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An opposition proceeding is used when a trademark is under attack. If another brand applies to use a similar mark, the company can file an opposition.5 min read
What Is an Opposition Proceeding?
An opposition procedure is a tool that companies can use when their trademark, brand, logo, or patent, typically utility patents, is under attack. If another brand or competitor applies to use a similar mark, the company can file an opposition to deny the application.
When to File an Opposition Procedure
A company might file an opposition because the company in question is in the same industry and the company could lose business because of confusion. However, it can also file a complaint if the mark is used in a different industry – as long as the company can prove that it would lose money because of the competing mark.
The opposition procedure starts after the trademark application has been reviewed. It lasts for 30 days and provides a window for anyone to oppose the approval of a trademark.
Anyone with "legitimate" interest in the trademark can oppose it. This means the person or company must have a direct stake in the outcome. A company can't apply for opposition just because it doesn't like the proposed trademark or think that the design is unfair.
Why is the Trademark Opposition Procedure Important?
Most countries have some kind of trademark opposition procedure. This prevents confusion by ensuring that companies aren't using similar logos, which can hurt businesses and customers alike.
While opposing a trademark may seem like a lengthy process, it's rare for an application to go to court. According to some estimates, almost 95 percent of complaints are settled before a trial begins. Considering that a trial can take more than a year, it can be in both parties' best interest to save the time and money and settle.
Reasons to Consider Not Using Trademark Opposition Procedure
While you don't need to have a registered trademark to file a complaint, it can significantly help your cause. If a company already has multiple trademarks in different countries, it will be harder to prove that your trademark should get priority. The bigger the company's scope, the harder it will be for you to fight them.
The World Intellectual Property Organization also lists multiple reasons why trademark registration itself is important:
It notifies the public that the trademark has an owner.
It provides proof of legal ownership of the mark and the exclusive right to use it.
It allows the owner to take legal action against people or companies that use the mark.
The American trademark approval can be used to get international trademark approval.
It makes it easy to file for U.S. Customs registration to prevent the import of goods that might infringe on the mark.
Apple is a popular technology example. By trademarking its signature logo, it can take legal action in the United States, apply for ownership when it expands overseas, and prevent bootleg merchandise from entering the country. This protects the brand and its reputation.
Reasons to Consider Using Trademark Opposition Procedure
There is good news for small businesses that worry they won't be able to fight major corporations that want to use certain marks. Trademark battles aren't very complex, which means it's possible to appeal even if you have a limited budget. To decide, compare the cost of fighting the application with the cost to your business if it is approved.
What do you pay to advertise your trademark each year?
How long have you used this trademark in your business?
What would it cost to notify your customers about the change?
How many non-customers know your name?
What would you have to pay for a new website, signage and other business items?
What will it cost to file a new trademark application?
When you add up these six factors, it might actually be cheaper to fight the larger business that is trying to use a similar mark as its own.
Deadline for Trademark Opposition Procedure
While the applicant has 30 days to oppose a trademark application, it's possible to file an extension request. The party must file for that extension within the first 30 days of the procedure and cannot be filed beyond 180 days from the original period. This time is typically used to gather materials around the case to prove why the application should be denied.
Once the notice has been filed, the applicant has 40 days to answer. Typically, the opposition is reviewed by three judges. They read over the materials and then submit a written decision. The majority's opinion is followed.
Examples of Trademark Opposition Procedure
In one case of trademark opposition in 2016, personality Kylie Jenner applied for a trademark on KYLIE as a way to advertise her brand in the entertainment and cosmetics industries. Singer-songwriter-actress Kylie Minogue filed a notice of opposition against Jenner because she is also in the entertainment industry. Minogue's representatives say that Jenner's trademark would cause confusion and damage her brand.
Steps to File a Trademark Opposition Form
To submit a Trademark Opposition Form, the process is:
Anyone who opposes the trademark files a "Notice of Opposition," with the court. This complaint explains the reasons why the trademark is being opposed.
The Trademark Trial Appeal Board (TTAB) will issue an order for both parties to review the claim.
The company that applied for the trademark will file a denial of the claims and provide a defense for its application. (It can also file a counterclaim to cancel the opponent's trademark registrations.)
The TTAB creates a trial schedule to review the trademarks, which is similar to a civil action in court. This will determine which of the applications are approved.
Once an opposition form has been filed out, the burden falls on the applicant to file an answer to the opposition. This answer will either admit or deny the trademark violation to see whether the full complaint should be brought to court.
The typical cost for filing a trademark opposition form is $300 per application. However, this is just the first part. Once attorney's fees, witness fees, deposition costs, and expert surveys are factored in, the final cost of a full trademark litigation can extend up to $325,000.
Note: this section reviews the American process for filing a trademark complaint. If you are filing an international complaint, you may need additional resources. For example, guides are available for starting the trademark opposition procedure in China, Taiwan, and Hong Kong.
If you think another company is using a mark similar to yours, and that company in the trademark process, you can post your legal need here to get free custom quotes from the top 5% of lawyers on UpCounsel about filing an opposition procedure. If you can prove a loss of revenue, then there's a good chance that the application will be denied.