Why would someone oppose your Trademark Application?

One of the reasons that third parties would oppose your Trademark Application is that your mark is somewhere identical or similar to his mark because of which likelihood of confusion would be there amongst the consumers. In such case the burden falls on the opponent to proof that-

  1. Similarities between the respective marks, and
  2. First use of mark in commerce, i.e. prior user of mark.

Oppositions might also be raised on the grounds that the mark is merely descriptive.

What is an extension of time to oppose?

On the request of the opponent, the registrar may extend the time to oppose which may extend from 30 days to 90 days. Extension requests are routinely granted provided that potential opponents must show the good cause for a request beyond 30 days. For eg. time might be granted on the grounds, that additional time be granted to investigate the claim, discuss settlement or seek counsel for representation.

An extension of time will not alway lead to the filing of opposition. The potential opposer could go away on their own or seek settlement that would avoid the need for opposing the trademark opposition.

Who is the Potential Opposer?

Potential opposer is a person who intends to file opposition within a stipulated period of time if he finds any mark similar or identical to his mark. If he has filed any notice of an extension time to oppose then the other party would be notified of the identified opposer. This would help you to see if he has a pending application which might form their case for a likelihood of cond=fusion claim.

Trademark Trial and Appeal Board (TTAB) Trademark Opposition Vs Trademark Lawsuit: what are the differences?

TTAB proceedings are gentle, kind forms of litigation. In this there is no court proceedings involved, as nearly all matters are handled in writing. The Board does not have any authority to impose any monetra sanctions.

TTAB proceedings cost lower than proceedings in federal courts. Also the issues in TTAB actions are limited to the registrability of marks. It is to be noted here that Trademark infringement matters are not litigated in TTAB tribunals 

How much does TTAB Trademark Opposition defense cost?

Cost of defending TTAB matters depend upon several factors, but the overwhelming factors will be how far the opponent is willing to go. If the opposer is determined to fight ill end then cost of defending trademark opposition can range between $50,000 to $150,000.

And if both parties are willing to settle their matter then opposition defense costs may range from less than $2000 to $5000. 

What are the first steps in defending against a Trademark Opposition?

If Trademark Opposition has been filed by any party, then he will file it through Notice of Opposition and it contains the opponent’s identity, their grounds of opposition, and details of their trademark filing which they believe are in conflict with your mark. This will give you an opportunity to assess the likelihood of confusion claims and any potential defenses or counterclaims.

You will also receive a notice of the institution with a scheduling order setting forth key deadlines, including conference, discovery and trial schedule dates. The most immediate deadline for the defendant to answer is 40 days from the filing date of opposition. The next deadline is for a mandatory discovery conference which is after about 1 month after the answer deadline.

What early settlement options might be available?

If the opposer is open for settlement, the it may worthwhile to explore any potential compromises including-

  1. Amendments to the identification of goods and services.
  2. Limitation to usage of your mark, which may include agreements to use your mark only in certain conditions.
  3. Agreements not to expand into certain product lines.
  4. Changes to your mark after signing an undertaking.

Productive settlement discussion may also lead to a coexistence agreement (aka consent agreement) that either side may file with the USPTO to overcome any refusals based on likelihood of confusion.

Any counter-claims to consider against the opposer?

Yes, if the trademark oppose is having any pending registered mark similar to your then it is worthwhile to file a counterclaim, or a separate TTAB proceedings against the opposer’s mark. These conditions would involve your counsels. The decision to go on the offense may be complicated and filled with additional several issues that are not readily apparent. 

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