did a lot of foot dragging, and finally dropped their opposition. Or were their constructive negotiations behind the scenes with Carefirst encouraging them to quit wasting everyone’s time?