New products and services become available, under new brands and trademarks every day. This inevitably leads to some trademarks being disputed and trademark opposition proceedings being initiated. A trademark opposition proceeding is an administrative proceeding, not unlike a civil lawsuit, in which one party opposes the registration of a trademark during the trademark registration process. In most countries, trademark oppositions may happen after the initial review by the Trademarks Office is complete and a trademark is published in a special online journal/gazette for opposition purposes by 3rd parties. Oppositions are quite rare, on average 2-5% of all trademarks get opposed but only a small handful of oppositions go all the way to decision with the majority of opposition being settled at an early stage. Obviously, if an opposition settles the overall costs are reduced and this should be the goal for both parties, where possible.
Most business owners become involved in a trademark opposition proceeding for one of two reasons:
- Because their trademark application is being opposed by someone with an existing, registered or previously filed trademark;
- Because they, themselves, are opposing someone else’s trademark application because it infringes upon their previously–registered trademark.
Trademark applications are published so that third parties have an opportunity to object to a trademark being registered on some grounds, typically because the third party has a pre-existing trademark that they feel is confusingly similar to the one being registered. There are also other grounds for opposing a trademark, including:
- Lack of distinctive quality;
- Deception and fraud; and
- No intent to use the trademark
Though trademark opposition proceedings vary from jurisdiction to jurisdiction, they generally proceed in a similar fashion to traditional lawsuits, except that they are carried out administratively. Trademark opposition proceedings typically involve the following stages:
- The Filing Stage – where opposition to the trademark is officially filed with the trademark authority and settlement discussions initially take place
- The Discovery Stage – when the parties will exchange documents, take each other’s depositions, and ask each other questions.
- The Testimony Stage – during which each of the parties has an opportunity to put on their case, just as they would in court, except that it is done in the lawyers’ offices.
- The Briefing Stage – where each party takes the facts that they elicited during the testimony stage, apply them to the law, and explain to the trademark authority why they should prevail in their case.
Most trademark oppositions, however, are resolved very early on––long before the discovery process really gets going.
How Does Trademark Opposition Work?
Let’s say that you own a mid-sized business that makes sports drinks, marketed to sports-minded young people. Let’s also assume that your business’s registered trademark is nationally known. You recognize the value of your trademark, so you vigorously seek to protect it by spending a lot of money on promoting your brand.
Recently, however, you learned of a small regional business in another state that makes sports drinks and sells them under a trademark that you believe is confusingly similar to yours. You also learn that the smaller business’s trademark is about to be registered because the trademark office failed to notice the similarity between the small business’s trademark and your business’s trademark.
You are now convinced that consumers will mistake their inferior product for yours and that this will tarnish your brand and your business’s reputation. You also understand that it is much easier to oppose a trademark if you do so before it is officially registered.
The Filing Stage
In response to the smaller business’s trademark application, you contact an experienced trademark professional (attorney or agent) like Trademark Angel, who file a notice of opposition or statement of opposition with the national trademark office on your behalf.
The smaller business will then be allowed time to file a response. If they do not file a response within the allotted time frame, this could result in their trademark being abandoned.
However, once a response has been filed, you and the other party will meet to discuss the case and the possibility of settling the dispute. The overwhelming majority of trademark opposition proceedings are settled very early on in this initial stage.
The Discovery Stage
If you and the other party do not reach a settlement early on, the case will move on to the discovery stage, where each of you will have an opportunity to request pertinent information and documentation from the other.
You and the other party in the case may also be deposed. In other words, you may be questioned about aspects of the dispute, such as when and how your businesses began to use the trademarks in association with their particular products.
During discovery, your attorney may also ask expert witnesses to provide written opinions in support of your case. And, as new facts are uncovered, you may enter into new settlement discussions with the other party to attempt to resolve the case without going any further.
The Testimony & Briefing Stages
If you have not reached a settlement by the conclusion of the discovery stage, the case will proceed to the testimony stage and then the briefing stage. These stages together are similar to the trial stage in the traditional litigation process. However, this won’t require you to spend hours and hours in a courtroom listening to testimony.
This is because trademark opposition cases don’t involve a jury, courtroom, or trial. Instead, the parties simply submit their evidence, testimony, expert witness opinions, and legal briefs to the trademark authority. Then, based on these things, the trademark authority will reach a final decision on the matter.
How a Professional Can Help You
Trademark opposition cases are different than traditional lawsuits. Even if you have a registered trademark, successfully opposing the registration of an infringing trademark and protecting your brand will often require the assistance of an experienced trademark attorney or trademark agent who knows how to effectively present your case.
An experienced trademark attorney can also assist you with registering your trademark, at home and abroad. If you need to oppose a trademark’s registration, register a trademark, or if