Opposing a Trademark: Everything You Need to Know
When opposing a trademark, this means there is a concern that a certain trademark is infringing upon another trademark.3 min read
When opposing a trademark, this means there is a concern that a certain trademark is infringing upon another trademark. Confusion can arise from two trademarks being similar to each other. It can also arise when the goods or services associated with a particular trademark are similar to the goods and services of another trademark that is only similar in appearance.
When can a Person Oppose a Trademark?
There are only two time periods in which you can file a claim to oppose a trademark:
- After publication
- After registration
How Long Does a Person Have to Oppose a Trademark?
If you are opposing a trademark after publication, this means it has been published in the Trade Mark Journal within the last 30 days. In fact, once it's published in this journal, you only have 30 days to oppose it and to keep it from being registered. This is why it's so important that you stay up to date on the latest trademarks being registered.
In some instances, a 30-day extension may be granted by the U.S. Patent and Trademark Office, thus allowing you extra time to oppose a trademark. However, under the rules outlined in the Madrid Protocol, if you are wanting to oppose a trademark and keep it from being registered, you cannot have an extension granted that exceeds 180 days.
If you want an extension so you can oppose a trademark, you have two options to choose from. The first option involves asking for a 30-day extension, followed by a 60-day extension and then another 60 days. The second option involves asking for a 90-day extension, followed then by a 60-day extension. When you are asking for these extensions, you must provide a good reason.
The opposing process can be completed either electronically or by paper, but this only applies when opposing a trademark according to Section 1 or Section 44 applications. If you want to oppose using the Section 66 application, it has to be done electronically. It's also noteworthy to point out that you can oppose an application in one of two ways:
- Third party observation
- Raise a formal legal objection
If you take the route of doing a third-party observation, this means that a person will alert the Intellectual Property Office (IPO) that the application for a trademark has been received in error. You need to make sure that your notification to the IPO specifically states why you think an error has occurred. The IPO will make the final decision, and it is not legally bound to act on your behalf.
Raising a Formal Legal Objection
If you choose to take the route of doing a formal legal objection, this means you are opposing the trademark on one or more of the following grounds:
- The trademark is too generic.
- The trademark isn't distinctive enough.
- The trademark is too descriptive.
It does not matter who you are; you can oppose a trademark as long as it's made on absolute grounds. On the other hand, when you are opposing on relative grounds, this can only take place if you are the proprietor of an earlier trademark.
If you don't want to oppose a trademark legally, but you do have an issue with it, you can consider invalidation, which means you are seeking to prove the trademark is similar to yours. Your trademark can be registered or unregistered. If you wish to invalidate the other trademark is approved, it will not be registered.
Another way to make it clear that you have an issue with a trademark is through revocation; this means you believe the trademark has become too generic over time. Or perhaps it has become misleading. Many times, revocation of a trademark will take place when the trademark is several years old, but it has not been used.
You can also take the route of doing an intervention. This is much different than an opposition, but it allows a person to pursue what they are entitled to under their intellectual property rights. It's also good to know that as a plaintiff, you will be required to meet a burden of proof and this will come through the preponderance of evidence.
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