You may be facing a trademark opposition proceeding, either as an opponent or as a defendant (applicant). The following will give you an accessible overview of the main elements in the proceeding, so you will know what to expect.
What is an opposition proceeding?
An opposition proceeding is an objection by a third-party opposer to a pending trademark application. It happens after the USPTO has published the mark, but prior to its registration.
The Opposition Period
This period is a 30-day window after the Examining Attorney has examined and is satisfied with a mark. It allows third-parties with a real and genuine interest in a pending application to have a chance to oppose it.
Notice of Opposition
If you are the opponent, you will file a Notice of Opposition. In other words, you must explain why the pending application should not be registered.
One of the most typical grounds is that of “Likelihood of Confusion”. In other words, you will allege that the mark is confusingly similar to your mark. However, if a commercially damaging mark is not similar to your own, you may pursue another ground, such as, for example, that the pending mark is “merely descriptive”.
Answer to Opposition
Following a Notice of Opposition, if you are the applicant, you have 40 days to respond. You will answer the allegations made against your mark. If you fail to answer these allegations, the USPTO will abandon your application.
Answer to Counterclaims
In this period, you, the applicant, can also file counterclaims. In other words, you will make these claims against the opposer’s own registrations.
Discovery Conference
In the discovery conference, both parties meet to understand the other’s plans for disclosure and discovery, the other’s claims and defences and the likelihood of settlement. The parties must hold it 30 days after the Answer to Opposition.
Discovery Period
After the discovery conference, the discovery period begins. This is a six-month period where both parties obtain important information from each other.
The discovery period consists of:
- Initial Disclosures: early exchanges of basic relevant information.
- Interrogatories: questions in writing to the other party which must be answered under oath.
- Requests for Production: requests in writing to the other party to produce documents and evidence.
- Requests to Admit: requests in writing to the other party to admit or deny allegations.
- Witness depositions: examination of both parties’ witnesses by counsel.
Trial
If no summary judgment is given, the opposition proceeds to the trial phase. This can include witness testimony, documentary evidence and oral argument.
Decision
Typically, within 6-months of the trial, the Trademark Trial and Appeal Board makes a decision in favour of one of the parties.
Listen to the Experts
For more information, click here to listen to two of Fresh’s attorneys, Cliff Hyra and Micah Gunn, discussing opposition proceedings.
