Trademark Oppositions in USA

Oppositions in national trademark registration procedure in the United States of America


A trademark is any sign that can be represented graphically and capable of distinguishing goods or services.

A trademark can be registered based on actual use in commerce or a good faith intend to use. After filing the trademark application, there is an examination step in which the examiners from the Patent and Trademark Office checks the proposed description of goods and/or services associated with the given mark and decides whether it can be registered or not.

1.                  Trademark opposition filing deadlines in the United States of America

In case that the examiner considers that the trademark is distinctive for certain goods or a service of a trader and that it is not deceptive, he gives the approval for publication of the mark in the USPTO Trademark Official Gazette.

After publication in the Official Gazette, there is a period of 30 days in which any person who has previous rights and/or who has reasons to believe that he would be damaged by the registration of a pending trademark may file an opposition. Extension is available as of right, i.e., with or without the consent of the applicant. (Specifically, extension is available for 90 days without the consent of the applicant and 60 additional days with the consent of the applicant, for a possible total of 150 days.).

Given the short time for filing an opposition, most owners of major or valuable trademarks subscribe to the Official Gazette (which contains a list of trademarks published for opposition or have services that monitor the Official Gazette for publication of potentially conflicting trademarks.

2.                  Trademark opposition parties in the United States of America

It is important to note that, at this stage, the official examiner is no longer involved with the application.

The opposition to the grant of a trademark application may be filed by the owner of previously registered trademark or of a well-known trademark or by any other owner of previously registered intellectual property rights: trademarks, company names, domain names, author’s rights, etc.

The opposition must be filed in writing and accompanied by payment of the official opposition fee. If the fee is not paid, the opposition is not taken into consideration by the Office.

The opponent has to prove that there are valid grounds as to why the trademark applicant is not entitled under law to register or to continue holding the mark.

3.                  Trademark opposition grounds in the United States of America

The grounds of opposition must contain a statement showing how the petitioner would be damaged by the registration of the pending trademark, as well as a statement of the grounds for opposition.

An opposition can be filed based on absolute or relative grounds. The absolute grounds may be based on a descriptive or non-distinctive character of the trademark filed for registration, on a conflict with official signs, etc.

The relative grounds state that a trademark is confusingly similar to an existing registered trademark or that it conflicts with an existing prior common law rights established. An opposition based on relative grounds can only be filed by an owner of any prior relative rights.

4.                  Defense to a trademark opposition in the United States of America (answer to an opposition; counter-statement)

At this state, there is no need to submit any evidence in support of the defense of the opposition.

There is no official fee to be paid for filing the counter-statement.

5.                  Examination and decision in a trademark opposition file in the United States of America

It is a common procedure that the parties (the trademark applicant and the opponent) come to a settlement agreement regarding use of the trademark (usually, this means a limitation of the number of classes for the pending trademark or adding an element of distinctiveness).

If the opposition is, by any reasons, not settled amicably between the two parties, the opponent must then file evidence in support of the opposition and the applicant must submit his own evidence in support of the grant of the application.

If it is the case, the opponent must also provide proof of use for his previously registered trademark, over five years before the date of advertisement of the opposed application.

Based on the papers filed by each party, or, in some cases, also based on an oral hearing, the Patent and Trademark Office comes up with a decision regarding the grant of the pending trademark.

6.                  Appeals to a trademarks opposition decision in the United States of America

An opposition decision can be appealed within two months of the opposition decision before of the United States Court of Appeals for the Federal Circuit; or  a United States district court.
The decision of a United States district court in a civil action may be appealed as of right to a local federal circuit court of appeals. A decision of the Federal Circuit, however, may be appealed only to the United States Supreme Court by grant of certiorari.

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