What is a Trademark Opposition Proceeding?

The process to register a trademark is not exactly simple. A trademark is any word, phrase, symbol, design, or combination that identifies your goods or services. Your trademarks – your names, your logos, your slogans – are what make you different from everyone else on the market.

Trademarks can be registered with the United States Patent and Trademark Office. Trademarks do not have to be registered to be used, like patents, but registering them gives you the sole legal right to use them. That means that if someone else starts using your product name, you can legally make them stop. Trademarks remain registered to you for as long as you are actively using them.

The trademark registration process with the USPTO is fairly long and involved, although it does not continually require much from the applicant. All trademark applicants should work with an experienced Intellectual Property attorney to ensure that their application is right the first time – and to be prepared if any proceedings are leveled against them.

When you have submitted your trademark application, an examiner at the USPTO will investigate it. They are looking to see if there are any trademarks currently registered that are either the same or notably similar to yours. It is not uncommon for a trademark to have been registered across the country that you never heard about but is identical to yours.

Once the USPTO examiner has finished their examination, they will open it up to the public. This is called being “published for opposition.” Basically, the USPTO publishes your trademark for anyone to see. If anyone thinks that your trademark is infringing on their own trademark, they have thirty days to alert the USPTO before the trademark is officially registered to you.

It is more rare than not for the public to have a conflicting trademark that both your attorney and the USPTO examiner did not already find. However, if someone does oppose the registration of your trademark, you enter into a Trademark Opposition Proceeding. As soon as this happens, you need to alert your attorney.

A Trademark Opposition Proceeding is basically a lawsuit that is carried out within the USPTO. There cannot be criminal charges leveled during it – no one will go to jail over a trademark registration ruling by the USPTO – but there are financial and business consequences over the ultimate decision.

Unlike a federal lawsuit, there is no court trial presenting witnesses and evidence. Instead, that information is collected during set time periods where both sides will have the opportunity to submit evidence of their use of the trademark. They will also have the ability to submit a rebuttal to the other side’s evidence, and eventually may be able to appeal the ruling. Most Trademark Opposition Proceedings are settled in the first six months of the case before a decision is made. For those who see a Trademark Opposition Proceeding all the way through, it can take up to four years.

Trademark Opposition Proceedings are not something to be taken lightly. If you are in the middle of one, make sure you have a dependable Intellectual Property attorney. For help with every step of the trademark process, contact McDermott IP Law today! We protect client innovation!

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