All trademark applications go for a 30-day period of opposition. This means that anyone (another person or company) can oppose the registration of an application. The trademark opposition process is meant to give third parties a chance to oppose an application that the United States Government would have otherwise registered. Any person who believes that he/she may be damaged may file an opposition against a pending trademark application. While the term “any person” is construed broadly for purposes of filing a Notice of Opposition, the Trademark Trial and Appeal Board has nonetheless held that the potential opposer must have a real interest or direct and personal stake in the outcome. In addition, the potential opposer must have a reasonable belief that he will be damaged if the registration issue. The grounds for filing a notice of opposition against a pending trademark application include:
- a likelihood of confusion with the opposer’s trademark;
- descriptiveness or genericness of the pending trademark;
- geographic descriptiveness of the pending trademark;
- dilution of the opposer’s trademark; and
- fraud in the procurement of the trademark for which registration is sought.
A trademark opposition proceeding is commenced by timely filing a Notice of Opposition with the United States Patent and Trademark Office. The complaint normally sets out the basic facts giving rise to the claim. For example, for a complaint alleging a likelihood of confusion, would generally allege all of the legal elements for proving likelihood of confusion, including that the parties’ marks are similar in sight, sound, and meaning and that the parties’ respective goods and/or trade channels are similar such that confusion is likely.
If you receive a Notice of Opposition you must respond. If you do not, a default judgment will be entered against you and your application will be cancelled by the U.S. Patent and Trademark Office. A response can be in the form of an answer or simple negotiation (depending on the case and circumstance). Willi Law Firm has successfully defended and negotiated settlements of trademark oppositions. Because each case is unique, our attorneys will gladly review your case and provide a quote for engaging in settlement discussions or answering the opposition that has been filed against you.
Representative Opposition Proceedings
7-Eleven, Inc. v. Getagadget, Inc. Willi Law Firm represented Austin-based Getagadget, Inc. in two trademark opposition proceedings in the United States Patent and Trademark Office before the Trademark Trial and Appeal Board (TTAB). Getagadget sells BIG BITE™ bottle openers and beach toys to mass merchandisers (such as Wal-Mart, Walgreens, and CVS pharmacy), convenience stores, vacation resort gift shops, surf shops, souvenir stores, restaurants, bars, nightclubs, promotional companies, marinas, theme parks, water parks, yacht clubs, and golf clubs in the United States and foreign countries. 7-Eleven sells its BIG BITE® hot dogs in 7-Eleven convenience stores. 7-Eleven alleged that consumers would be confused, mistaken, or deceived into believing that Getagadget’s BIG BITE™ openers and beach toys, which were not sold in 7-Eleven convenience stores, were somehow related to or originated from 7-Eleven. Alternatively, 7-Eleven alleged that Getagadget’s use of the BIG BITE™ mark for bottle openers and beach toys would somehow dilute 7-Eleven’s trademark for hot dogs. The cases settled to the mutual satisfaction of the parties, and the trademark opposition proceedings were dismissed.