how to challenge a trademark registration [Beginner's Guide]

Last updated : Sept 13, 2022

How do you oppose a trademark application?

Trademark Opposition Process Any person can file for trademark opposition to the Registrar within four months from the date of advertisement of the registration application in the trademark journal by giving a notice in Form TM-O and payment of fees.

What is the opposition period for a trademark?

Publication begins a 30-day period during which any member of the public who thinks they'll be harmed by the registration of your trademark may oppose it. They may file a Notice of Opposition, which starts a legal proceeding with the Trademark Trial and Appeal Board (TTAB) about your trademark.

Can a registered trademark be challenged?

A person can appeal to cancel the registered trademark only if they have been affected by the existence of such a trademark. The authority validates it under the following grounds: When it confuses or dupes any existing trademark. When a different person uses it and not the registered owner.

How do you raise a trademark objection?

1. The examiner, public or third party can file an opposition within four months.
2. The status of the application will be change to Opposed.
3. The grounds of opposition is stated.
4. After this, notice the applicant about the opposition, and the grounds stated.

What happens after opposition trademark?

If an opposition was filed but was unsuccessful, we will register your trademark after the Trademark Trial and Appeal Board dismisses the opposition. After your trademark registers, you must periodically file maintenance documents and fees within specific time frames to keep the registration active.

How long after an opposition is published?

Approximately 4 to 6 weeks after being approved for publication your trademark application will be published for opposition for 30 days. During this period any party wishing to object to the registration of the trademark.

Can you object to a registered trademark?

Opposing a published trade mark. Opposition is the legal procedure that allows you to try to stop a published mark going on to become registered. You can oppose the entire application, or only some of the goods or services it covers.

Can a trademark be overturned?

Since trademarks are issued to preserve distinctiveness, anything diluting the meaning of a mark can be grounds for cancellation. Not only do such instances result in lost rights, but they may also require businesses to either undergo expensive rebranding campaigns or forgo a particular product or service entirely.

What invalidates a trademark?

A trademark can be revoked if it has become misleading to the public as a result of how it is used by the trademark owner or with the owner's consent. A trademark can become misleading, for instance, in terms of the geographic origin of the product or service.

How do you determine reason of objection in trademark?

1. Use of Incorrect Trademark Form.
2. Incorrect Trademark Applicant Name.
3. Failure to File Trademark Form TM-48.
4. Incorrect Address on Trademark Application.
5. Vague Specification of Goods or Services.
6. Same or Similar Trademark Exists.
7. Trademark is Deceptive.

How much time does it take for trademark objection reply?

A thorough reply to a trademark objection must be filed within one month of the date of the objection's issuance. It usually takes 3-6 months for a reply to be processed. There is no fee charged by the government for filing a response to a trademark objection.

How long does a trademark examiner take to review an objected trademark?

After filling the TM-12 I.e replying the TM objection raised by the trademark examiner it will take 30 to 60 days to change the status of the trademark application.

What happens if a trademark is objected?

Once the counter is filed, the Registrar may call for a hearing if he rules in favour of the applicant the trademark will be registered. If he rules in favour of the opposing party, the trademark will be removed from the Journal and the application for registration will be rejected.

Can you lose a trademark if you don't use it?

The Loss of Trademark Rights You can lose a mark through abandonment. A mark will be considered abandoned if you stop using it for three consecutive years and you have no intent to resume its use. You can also lose a mark through improper licensing or improper assignment.

Can someone cancel my trademark?

Any person aggrieved by the registration of trademarks may apply to get it cancelled. An aggrieved person is the one who is affected adversely by the trademark. A person interested in a trademark can apply for its cancellation. Though any person can apply for it, he can do so only on the grounds mentioned in the Act.

How do you defend a trademark opposition?

An answer to a trademark opposition may include affirmative defenses. Examples of affirmative defenses are Opposer's unclean hands or fraud in bringing the opposition. Such defenses include that the Applicant should be entitled to registration subject to certain restrictions to its identification of goods or services.

How do you respond to a trademark report?

The response can be submitted by sending a scanned copy (colour pdf file format) of the reply to examination report to parm.tmr@nic.in or could be uploaded online through the trademark office website or could also be submitted by person or post.

How do I find out who opposed my trademark?

Counter-Statement The trademark registrar would serve a copy of the trademark opposition notice to the trademark applicant after the trademark opposition notice was filed with the registrar. The trademark applicant must file the counter statement within two months of receiving the opposition notices.

How do I file a trademark objection response online?

1. Track the status of your trademark application.
2. Examine the trademark objection.
3. Draft a reply.
4. Check and recheck the reply before filing.
5. Get feedback on the department's reply.
6. Your trademark will be published in the trademark journal if your reply is accepted.

Can an objected trademark be used?

Trademark Lacks Distinctive Character To overcome a trademark objection under absolute grounds for refusal, the trademark applicant can submit proof to show that the mark has acquired a distinctive character by virtue of its prior use.

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Write a comment

what are the steps involved in trademark opposition process step one once the trademark opposition notice inspired by opponent when the trademark registrar then the Registrar would serve a copy of the trademark opposition notice to the trademark applicant in mark opposition must infuse the details of the trademark opposition party including name and address and the grounds for trademark opposition step 2 within two months of receiving of trademark opposition notice the trademark applicant must file a counter statement fountain statement has filed by the applicant against the opponent the Registrar of trade this is the reply of opposition filed by the opponent and the applicant file the grounds and appeals that how it is different and does not create any confusion and is known for his brand name on in case if the trademark applicant could not file the counter statement within the prescribed time limits then the trademark application shall be deemed to have been a Bandhan step 3 depending on the trademark opposition and the counter statement filed by both the parties the Registrar may call for the hearing - both the parties the Registrar then take action based on the evidence present step 4 in case if registry is satisfied with a trademark opposition then the registration of the trademark will be refused and if the trademark opposition is rejected the trademark will be registered our team will help you in company or LLP registration GST taxation service trademark and other IPR services auditing and assurance accountancy corporate advisory services and all kind of regulatory and departmental approvals for more information contact us examine five triple six triple seven double six or nine one three one nine two zero seven six four email info at Sonam gear.com visit website after ww2 alsalam mera kaam you

Thanks for your comment Shannon Kemmerer, have a nice day.
- Ashlie Klima, Staff Member

I frequently get asked what are the main challenges in registering a trademark I want to tell you about the three challenges that applicants face repeatedly the first is knowing how to search the database of the US Patent and Trademark Office for potential conflicts that would block registering the mark it's a large complex database and really without experience knowing how to use the various search tools it's it's nearly impossible to do a valuable search the second main challenge is that the process is very long it takes about a year on average to register a trademark and tracking and monitoring the status of the application and the deadlines that arise during the process is a real challenge if you aren't equipped for that we've built custom software at Eric Feldman associates that allows us to go out every day and track for developments in the application and allows us to dock it and monitor upcoming deadlines for every single application we find finally the third challenge is how to respond to the Patent and Trademark Office if there is a refusal of the application and very frequently there is a refusal sometimes it's a procedural issue sometimes it's a major substantive issue like a likelihood of confusion or a descriptiveness refusal knowing how to research and find examples to bolster the arguments in response to the trademark office to try to win approval for the application is a huge challenge and that one that we've undertaken hundreds and hundreds of times for our clients if you'd like to talk further about how we can work together to apply to protect your company's trademarks please give me a call or send me an email I'd be happy to start that discussion Oh

Thanks Lezlie your participation is very much appreciated
- Ashlie Klima

About the author

Ashlie Klima

I've studied formal methods (formal verification) at Tennessee State University in Nashville and I am an expert in nutrition (outline). I usually feel rejected. My previous job was financial services sales agent I held this position for 3 years, I love talking about speedrunning and sneaker trading. Huge fan of Jack Nicklaus I practice gymnastics: rhythmic and collect collectible card games.