From McDonald’s iconic golden arches to Coca-Cola’s cursive typography, brands live and die by their inalienable brand assets: memorable names, eye-catching logos and catchy taglines. Those golden arches hint at the scent of french fries from any distance: for McDonald’s, they mean McDonald’s, so if another brand started using a giant golden M as a logo, they’d be right to be concerned.
If another brand’s name or logo, by design or simple accident, comes too close to yours, it can wreak brand havoc. Trademarked assets are protected, and give you the right to prevent others from mimicking your designs. This is where trademark opposition comes in.
Trademark opposition is a specific legal process, and there’s only a short window when you can take advantage of it. So if you’re a brand looking to protect your logo, or you want to ensure you can register your name without any bumps in the road, read on for a complete trademark opposition definition.
What is a Trademark Opposition?
A trademark opposition is a process that allows third parties to contest the registration of a trademark while the registration process is still ongoing. Trademark opposition initiates a proceeding that goes before the U.S. Trademark Trial and Appeal Board.
A notice of opposition can only be filed after the trademark application has been published in the official gazette of the relevant patent and trademark office. Third parties interested in opposing the new trademark application can file a notice of opposition within 30 days of its publication in the official gazette.
If your potential trademark receives opposition, it can significantly lengthen the process while the Trademark Trial and Appeal Board (TTAB) investigates and resolves the notice of opposition. On the other hand, if you issue a trademark opposition because you think a new registration infringes on your own mark, you’ll need to be able to demonstrate the likelihood of confusion.
Who Can File a Trademark Opposition?
Anyone can file a trademark opposition if they can prove that they or their business will be damaged if the new trademark application is approved.
Often, brands file trademark oppositions when new trademark applications are too similar to their trademarked brand identifiers.
Some common reasons for opposing a trademark include;
- Likelihood of confusion with an existing trademark, mainly if brand identifiers are similar in looks, sounds, meaning, and commercial perception.
- Descriptive/generic nature of the trademark.
- Violation of moral or cultural standards.
- Bad faith application by the applicant
How Does the Trademark Opposition Process Work?
The timeline for a trademark opposition is as follows.
Firstly, the board publishes a trademark application in the official gazette after preliminary checks. This publication is open to all third parties who have an objection, and it runs for 30 days, but can be extended to 180 days if requested by a third party.
Within this time, third parties with complaints can file a notice of opposition, which must be backed up by valid reasons like the ones mentioned above.
When the Trademark Trial and Appeal Board receives a trademark opposition, they reach out to the applicant requesting a response to the opposition. Applicants have forty days to respond to an opposition, but this time can be lengthened if the applicant requests more time.
In cases where the applicant does not present an answer to the opposition within the allocated time, the board issues a notice of default. The applicant is then required to respond to the notice of default with a viable reason for their inability to respond to the notice of opposition. After this stage, the board will reject the trademark application if the applicant does not respond.
If the applicant submits a response within the allocated time, the board will schedule a Discovery Conference. This conference is a hearing where both parties present their claims and supporting evidence.
After the discovery hearing, the board convenes and makes its final decision. Any unsatisfied parties can file an appeal within thirty days of receiving a decision from the board.
What Happens After Trademark Opposition?
There are three possible outcomes after a trademark opposition.
- Trademark registration is granted
In this case, the board convenes and decides that the opposing third party has insufficient evidence to back their claims or cannot show sufficient standing to oppose the trademark application. The trademark registration is then granted after the hearing.
- Trademark registration is denied
Following the discovery conference, the board might decide to deny the trademark registration based on the strength of the opposing party’s claims.
- The parties settle or modify the trademark application
In some cases, the two parties agree by settling or modifying the trademark application to prevent any damages.
Wrapping Up
Trademark opposition is a process that allows brands to contest the approval of trademarks that could confuse customers or damage their brands. As long as a brand has a strong claim and sufficient evidence, it can stop a new trademark from being registered.
Even if your brand beats the trademark opposition, it can add months to the process of registration, slowing down your brand-building project.
Before beginning the process of registering a trademark, you should make sure your name, logo and brand tagline are all unique to you. Our comprehensive trademark research service includes a detailed analysis of trademark availability and potential as well as a simple safety score to help you understand the risk of opposition. Secure your brand today.
