If you are reading this article, you may have received notice that your trademark or trademark application is being opposed. This legal challenge is called a trademark opposition.
A trademark opposition is a serious and complex legal process that challenges your right to register a trademark with the Canadian Intellectual Property Office, US Patent and Trademark Office, United Kingdom Intellectual Property Office, etc (depending on where you filed). Thousands of trademark oppositions are filed every year and they can be extraordinarily expensive and time-consuming to defend.
The good news, however, is that the vast majority of trademark oppositions are settled early on in the opposition proceeding. So, just because someone files an opposition against your trademark or trademark application, doesn’t mean that you won’t be able to work things out and keep or obtain a registration for your trademark.
Why is My Trademark Being Opposed?
The trademark registration process includes a period of time in which anybody in the entire world can challenge your trademark application. This is done so that third parties have an opportunity to complain to the trademark office that the trademark should not be registered for some reason. In addition, a third party may also file a petition to cancel your trademark anytime after it has been registered (but this a topic for another article).
A trademark opposition can allege one or more reasons for challenging a trademark or application––most often because the opposer owns prior rights in a trademark that is identical or confusingly similar to the one being registered. But a trademark application may be opposed for many other reasons as well.
What Can I Do If My Trademark is being Opposed?
Regardless of when or why there are several very important things that you must do if your trademark has been opposed:
1. Seek the Assistance of an Experienced Trademark Attorney
Hire an attorney immediately, even if it’s only for a consultation. If you want to save your trademark or trademark application, you will need professional help. Never do it alone and never approach an opposer directly.
2. Respond to the Notice of Opposition Before the Deadline
Opposition proceedings have deadlines. If you miss a deadline, the opposer may win automatically.
3. Analyze the Opposition to See if it has Merit
Analyze the opposition to determine how valid the claim actually is. Are the marks very similar? Was the opposer using their mark before yours? Are the classes the same? Are the descriptions the same? Are there any other similar trademarks?
Compare the trademark description in your application with the opposer’s description in their registration. A frequently raised issue in trademark mark oppositions is that the descriptions overlap and, in this case, the one who used the trademark first in connection with the goods and services described will usually prevail.
4. Research the Opposer
Is the opposer a major corporation? Is it a small business? Is it an individual? Do they frequently oppose trademarks? Are they represented by an attorney? Understanding who your opposer is will help you determine what chance you have of overcoming the opposition and whether a settlement is even possible.
5. Determine if a Settlement is Possible.
Settling a trademark opposition is usually in the best interest of both parties involved. This is because trademark opposition proceedings can go on for years and cost both parties a lot of money (with the US being the most expensive jurisdiction).
Compare the trademark description in your application with the opposer’s description in their registration. See if there is a common ground or a way you can coexist and still protect your brand.
6. Assess Whether the Mark is Worth Defending
If a settlement is not possible, the trademark may or may not be worth defending. But you first need to analyze the situation before you can decide what’s best for your business.
Check your budget to make sure you have the funds to fight the opposition. If you have no budget to go all the way, it may not be worth trying to defend the mark and you may want to consider the possibility of rebranding. Try to get an estimate of costs (keep in mind that many attorneys can be very vague, so be sure you understand what each step will cost you).
7. Choose a Course of Action
Continue to work with an experienced trademark professional to choose and implement a course of action and to avoid making critical mistakes, such as trying to contact the opposer directly to explain your use of the mark, or for any other reason.
An experienced trademark attorney can also perform the research necessary to assess the merits of the opposition. He or she will then be able to properly advise you on a course of action that will be in your best interest and guide you throughout the entire process.
For more information or for help defending an opposition filed against your trademark or trademark application, call Trademark Angel.