Trademark Oppositions

The United States Patent and Trademark Office (“USPTO”) is a government agency and a branch in the U.S. Department of Commerce.  The primary role of the USPTO is to register trademarks and grant patents for the protection of inventions.  As a government agency it serves the interests of businesses and inventors with respect to their products and inventions as well as service identifications.

Moreover, the USPTO is a government agency that by its very nature is important to the public interest.  The agency has a duty to disclose their records as a means of public information for all to have and access.  Because ultimately through the public dissemination of patent and trademark information the USPTO aids and encourages innovation as well as scientific and technical advancement in the United States.  

Every week, the USPTO publishes all of the approved trademark applications to the Official Gazette (“OG”)  for opposition.  According to the USPTO the OG, “is the official journal of the USPTO, published weekly on Tuesdays, that includes bibliographic information and a representative drawing for each patent granted or trademark published on that issue date. There is a separate Official Gazette for Patents and an Official Gazette for Trademarks, and the most recent 52 issues for each are available online.”

What the OG does is it provides notice to the public that the USPTO plans to issue a registration.  And according to the USPTO, “any party who believes it would be harmed by the registration may file an objection (opposition) within that 30-day period with the Trademark Trial and Appeal Board.”

There are many reasons why a party may bring an opposition. Keep in mind that the following list is non-exhaustive, but the main point of opposition is that the opposer is damaged directly in some way.  Reasons for opposition may include:  

  1. The mark is primarily merely a surname (last name);
  2. The mark is “disparaging”;
  3. The mark is “scandalous”;
  4. The mark would dilute the opposer’s “famous” mark;
  5. The mark is generic for the Applicant’s goods and/or services;
  6. The mark is merely descriptive of its goods and/or services;
  7. The mark is functional for its goods and services;
  8. The mark falsely suggests a connection with the opposer.

 

Utilizing public information on the USPTO’s Trademark Status and Document Retrieval (“TSDR”) site, Trademarkia was able to compile a list of the top 25 companies who filed the most oppositions to trademark applications in 2016.  (These companies are essentially “trademark bullies.”)

Check out the list of top 20 companies that filed the most oppositions to trademark applications in 2016 below.  You can view the full list on Trademarkia here.

  1. MSC SERVICES CORP., SID TOOL CO., INC.
  2. MONSTER ENERGY COMPANY
  3. MEDIWARE INFORMATION SYSTEMS, INC.
  4. MAGIC SNOW, LLC
  5. MAD DOGG ATHLETICS, INC.
  6. LEVLAD, LLC
  7. KELLOGG NORTH AMERICA COMPANY
  8. JACK DANIEL’S PROPERTIES, INC.
  9. INFOSYS LIMITED
  10. HOMIE GEAR, INC.
  11. HCH ACADEMY S.R.L.
  12. GRUPO VIVELL S.A.S.
  13. GOPRO, INC.
  14. FINANCIAL GAP ADMINISTRATOR LLC, VEHICLE SERVICE ADMINISTRATOR LLC, ADMINSTRATION AMERICA LLC, WISE F
  15. FCA US LLC (FORMERLY CHRYSLER GROUP LLC)
  16. EVEDEN INC.
  17. ENERGIZER BRANDS, LLC
  18. DD IP HOLDER LLC
  19. CRIMSON U.S. ASSETS LLC
  20. CALICO GLOBAL PTY LTD.
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