The following is an edited transcript of Chapter 18 of my book video Building a Bold Brand: What is a Trademark Opposition?
A trademark Opposition is a challenge by another party to a USPTO application and occurs when a company or an individual believes that its trademark rights would be harmed by the registration of a trademark application pending at the USPTO and files to block it, the most common basis being a likelihood of confusion between the Opposer’s trademark and the pending application. An Opposition may be filed when a pending trademark application received preliminary approval from the USPTO and is published in the USPTO’s official public records (Official Gazette). In an Opposition proceeding based on an alleged likelihood of confusion, the Opposer must establish that:
- it has rights to its trademark that predate those of the challenged Applicant, and
- the Opposer’s trademark and the Applicant’s trademark are likely to be confused. Generally, the two main factors in determining whether two trademarks are likely to be confused are:
- the similarity of the two names in sound, appearance, and meaning, and
- the similarity of the relatedness of the goods and services used in connection with the trademarks of the Applicant and the Opposer.
A party receiving a Notice of Opposition to its trademark application generally has 40 days to file an Answer. To best prepare an Answer and plan a strong defense, you should contact an attorney immediately if you receive a Notice of Opposition.
An Opposition is a trial conducted mostly via paper and online communications before a panel of three judges of the Trademark Trial and Appeal Board, an administrative panel that is part of the USPTO. Many Opposition cases are settled among the parties or are otherwise resolved, but in those that are not, the parties eventually submit final Briefs to the judges, who then make a ruling.
Opposition proceedings are governed by the Trademark Trial and Appeal Board Manual of Procedure (and can be quite extensive in detail due to the nature of the legal correspondence and evidence required. The entire process can take two years or even longer.
For more, visit: https://www.erikpelton.com/what-is-the-ttab/
