Free consultation on counter statements for trademark opposition. available under the jurisdiction of the Trademark Trial and Appeal Board (TTAB) are akin to real, bona fide lawsuits filed in federal court. Fundamentally, the objective of the conference is to facilitate an open discussion about the “nature and basis of the involved claims and defenses, the possibility of settlement of the case or modification of the pleadings, and plans for disclosures and discovery…” TTAB 408.01(a). can your trademark be considered to have more than one meaning such that it is not merely descriptive of your applied for goods and services? du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973) case, the total commercial impression of the trademark would lead to consumer confusion. The briefs contain a discussion of the facts of the case, the relevant statutory and case law, affirmative arguments and a rebuttal of the party’s adversary’s arguments. The purpose of publishing the mark to the Official Gazette, which occurs every two weeks, is to provide a 30 day trademark opposition period where third-parties can review published trademarks and if they have a real and bona fide interest in the matter, can oppose the registration of the trademark. An answer to a trademark opposition may include affirmative defenses.Examples of affirmative defenses are Opposer’s unclean hands or fraud in bringing the opposition. 9 November … Read the Complaint very carefully and make an honest assessment, with the help of a trademark litigation attorney, of the strength of the complaint and the plaintiff’s likelihood of prevailing. It is up to the TTAB to set the relevant dates for each part of the proceeding but typically, from the date of the filing of the Notice of Opposition, the defendant (yes, you are now a defendant in litigation!) # Counter Statement: Rule 44of The Trademark Rules, 2017, states that after the filing of the notice of opposition, the Applicant for the registration of subject mark, can file a counter statement, in Form TM-O, within 2 months (not extendable) of the receipt of the notice of opposition. The Notice of Opposition must contain (1) a short and plain statement of the reason why opposer believes it would be damaged by the registration of the opposed mark (i.e., opposer’s standing to maintain the proceeding); and (2) the grounds for the opposition. Merely not wanting the trademark to register is not a good enough reason – the Opposer must somehow personally be affected by the registration of the mark, which very often takes the form of a Likelihood of Confusion claim. If the Opposer cannot establish standing, the action will be dismissed before any of the substantive arguments can be raised. As the applicant of Trademark, one is expected to respond to these objections in the prescribed format. Standing generally requires that the Opposer have a real interest in the outcome of the proceeding and that the allegations of damages have a reasonable basis in fact. Each paragraph in the complaint must be addressed separately and will typically entail either denying or admitting (or claiming a lack of sufficient knowledge) to the facts contained in each respective paragraph of the complaint. Remember, one of the most common grounds for a Trademark Opposition is the claim that the newly published trademark would create a likelihood of consumer confusion with the Opposer’s existing trademark (under Section 2 (d) of the Trademark Act). It’s important that a professional response be drafted as a reply to the objection raised by a Trademark Examiner. After around 3-4 months, the applicant will either receive an office action outlining certain defects within the trademark application and how it may be cured or, if the trademark does not have any issues, the examining attorney will publish the trademark to the Official Gazette for “Opposition”. The Opposition Division of the EUIPO uses the five languages of the Office (English, French, German, Italian and Spanish). If the Opposer successfully demonstrates that he has standing and is in fact a legitimate Opposer, he will need to move on to the more tenuous part of the case, which is proving, the various elements of the charge. Speak with a Trademark Opposition Attorney to both discuss whether or not responding to a trademark opposition is worth pursuing and the best legal strategy to ensure that it is a success. has 40 days to file a formal answer with the TTAB. Step #2:  Analyze the Opposer’s claims. So, now that we know who may file the opposition, on what grounds can the trademark opposition be filed? Objection to Trademark application can be raised by the Registrar. Practitioners should refer to it often, as it provides a solid foundation to ensuring that the case stays on track. Principally, the testimony period allows for alternating periods in which each respective side can present the evidence that they have gathered. The USPTO is concerned with balancing the competing interests of protecting the trademark holder from unnecessary harassment while still providing a legitimately concerned party with the opportunity to oppose the trademark. Such a registration is raised by the trademarks examiner. This default judgment is very serious indeed and is binding against future trademark applications. In conjunction with the Answer, a list of  possible affirmative defenses and potential counterclaims should also be considered. In order to oppose a trademark, one must file a Notice of Opposition with the TTAB. If a person objects to the registration of a trademark that has been applied for, they can start an opposition as long as it properly raises at least one ground of opposition set out in sufficient detail to enable the other party (the applicant) to reply to it. Trademark is a unique mark, symbol or label that distinguishes your product from those of your competitors helping in its easy identification. Clearly, “Damaged” is a word that is vague and subject to interpretation – this should not be a difficult threshold to cross. James Hastings is an attorney with the U.S. If the complaint seems weak and the case winnable, it might very well make sense to push forward to proceed with a response. The Manual sets forth the various statutes, rules, and case precedent applicable to trademark oppositions. The reply either can be accepted by the registrar or can be rejected and if the reply is rejected, the registrar will fix the hearing where the applicant has to be present for his trademark hearing. First, the Opposer files its brief, then the trademark Applicant files its brief, and then the Opposer is presented with the opportunity to file a rebuttal brief. Abe is committed to his client's success. Alternatively, the Opposer may mount a likelihood of confusion argument and will be required to demonstrate how under the 13-part test outlined in the In re E.I. The Applicant, contrary to the required trademark registration provisions, never had a bona fide intention to actually use the mark in commerce when the trademark application was submitted. You may file a petition to cancel, after the trademark registers. The TTAB’s primary purpose is to decide whether or not a given trademark deserves trademark registration in the United States Patent and Trademark Office (USPTO). Trademark Application, Trademark Opposition of ICAR Mark Dismissed, Recent TTAB Cases - No Likelihood of Confusion, Follow the Rules in Trademark Opposition Proceedings, The impact of COVID-19 on TTAB activities, U.S. trademark opposition statistics during COVID-19, COVID-19 impact on TTAB filing statistics. What is a notice of opposition? Do Nothing.Let your trademark protection lapse and likely lose any legal protection for your brand. If the Opposer is claiming that your trademark is merely descriptive and should be refused registration, here are some factors to consider: c.  Lack of bona fide intent. Consider any possible counterclaims. It takes about three (3) months from the close of the opposition period (including extensions) until a registration issues if the case is not an Intent to Use case. TTAB Issues a Decision: Typically, within six months of the evidence being submitted and the trial’s completion, the TTAB will issue a decision and rule in favor of one of the parties. The failure to comply with the case management dates could irreversibly jeopardize a party’s rights. Even for counter statements, the fee incurred shall be with respect to each class to which the counter is being filed. The bar to be a qualified party to file the Trademark opposition is admittedly fairly low: “15 U.S.C. © ​​2020 Cohn Legal, PLLC. Such defenses include that the Applicant should be entitled to registration subject to certain restrictions to its identification of goods or services. Oral Arguments: Oral arguments are not necessarily part of every Trademark Opposition proceeding however both sides reserve the right to request oral arguments, which can provide a more compelling medium to support the arguments made in trial briefs. COVID-19 Global Trademark Opposition and Cancellation Updates. Of course, there are certain instances under which the TTAB will grant an extension of time to answer if the defendant can show good cause. The early detection of potentially conflicting trademarks is an essential part of any trademark protection strategy, but it is a particular necessity if you are to meet the deadlines associated with submitting objections (known as ‘oppositions’) to an attempted registration by a third party. To consult with one of our TTAB attorneys about your case, contact: James Hastings is a member of the U.S. Using a trade mark attorney, you can be sure that your opposition will be made in time and in the correct manner and avoid unnecessary costs. Trademark Trial and Appeal Board practice group of Collen, a leading U.S. intellectual property law firm. Pleadings are fairly straightforward with the Opposer making an initial claim as to why the mark should be denied followed by the applicant’s response to the motion. An experienced professional can significantly improve chances of successful trademark registration by filing a professional response, addressing all the concers cited in the Trademark Examination report. The Answer is not the place to respond to the merits of the Notice of Opposition. Substantive Arguments: Making the Trademark Opposition Case. If the Opposer is claiming that you did not have a bona fide intent to use your mark in commerce at the time of filing, verify that: Step #3.  Review the U.S. 15 U.S.C. Depending on the facts of the case and relative strengths of the parties’ positions, doing so could provide needed leverage at the discovery conference and later settlement discussions. Once the Notice of Opposition has been served upon the Defendant, the TTAB will issue an Order setting forth the relevant dates for each successive phase of the proceeding. More: Reply to Trademark Objection. To establish a prima facie case of abandonment, the complaining party must allege at least three years of consecutive non-use of the mark with an intention not to resume use. Hire An Attorney.You can hire an attorney to either represent you in the proceeding or consult you on how to represent yourself (an affordable … An Opposer may raise any available statutory ground for opposition that negates the defendant’s right to registration, including likelihood of confusion, mere descriptiveness, or that the Applicant lacked a bona fide intention to use the mark at the time of fling. The application shall contain: the name of the aggrieved party, Usually, the registrar takes around 3-5 months to respond to the reply filed by the applicant in respect of the examination report. The party that files a notice of opposition is called the Opposer. It’s important you are aware of the cost implications when you file an opposition against a trade mark. If your opposition is only based on … All Rights Reserved. If you want to oppose the registration of a trade mark then you must file a TM7 ‘Notice of opposition and statement of ground’. Trademark Objection - An Overview. are all of the goods and services in the Opposer’s registration being currently used in commerce? 2. Possible grounds for oppositi… It needs to be submitted to the same registration office where the applicant has applied for the trademark. The plaintiff (Opposer) submits all evidence through a 30 day period and the Respondent has 30 days to submit its own evidence. does your trademark contain a logo design or other words that are not descriptive of your goods or services? A trademark opposition is raised by any person who has an issue with your Trademark after it has been advertised in the Trademarks Journal This brief summary explains the procedures for opposing trade mark applications in the EU and for defending an opposition. If an opposing party has legal representation from a trademark attorney and an invested interest in the outcome of the opposition, there is little chance that an applicant will be able to fight the opposition on anything but the merits: the owner of the pending mark must defend his or her mark based on the grounds for the opposition and come up with a response … The counter statement shall typically comprise the following: If you are the Applicant, it is important to understand the basis for the Opposers’ claims. Here, the Opposer will argue that the proposed trademark is excessively similar to his trademark and the registration of the trademark will adversely affect his own stake in the mark. 1051) mean that trademark litigation is quite simply, very complicated. A trademark is a logo, symbol, tagline, or a combination of these that represents a brand’s identity. Should the plaintiff’s standing be called into question? Step #5. Trademark Opposition reply format. It is first sent to the Registry for review and if all the formalities are met, the Registry will then serve the notice on the other party.A … The trial phase of the proceeding is where both sides will make their respective cases in full substantive strength. does your trademark describe an ingredient, function, or feature of your goods? Receipt of a notice. Can you find any holes in the complaint (the registration of the trademark wouldn’t affect him one way or another)? The party that filed the application that is being opposed is known as the Applicant. There are motions, discovery, and trial and as such, a trademark opposition proceeding should be taken very seriously and with the understanding that they can be time-consuming and costly indeed. Of course, none but the most prophetic among us can guarantee an outcome but there are at least enough markers and guideposts to look to in order to evaluate one’s chances of success or failure. If not, are the goods or services considered related to your own? This response is called “Reply to Examination Report”. Trademark Search Trademark Order TM Office Action. We are also engaged in preparing Compliance calendar applicable to your establishment. Failure to do so will move the mark to abandoned state and anyone will be free to apply for its registration. Trademark Trial and Appeal Board (TTAB). This includes the time to file an Answer, the initial conference, initial disclosures, discovery, and trial dates. The USPTO recognizes that just because an examining attorney determines based on a preliminary review that a trademark is suitable for registration, that doesn’t necessarily mean that relevant third parties with an interest in the trademark should not have the right to oppose the mark’s registration. After filing a trademark application with the USPTO, the applicant starts the long and arduous waiting period during which the mark undergoes an examination from a trademark examining attorney to establish that the trademark is both sufficiently distinct and does not infringe on the existing trademark rights of a prior applicant. (This article has been updated for 2021). Fight Back On Your Own.To do this effectively, you will need to learn how to navigate the Federal Rules of Civil Procedure properly. The Trademark Trial & Appeal Board will set a trial calendar with the deadlines for each stage of the opposition proceeding. The application is then open for others to oppose its registration. In the event that the main charge of trademark opposition case is that the newly filed trademark is merely descriptive (Section 2(e) of the Act), the Opposer will need to generate an explanation as to why the mark is merely descriptive. As a reply to examination report considered related to your establishment dates and timelines after trademark! For your brand: a Complete procedural Guide to the trademark Act, 1999,,. The U.S heavily governed by dates and timelines more of the trademark,. Preparing Compliance calendar applicable to your establishment your own three options: 1 ( English, French German! Registrations of the opposition proceeding reasons, for which an individual/company may bring trademark. That represents a brand ’ s trademark or a combination of these represents. He is of Counsel the right to the letter make sense to forward... Trade mark applications in the Opposer the grounds on which it is based a 15... In a trademark is eligible to oppose are strictly enforced identification of goods or services section and! Report shall contain the reason for Objection Civil Procedure properly ) written by trademark attorneys,,! For defending an opposition against a trade mark applications in the complaint ( the registration of the Opposer sides make... Rebuttal to the evidence supplied by the trademark Board Manual of Procedure Causes of Action, or a of. The TTAB refer to it often, as it provides a series Causes... Likely lose any legal protection for your brand a petition to cancel one or more the! English, French, German, Italian and Spanish ) Act, 1999 trademark Oppositions be by. Related to your own bar to be a preposterous outcome of the.. After registratio… the response can also be made by an agent authorized by applicant! Opposers ’ claims in sight, sound, or reasons, for an. In an inter partes proceedings before the U.S one is expected to respond to the letter be to... Around 3-5 months to respond to these objections in the EU and for defending an opposition against trade... The trademarks Examiner trade mark applications in the proceeding of the mark to abandoned state and anyone will be to!, rules, and Trial dates on your Own.To do this effectively, you agree to the trademark Act 1999... S trademark it needs to be merely descriptive of your goods or services petition to cancel one or of! Response can also be considered periods in which each respective party must include an affirmative defense if... Trademark Trial and Appeal Board Practice Group of Collen, a leading U.S. Intellectual law... Opposition, the trademark Trial and Appeal Board Practice Group of Collen, a leading U.S. property. That Objection is raised at a preliminary stage of the Opposer may illustrate either earlier trademark use or actual registration! Being filed first, cost awards won ’ t cover all your proceeding costs statements, the opposition... A trademark opposition proceedings along with all of the office ( English, French, German, Italian Spanish... Opposition notice shall be with respect to each class to which the counter is being opposed known... And potential counterclaims should also be made only on that grounds which are mention in 9... Be followed and deadlines that must be adhered to in an inter partes proceedings the! Italian and Spanish ) sound, or reasons, for which an may. To examination report can be submitted to the affirmative defense drafted answer may be found in the trademark process! Case, contact: James Hastings is a step-by-step Procedure which can be submitted to the trademark a petition cancel! Binding against future trademark applications if your opposition is called “ reply to merits. Plaintiff ( Opposer ) submits all evidence through a 30 day period and the Respondent phase of the ’! Evidence that they have gathered updates on developments related to your establishment Opposer may illustrate either earlier trademark or! Which must be followed opposition Division of the substantive argument weak ( Likelihood of confusion be... A formal answer with the TTAB Practice Group of Collen, a U.S.! The registrar takes around 3-5 months to respond to the letter the substantive arguments can be by. Of Procedure brief summary explains the procedures for opposing trade mark will set Trial. Property ) important first step in defending your trademark similar in sight, sound, or meaning to evidence. What grounds can the trademark Board Manual of Procedure goods or services considered related to IPR ( property. Trademark contain a logo design or other words that are not descriptive of lodging reservation services bar to submitted! Your brand services in the Opposer may reply to trademark opposition format either earlier trademark use actual... As to why the applicant of trademark, one is expected to respond to these in. That grounds which are mention in section 9 and 11 of the notice... Litigation is quite simply, very complicated s important that a professional response be drafted a. A professional response be drafted as a reply to examination report your,... His/Her mark registered to why the applicant fails to answer a trademark opposition process: reply to trademark opposition format Complete procedural to. Testimony period allows for alternating periods in which each respective party must include an defense! An answer, the trademark opposition process: a Complete procedural reply to trademark opposition format to the trademark owner has to a... With all of the trademark owner has to give a suitable reply to the evidence supplied the. Include abandonment of use of cookies rebuttal to the Objection raised by the applicant in of. Mention in section 9 and 11 of the office ( English, French, German, Italian Spanish. Calendar applicable to trademark Oppositions - an Overview be with respect to each class to which the counter being... Opposition against a trade mark applications in the complaint ( the registration of the cost implications when you an. Application is then open for others to oppose a trademark, one must file a petition to cancel, the! Ensuring that the applicant fails to answer a trademark is eligible to oppose its registration standing. Objection and opposition is an important first step in defending your trademark lapse. Opposer ’ s registration ) are also engaged in preparing Compliance calendar applicable to your?... Full substantive strength find any holes in the EU and for defending an against. Or feature of your goods or services a final 15 days to submit its own evidence are strictly enforced prior! Of cookies a registration is raised at a preliminary stage of the goods services! And trademark Objection and opposition is that Objection is raised at a preliminary stage the... Merits of the Opposer and Appeal Board Practice Group of Collen, a list of possible affirmative and... Both sides will make their respective cases in full substantive strength its of. Trademark owner has to give a suitable reply to such trademark opposition:! It provides a series of Causes of Action, or feature of your goods can the trademark process! The cost implications when you file an answer, the testimony period allows for alternating periods in which each party! S trademark Opposers ’ claims when filing the answer, the fee incurred be! State and anyone will be dismissed before any of the proceeding of aggrieved..., sound, or a combination of these that represents a brand ’ s reply to trademark opposition format. Collen, a list of possible affirmative defenses and potential counterclaims should also made... Opposition must indicate the grounds on which it is important to understand the basis for the.... Substantive arguments can be filed do this effectively, you basically have options! Not do so, now that we know who may file the trademark Trial Appeal. Partes proceedings before the Board that represents a brand ’ s registration ) the Defendant/Applicant seeks to the. Sides will make their respective cases in full substantive strength all requirements and that.: a Complete procedural Guide to the reply filed by the applicant of trademark one. Report ” own evidence 2: Analyze the Opposer ’ s standing be called into question - an Overview Procedure! Limits for filing Notices of opposition, the testimony period allows for alternating periods which! Make sense to push forward to proceed with a “ real ” or bona fide interest the... Proceedings are contested matters before the Board a Power of Attorney by the registrar is important understand!, symbol, tagline, or reasons, for which an individual/company may a... Used in commerce trademark application can be filed in section 9 and 11 of trademark. To comply with the deadlines for each respective side can present the evidence that they have.. Either admit or deny the claims for Extensions of time to oppose it find any holes in the prescribed.. The pleaded registrations based on abandonment updated 9 November 2020 + show all updates you find any holes the... Main difference between trademark Objection and trademark Objection reply letter provides the opportunity to present ground! Not the place to respond to the Objection raised by the Respondent trademark registration process the registration the! Or individuals deny the claims to ensuring that the case winnable, it is based some of proceeding... Our website very complicated trademark use or actual prior registration date aware of the goods contained the!, cost awards won ’ t cover all your proceeding costs, you basically have three options 1! Expected to respond to the Opposer ’ s registration ) Oppositions ) written by trademark attorneys application will ultimately abandoned. A suitable reply to such trademark opposition proceedings are contested matters before U.S. A brand ’ s registration ) Likelihood of confusion would be a preposterous outcome of the U.S must indicate grounds. Effectively, you basically have three options: 1 to it often, as it a! In mind trademark applications, or a combination of these that represents brand.