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US Trademark Opposition

Updated:2018-4-8 11:42:13    Source:www.tannet-group.comViews:180

US trademark opposition filings increased in 2016, according to a recent report released by the United States Patent and Trademark Office. A trademark opposition is a procedure that occurs infrequently but can have a profound effect on a trademark registration application. Near the end of the registration process for a trademark application, the USPTO publishes the application for the public to view for 30 days. If a member of the public believes that registration of the mark will be harmful to their interests, that member can oppose the registration.

Who can oppose a trademark?
Anyone was a “real” or “legitimate” interest in the proceeding may oppose a trademark. Generally, this means that the opposer must have a direct and personal stake in the outcome, and the belief must be reasonable and reflect a real interest in the issue. Therefore, a party cannot bring an opposition because it thinks the registration would generally be unfair. It must show that it will have a personal effect on the opposer. If the opposer is claiming that it owns the registration for a confusingly similar mark, the ownership of a trademark registration is generally sufficient, as long as the owner can show that in some way his or her trademark might be damaged. 

Reasons for Opposing A Trademark Application
A party can oppose a trademark filing for a variety of reasons, but the most frequent is based on a likelihood of confusion. Aside from the more common likelihood-of-confusion oppositions, there are other reasons a party may bring an opposition, including:

The mark is generic for the Applicant’s goods and/or services;
The mark is merely descriptive of its goods and services;
The mark is “scandalous”;
The mark is “disparaging”;
The mark falsely suggests a connection with the opposer;
The mark is primarily merely a surname (last name);
The mark is functional for its goods and services (i.e. the color neon-yellow cannot be trademarked for safety vests);
The applicant is not using the mark or lacks a bona-fide intent to use the mark in commerce;
The mark has been abandoned;
The mark is geographically descriptive or geographically misdescriptive;
The mark would dilute the opposer’s “famous” mark.

Trademark Opposition Considerations  
When contemplating commencing a trademark opposition, it is best to keep in mind the following:

1.Estimated duration.   
Most trademark opposition cases settle before the trial phase, which means that statistically, the probability that it will go all the way to judgment is unlikely. That being said, a company should be prepared for all contingencies. This means taking into account factors that could either exacerbate or shorten the litigation process.

2. Early case assessment.  
An early case assessment and plan of action is an integral part of a proactive trademark opposition litigation strategy.

3. Accelerated case resolution.   
The U.S. Trademark Trial and Appeal Board has an accelerated case resolution (ACR) program that when used properly, can shorten the duration of a proceeding. 

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