Trademark Opposition

You file your trademark application, and wait with baited breath for 12-16 weeks to hear from the USPTO examiners.  Your application passes the official examination with flying colors.  Now you’re certain to complete the registration process successfully … Right?

Maybe not.

After your application passes examination, it is published in the Trademark Official Gazette.  This kicks off a 30 day period during which anyone… a perfect stranger, your best friend or your worst enemy… can “oppose” the application.

An Opposition is like a lawsuit:   The “Opposer” (usually, a competitor or even a former business partner) is picking a fight with you, the “Applicant.”  By opposing your trademark application, your competitors or enemies can try to prevent your trademark from registering.

Sometimes, the shoe is on the other foot, and you find yourself in the position of wanting to oppose another person’s trademark application.  Perhaps you are trying to register a similar trademark and you have received an Office Action for “likelihood of confusion” with the other person’s trademark.

The two most common reasons for opposing a trademark application are:

(1) the Opposer thinks they have the right to the Applicant’s trademark, and wants to take it away from the Applicant; or

  • the Opposer thinks that the Applicant’s trademark is similar to their own, and that the similarity will cause marketplace confusion.

Whatever the motivation, it all comes down to evidence.  Who can prove the earliest use of the trademark “in commerce?”    Most of the time, the early bird wins.

Jane, who lives in Pennsylvania, is trying to trademark “See Spot Run” as a how-to book series for women runners in International Class 016.   Jane started selling her book series on August 1, 2016  on amazon.com and at swapmeets. She filed her trademark application on August 2, 2016.

Dick, who lives in Oregon, has been selling his self-published graphic novel series “Spot Can Run” out of his basement since January 1972.   Dick’s graphic novels have a cult following but are not widely circulated.

Over Labor Day weekend 2016, Dick’s daughter, Sally, who practices tax law in Texas, urges her father to get his legal and financial affairs in order.  One of the tasks on Sally’s agenda is getting her father to trademark and copyright his graphic novels.  Sally’s significant other, Bob, helps Dick file a trademark application for the “Spot Can Run” series in International Class 016 on September 2, 2016.

On December 15, 2016, Dick receives a notice from the US Trademark Office that his application has received an Office Action.  The Trademark Examining Attorney has refused registration on grounds that Dick’s trademark SPOT CAN RUN in Class 016 is likely to cause consumer confusion with Jane’s trademark SEE SPOT RUN, also in Class 016.

Dick calls Sally and Bob to complain about the unfairness of it all.  “I’ve been self-publishing these books since 1972.  Jane’s books didn’t come on the market until a few months ago.  They should be refusing to register her trademark, not mine!  I was using the trademark first!”  Sally and Bob check the status of Jane’s trademark on the tsdr.uspto.gov website by entering the trademark serial number.  Jane’s application status is “Published for Opposition.”  The status date is December 1, 2016.

Bob and Sally explain to Dick that they have until December 30, 2016 to oppose Jane’s application, and argue that Jane’s trademark application should be refused, and Dick’s should be approved.

Dick, with help from Bob and Sally, files a Notice of Opposition.  The Notice of Opposition explains the legal claims that Dick wants to use to block Jane’s trademark from registration.

Dick’s most important legal claims are “priority of use” and “consumer confusion.” Dick has been using his trademark since 1972, whereas Jane only began using her trademark a few months ago.  Even though Jane filed her application before Dick did, Dick claims he has “priority of use” at common law.  He further claims that Jane’s trademark will confuse consumers who are looking for his graphic novels.  Consumers will mistakenly believe that Jane’s book series is somehow related to or affiliated with Dick’s books.

Dick sends a copy of the Opposition to Jane and her attorney.  This is called “service.”  Jane has 30 days from the date of “service” to file an Answer to the Opposition.  The Answer is Jane’s opportunity to deny Dick’s legal claims and defend Jane’s right to register her trademark.

After Jane files her Answer, Dick and Jane have the opportunity to ask each other for evidence. This is called “Discovery.”  Discovery is like a game of “Go Fish.”   If Jane asks Dick for documents or information relating to his historic use of his trademark, Dick has to hand over that information. Dick also can ask Jane for documents and information about her short history of using her trademark.  Jane has to hand over the documents and information that is requested.

The documents and information that Dick and Jane exchange all are related to their history of using the trademarks.  The purpose of this information exchange is to make sure that Dick, Jane and the Trademark Trial and Appeals Board (the “judge” who decides the case) all have the relevant evidence to make the correct decision.

Most of the time, an Opposition will be resolved by a mutual settlement between the parties.  In this case, for example, Jane may change her mind after she sees Dick’s evidence proving that he has been using this trademark since 1972.  Jane may decide it’s not worth the hassle and expense of fighting the opposition..  As a result, she may voluntarily withdraw her trademark application,  effectively ending the lawsuit.  Alternatively, Dick and Jane may negotiate a settlement that allows each of them to continue using the trademark on their respective products.  After  discussing the situation, Dick and Jane may agree that real-world confusion is unlikely; consumers looking for Dick’s graphic novels are not likely to  confuse them with Jane’s how-to book for runners.


 

Disclaimer – No Legal Advice:  The information and content available on this site is offered only for informational purposes and is not intended to be legal advice.  Posts are for educational purposes only as to provide general understanding and general information of the law, not provide specific advice.  Blog posts should not be used as a substitute for competent legal advice from a licensed professional attorney in your state.

 

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