Trademark Attorney, Lawyer: Trademark Registration & Trademark Infringement

How to Respond to a Trademark Opposition

Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration.

 

Matt:  Hello and welcome back to Trademark Law Radio.  This is Matt Plessner speaking and today we are going to be talking about how to respond to a trademark opposition.  What does that mean exactly?  Well, we are going tell you about that and, of course, beyond.  We are speaking, of course today, once again with Attorney at Law Brian Hall from the Traverse Legal office in Traverse City, Michigan, and also with a new office in Austin, Texas.  Brian thanks a lot again for joining us today.

How to respond to a trademark opposition

Brian: Thanks Matt. Looking forward to it. 

Matt: Now to start off, what is a trademark opposition, Brian?

Brian:  A trademark opposition can come in many forms.  Obviously, if somebody claims to be a trademark owner and disapproves of another’s use of a trademark, they can send a Cease and Desist Letter.  That is a form of trademark opposition.  Obviously, if somebody sues someone in Federal Court for trademark infringement or otherwise, that is a trademark opposition.  But what I am really focus on today is a trademark opposition with the Trademark Appeals Board, which is a particular kind of opposition that is specific to those that apply for and sometimes are successfully in registering a USPTO trademark.  But the trademark opposition specifically asks to be brought within a thirty (30) day opposition window and it proceeds similar to litigation at that point. 

Can a TTAB Decision Preclude Subsequent Trademark Litigation in Federal Court?

The United States Court of Appeals for the 8th Circuit recently ruled that the Trademark Trial and Review Board refusal to register a mark based upon a finding of likelihood of confusion does not preclude the filing of subsequent trademark infringement lawsuit in Federal Court. The case, B and B Hardware, Inc. v Hargest Industries, 716 F.3d 1020, denied the preclusive effect of a TTAB finding and also held that the District Court had properly excluded the finding from evidence. The TTAB had refused to register a trademark due to a likelihood of consumer confusion refusal. However, a jury found that there was no likelihood of confusion between the marks, after the judge had refused to allow evidence of the TTAB decision to go before the jury. In doing so, the 8th Circuit recognized that the TTAB is not an Article 3 court, the factors the TTAB considers for trademark registration purposes are different from those under the 8th Circuit likelihood of confusion test, and the burden of proof differed.

How to Respond to an Office Action

    It is very common for trademark applicants to receive what is known as an office action from the United States Patent and Trademark Office. An office action, simply put, is when the examining attorney from the USPTO identifies flaws with the application or other substantive legal issues that need to be addressed prior to registration. While the flaws may merely be procedural or administrative, the more important office action matters pertain to substantive legal issues. If you receive an office action, you should provide it to your trademark attorney. However, in our experience, we have seen a lot of applicants that have attempted to file for the trademark without the help of a trademark attorney. In doing so, they receive the office action and try to respond to it on their own. This is a risky endeavor considering that if they are unable to overcome the office action, they're only remedy will be to appeal to the trademark trials and appeals board which can become far more costly. More over they may unintentionally state something that becomes public record that could hurt their trademark rights in the future.
    Therefore, most trademark lawyers recommend that anyone who receives an office action should seek out trademark council. While the USPTO examining attorney typically sets forth what the issue is, and even provides some of the underlying law that applies, an experienced trademark attorney can help craft the best arguments for the trademark applicant. For example, if their is a likelihood of confusion refusal as part of an office action, a trademark attorney can identify whether or not there truly is a liklihood of confusion or propose alternatives that could allow the application to proceed to regestration, such as a co-excistance agreement or consent agreement. Similarly, if there is a refusal due to mere discriptiveness in an office action, a trademark attorney may be able to advise on ways to overcome such refusal or otherwise help navigate registration on the suplimental register with hope of future registration on the principle regester. Regardless, an office action is a very important piece of the application process, one that must be answered within six months, and faliure to overcome may ultimatly lead to refusal of the application with the only option left being to appeal via the TTAB.
    You would be well served to speak to a trademark attorney if you receive an office action.

Extension of Time to Oppose Trademark Application

Anybody who believes a trademark application with the United States Patent and Trademark Office (USPTO) should not be registered, can file a trademark opposition. A trademark opposition is a proceeding before the trademark trial and appeal board that allows the opposing party  to argue that a particular trademark application's registration would harm them. There are various basis for a trademark opposition, such as priority and likelihood of consumer confusion, fraud, or other reasons. While a trademark opposition proceeding, which commences with a notice about opposition, can become a resource intensive endeavor, there are other ways for potential opposing parties to try and resolve trademark disputes.

In particular, rather than filing a notice of opposition, one may file a request for extension of time to oppose a trademark application. Anyone may do so as a matter of right and get a thirty day extension to the statutory thirty day opposition period. During that time, the entity who believes it may be harmed can try to contact the trademark applicant and resolve the matter amicably. This may require abandonment of the trademark application, disclaimer of certain portions of the trademark application, or other terms. Nonetheless, filing an extension of time to oppose a trademark application lets the trademark applicant know that there is a potential issue and that you are serious. In the event that you choose not ultimately oppose, or otherwise have resolved the matter, you will not be stuck in an opposition proceeding.

The trademark attorney can advise someone who feels a trademark will harm them of the legalities associated with an extension of time to oppose, a trademark opposition, and related trademark matters. Should you discover a pending trademark application with the USPTO that is soon to be or is in the opposition period, you would be well served discussing your options with a trademark lawyer. Should time become a concern, you should recognize that an extension of time to oppose a trademark application is always a good option to consider.

Response to Office Action May Not Be Best For Your Trademark Application

Welcome to Trademark Law Radio, a top web resource on issues of trademark infringement, trademark licensing, trademark protection, and trademark registration. 

This is Brian Hall a trademark attorney with Traverse Legal, PLC; a law firm that represents trademark applicants and those involved with trademark disputes throughout the United States.  Today, I will be answering a question that involves an issue that I see fairly often.  And that question is, “Is it always best to simply respond to an office action that includes a likelihood of confusion refusal?”  And the short answer is no.

Trademark Trial and Appeal Board Denies Apple's "Multi-Touch" Proposed Mark

The Trademark Trial and Appeal Board (TTAB) affirms examining attorney's decision that the term "Multi-Touch"  is merely descriptive of Apple's goods, and was not persuaded that the proposed mark had acquired distintiveness as required for registration under the provisions of Trademark Act § 2(f), 15 U.S.C. § 1052(f).

ttabvue-77219819-EXA-17

Walmart Battles Trademark Owner in TTAB Trademark Cancellation Proceeding

Trademark Owners Beware: Atlanta hair care business in trademark battle with Walmart, AJC News

Retail giant Walmart files Trademark Cancellation Proceeding against the owner of a small Atlanta hair care business called Embodi International, which is owned and operated by O.B. Nizam.  Nizam filed and achieved trademark registration for the EL EMBODI INTERNATIONAL mark with the United States Patent and Trademark Office back in 2008.

Two years after trademark registration, Walmart filed a trademark cancellation proceeding with the Trademark Trial and Appeal Board asserting that it has common law rights to the Embody name dating back to 2004, and to the Mbody name dating back to 2007.  If Walmart can prove that it first used the names in commerce before Embodi International applied for its mark, Walmart’s claims could trump the Embodi trademark.   According to Nizam, there has not seen any evidence as to when or where Walmart may have used the names in commerce on its products. 

Oppositions to Trademark Registration - Fujitsu Faces Trademark Opposition From Apple Over iPad Trademark

What happens when a third-party files an opposition to your trademark registration?  Fujitsu, applicant for the iPad trademark, will now likely face a trademark opposition from Apple in front of the United States Patent and Trademark Office (USPTO).

Attorney discusses Trademark Opposition, Cancellation, and the TTAB

Play Show: Attorney Brian Hall discusses Trademark Opposition, Cancellation, and the TTAB

Trademark Trial and Appeal Board Denies Registration for Failure to File Perfect Statement of Use

Even the most trivial of deviations between one’s trademark application and the trademark actually used in commerce will doom an application with the US Patent and Trademark Office.  As Yale Sportswear recently found, trademark examining attorneys will find that a specimen is not a “substantially exact representation” of the mark as used under Trademark Rule 2.51(a) if an applicant excludes even the most seemingly miniscule part of a mark when filing a statement of use.