Is it even possible for you to file a trademark opposition?
Potential clients frequently ask about how they can oppose a trademark application. Before diving into details, timing is the critical initial question that every potential opposer should first consider. A trademark opposition can only be filed if and when a trademark is published for opposition, and an application reaches the publication stage only after it has been approved. Obviously, not all trademark applications will be approved for publication.
Need to file a trademark opposition? Call US patent and trademark attorney Vic Lin at (949) 223-9623 or email vlin@icaplaw.com to explore how we can help you defeat another party’s trademark application.
Is it necessary for you to oppose a trademark application?
Frequently, a trademark application may encounter rejections, proposed modifications or requests for more information from the USPTO. Such communications from the USPTO trademark examining attorney are issued in the form of a letter called an Office Action. Unless your application is based on an international Madrid filing, a typical Office Action has a 3-month deadline for a response. The deadline can be extended for an additional three months.
A trademark application may be abandoned for a variety of reasons. For example, failure to submit a timely response or extension request will result in abandonment. An applicant might respond to an Office Action, but fail to overcome the refusals. In those situations, a final Office Action will be issued which can severely limit the applicant’s chance of approval.
How to track the status of a trademark application
USPTO trademark applications are publicly viewable. You can check on the status of any USPTO trademark application using the TSDR system.
Look to see if there is a Publication Date. If so, you only have 30 days from that date to file a notice of opposition or request for extension of time to oppose.
How to oppose a trademark application: What are your grounds for opposing registration of a mark?
Recognize that opposing a trademark application will be successful only if you have valid grounds. Some of the more common reasons may include:
- earlier use of your trademark which is similar to the pending mark;
- the pending application covers a merely descriptive mark;
Depending upon the specific circumstances of your situation, there may be other available grounds for opposing a trademark application. An experienced trademark attorney with TTAB opposition and cancellation experience may be able to provide grounds after analyzing your case.
Should you file your own trademark application?
It might be wise to consider filing your trademark application to secure an earlier filing date. You may still need to resolve the obstacle of the other party’s trademark application blocking yours, but at least you prevent anyone else from sneaking in front of the line.
How can you register your trademark without having to file an opposition?
As discussed above, it is possible that the trademark you are seeking to oppose may get rejected. Here’s the issue. How do you avoid or overcome the same refusal if your mark is similar to the rejected trademark? Can your trademark application be specially crafted to reduce the risk of a rejection?
Need to oppose a trademark application?
Want to explore working with us? Tell us about the potential trademark application to oppose by using this form.
