Trademark Fundamentals: Opposition and Cancellation Proceedings
For startup founders, navigating the complexities of trademark law is essential for protecting your brand. An important aspect of this process involves understanding opposition and cancellation proceedings. These are formal disputes aimed at challenging an application or registration for a trademark. This article will explore what these proceedings entail, why they matter, and how you can prepare for them.
What are Opposition Proceedings?
After you file a trademark application, it is reviewed by an Examining Attorney at the U.S. Patent and Trademark Office (USPTO) to confirm that the trademark is eligible for registration. If the USPTO approves the application, it will be published for a 30-day period. During that time, third parties can challenge your right to obtain a registration if they believe that registering your trademark will cause them harm. These proceedings are referred to as “oppositions,” and they are handled by a specialized tribunal at the USPTO called the Trademark Trial and Appeal Board (TTAB). While not court litigation, the procedure can mirror what happens in a court case including discovery, expert witnesses, briefings, and hearings.
Key Points About Opposition Proceedings
What are Cancellation Proceedings?
Cancellation proceedings are similar to opposition proceedings, except that they are for trademarks that are already registered. These proceedings are aimed at canceling an already registered trademark because it should not have been registered in the first place or because it has become generic, abandoned, or improperly maintained.
Key Points About Cancellation Proceedings
Best Practices for Handling Opposition and Cancellation
Takeaway
Opposition and cancellation proceedings are vital mechanisms in trademark law that help ensure the integrity and uniqueness of registered trademarks. By understanding these processes and preparing accordingly, startup founders can better protect their intellectual property and sustain their brand’s value in the marketplace.
What are Opposition Proceedings?
After you file a trademark application, it is reviewed by an Examining Attorney at the U.S. Patent and Trademark Office (USPTO) to confirm that the trademark is eligible for registration. If the USPTO approves the application, it will be published for a 30-day period. During that time, third parties can challenge your right to obtain a registration if they believe that registering your trademark will cause them harm. These proceedings are referred to as “oppositions,” and they are handled by a specialized tribunal at the USPTO called the Trademark Trial and Appeal Board (TTAB). While not court litigation, the procedure can mirror what happens in a court case including discovery, expert witnesses, briefings, and hearings.
Key Points About Opposition Proceedings
- Timing: An opposition can only be filed during a specific time window, typically 30 days after the trademark application is published in the Official Gazette by the USPTO (which can be extended).
- Grounds for Opposition: Common reasons for opposition include a likelihood of confusion with an existing trademark or a claim that the applied-for trademark is merely descriptive or generic and not recognized as a distinctive brand by consumers.
- Process: The process involves filing a notice of opposition, after which both parties can seek discovery and present evidence and arguments. The TTAB then decides the outcome.
What are Cancellation Proceedings?
Cancellation proceedings are similar to opposition proceedings, except that they are for trademarks that are already registered. These proceedings are aimed at canceling an already registered trademark because it should not have been registered in the first place or because it has become generic, abandoned, or improperly maintained.
Key Points About Cancellation Proceedings
- Timing: Unlike oppositions, cancellations can occur at any time after a trademark has been registered, though some grounds for cancellation must be filed within five years of registration.
- Grounds for Cancellation: Some common reasons include claims that the trademark has not been used, is generic, was fraudulently obtained, or is likely to be confused with an earlier trademark owned by someone else.
- Process: Similar to oppositions, the process involves filing a petition for cancellation with the TTAB, followed by a phase of discovery, evidence submission and arguments before a final decision is made.
Best Practices for Handling Opposition and Cancellation
- Conduct Thorough Research
Before applying for a trademark, ensure a clearance search is done to avoid potential oppositions to your application. This includes searching the USPTO database, as well as state trademark databases and even unregistered trademarks that could pose a conflict. - Prepare Your Defense Early
If you face opposition or need to defend against a cancellation, gather all relevant evidence about your trademark’s use, registration details, and any other documents that support your case. - Engage Experienced Legal Counsel
Navigating opposition and cancellation proceedings can be complex and legally demanding. It is advisable to work with a trademark attorney who can provide expert guidance and represent your interests effectively. - Monitor the Market
These proceedings could be an effective enforcement tool. Regularly monitor the market for any potential infringements or uses that could be stopped through an opposition or cancellation proceeding. On the flipside, due diligence and monitoring to make sure you don’t pick a mark confusingly similar to a senior user before you file trademark applications or invest resources into launching a brand will help avoid you being on the receiving end of an opposition or cancellation proceeding. Early detection allows for more strategic responses. - Maintain Proper Trademark Usage
Ensure proper use of your trademark in commerce to avoid claims of abandonment or non-use, which are common grounds for cancellation.
Takeaway
Opposition and cancellation proceedings are vital mechanisms in trademark law that help ensure the integrity and uniqueness of registered trademarks. By understanding these processes and preparing accordingly, startup founders can better protect their intellectual property and sustain their brand’s value in the marketplace.