US Trademark Opposition Period: Everything You Need to Know
The U.S. trademark opposition period gives interested parties the opportunity to challenge a trademark before it is registered.3 min read
The U.S. trademark opposition period gives interested parties the opportunity to challenge a trademark before it is registered.
Basics of Trademarks
If you identify your business's goods or services using a logo, phrase, or word, this is known as a trademark.
As long as you continue to use your trademark for the purposes of your business, you will retain rights to your mark.
Trademarks do not have to be registered, as you will receive some protections simply by using your mark. If you do choose to register your trademark federally, however, you will have more protection and advantages than unregistered trademarks have, including:
- The ability to sue for trademark infringement at the federal level.
- Tripling your potential damages in a trademark infringement case.
- Stopping others from using your trademark without your permission.
Every state has its own process for registering trademarks. Generally, state-level trademark registration is easier and more affordable than registering your trademark federally. In addition, there is no U.S. trademark opposition period for state trademarks, as there is with federal trademarks.
The drawback of registering your trademark at the state level is that it restricts your rights to the state where you register your trademark. Federal trademark protections extend across the entire country. If you are running a small company that only transacts business in one state, however, a state trademark registration can be a good choice.
Federal Trademark Registration
If you want to register your trademark federally, you can do so by applying with the United States Patent and Trademark Office (USPTO). When submitting your application, you will need to include examples of how you are using or intend to use your trademark and a drawing of your mark. The drawing should comply with USPTO rules. One of the most important steps in the trademark-registering process is having your application published in the Trademark Official Gazette.
The Gazette, published weekly, displays trademarks awaiting final approval. In addition to the marks themselves, it includes information about the applicants.
Once the Gazette publishes your trademark application, an opposition period of 30 days begins. During this period, third parties have the right to oppose your trademark by filing a notice. Opposition to your trademark can only occur during this period. After the 30-day period ends, opposition is no longer possible. Any third party can oppose your trademark as long as it has the grounds, as well as standing.
When a third party files a notice opposing your trademark during the opposition period, you will receive a copy of this notice. The Trademark Trial and Appeal Board will also send you a notice that includes a deadline by which you must respond to the opposition. The Trial and Appeal Board handles a variety of USPTO proceedings, including trademark application opposition. The Board must act impartially, meaning it cannot give you guidance on how you should respond after your trademark has been opposed.
Procedure for Opposition
The procedures for a trademark opposition are similar to those of a civil trial.
Several issues might influence how long the opposition proceeding takes, including:
- The grounds of the opposition.
- How the parties conduct themselves.
- Whether a settlement is possible.
Whether or not you have hired an attorney, the Board has procedures it must follow.
If you're interested in opposing a trademark, your first step should be to file a Notice of Opposition. You must file this notice during the opposition period. You can also request an extension so you have more time to file your notice.
The Pleadings Stage includes three important steps:
- The filing of the Notice of Opposition.
- The response of the trademark applicant, including potential counterclaims.
- Answers to any counterclaims filed.
The Notice of Opposition will typically include information identifying the person opposing the trademark, a description of their standing, and their grounds for opposition. Most of these notices contain numbered paragraphs, which is the format that the USPTO recommends. When the applicant responds to the Notice of Opposition, he or she should either deny the allegations or admit their truth. The applicant will also have the opportunity to make an affirmative defense.
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