How to oppose trademark application [Best Answer]



Last updated : Sept 3, 2022
Written by : Scarlett Maclaurin
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How to oppose trademark application

How long is opposition period for trademark?

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.

How do I remove a trademark application?

Request a paper copy of the "Request for Express Abandonment (Withdrawal) of Application" form by contacting the Trademark Assistance Center at 1-800-786-9199 if you do not want to submit the form electronically.

How do I appeal a trademark?

An applicant for registration of a trademark may appeal to the Board from any final refusal to register its mark, and can initiate an appeal by filing a timely notice of appeal with the Board with the required fee. 37 CFR § 2.6(a)(18) sets forth the required fee.

Can we use opposed trademark?

According to Section 21 of the Trademark Act, 'any person' can oppose a trademark, irrespective of their commercial or personal interest in the matter. A trademark can be countered by filed by a customer, member of the public or competitor, or any other person.

What happens when someone opposes your trademark?

If someone decides to oppose your trademark, they file a notice of opposition. This notice will list any and all allegations and their reasons why they believe your application should be rejected. Once the notice has been filed, you have 30 days to answer.

How do you respond to a trademark opposition?

  1. The first thing one must do is file a counter statement to the objection.
  2. This must be done within 2 months from the date of receipt of the notice of objection.
  3. Failure to file an objection within 2 months will change the status of the application to Abandoned.

Can you change a trademark application?

If it can't be processed in time, your trademark will be published as is. However, after your trademark is registered, you can request changes by filing a Section 7 Request for Amendment or Correction of Registration Certificate form.

What is a notice of opposition?

Notice of Opposition: Summary A notice of opposition is a complaint filed in a trademark opposition proceeding seeking denial of another party's trademark registration. Trademark oppositions are heard before the U.S. Trademark Trial and Appeal Board.

What is a petition to cancel trademark?

A trademark cancellation proceeding is exactly what it sounds like. It's a legal case, similar to a civil lawsuit (although it is by contrast processed in the Trademark Trial and Appeal Board (TTAB)), in which a complainant is provided with the opportunity to attack and ultimately cancel a defendant's trademark rights.

Can you oppose a trademark on the Supplemental Register?

A Supplemental Register Trademark Application Is Not Published For Opposition. With Principal Register Trademarks, the application is published for 30 days to allow third-parties to oppose the pending application.

Who can file opposition?

According to Section 21 of the Trademark Act, “any person” can file a trademark notice, irrespective of commercial or personal interest in the matter. The question of bona fides of the opponent does not arise.

What is the difference between opposed and objected in trademark?

Trademark objection is the objection raised by the Examiner of Trademarks whereas Trademark opposition is an opposition proceedings initiate by the third party. The third party here means any person present in public that may have objection towards the acceptance of your mark.

Why are trademarks opposed?

Section 21 of the Trademarks Act 1999 clearly elucidates about opposition. Simply put, a mark predominantly gets opposed either owing to its similarity with an existing mark or due to alleged non-distinctiveness or both.

How often are trademarks opposed?

How Often Are Trademarks Opposed? It's not often that trademarks are opposed, but opposition and cancellation proceedings can be a real threat once they have been instituted. In a recent USPTO study, only 2.8 percent of 4 million applications published went through an opposition proceeding.

What happens after published for opposition?

What happens after a trademark is published for opposition? If no oppositions or extensions of time are filed, then a use-based application will proceed to registration. Keep in mind that third parties who fail to oppose your application may still file a cancellation after your trademark is registered.

How do you write a trademark objection response?

Process for Trademark Objection Track the status of your trademark application. Examine the trademark objection. Draft a reply. Check and recheck the reply before filing.

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.

How do you write a counter statement?

The counter statement shall typically comprise the following: Set out the facts, if any facts alleged in the notice of opposition are admitted by the applicant. A paragraph wise counter of each of the grounds made in the notice of opposition.

How much is it to amend a trademark application?

The official USPTO fee for filing an amendment is only $100. In many cases the associated arguments are short. There is not a large body of law on permissible changes to trademarks and it is not possible to search the USPTO record to determine if a trademark has been successfully amended.

Can a registered trademark be amended?

A trademark applicant can request to amend or correct a trademark application before registering. To do this, fill out trademark Form TM–M with the prescribed fee. This can be done for minor technical changes or corrections to the filing and data entry.


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How to oppose trademark application


Comment by Davida Roan

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 Davida Roan, have a nice day.
- Scarlett Maclaurin, Staff Member


Comment by Audrea

hi I'm Elizabeth Gerhart I'm sitting here with James Clos Bakar senior associate at gearheart law and also very good at doing trademarks Thank You James filed a trademark application for me then he came back to me later and said there's an opposition to your trademark and I'm like what what what how did that happen what does that mean so James what happens after you file the trademark application so after you file an application there's two main hurdles or two main thresholds that you have to overcome in order to get the trademark and one is you have to take care of all the technical requirements before the eyes of the Patent Office or Patent and Trademark Office I should say and once they've deemed that you've met all of those qualifications they then publish the application for 30 days in a publication period and that publication period gives any member of the public that is any third party 30 days to you know comment publicly and try to oppose your mark if they think it would harm their business they could also if they so choose within that 30 days let's say they need additional time to make a decision they can file for an extension of time you know to file that opposition as well so if you've gotten an opposition on a trademark what that means is there's some third party out there that believes that your mark will somehow materially harm you know their business or a mark that's used in conjunction with some sort of good or service that they offer so then what happens do you fight for me and say no these people are wrong she deserves a smart I mean what happens next yeah I mean you know you have to take every case a case by case basis and determine the merits but when opposition is essentially you know a court case it follows you know Federal Rules of Civil Procedure there's discovery you can take depositions and all of this happens throughout a prolonged time period the opposition you know overall can go for you know easily a couple years obviously you want to get out of it as soon as you can most of them settle before a final decision by the trademark trial and appeal board but that's you know in shall what you're gonna be looking at from the time I filed the application to one like the opposition could come how long is that is that a month two months usually you're gonna be looking at around I'm gonna say maybe five months give or take there's gonna be some variants in there but what happens is about three months after you file a trademark application yeah it's gonna be assigned to an exam and an attorney who has to review it if they send out an office action they give you six months to respond to that office action so if you take you know that's six months obviously that's gonna change the timeframe but going off the assumption that you respond in an expeditious manner or that you don't receive any office action at all then they schedule it for publication and once you have that publication date it's for 30 days and that you normally take maybe you know a few weeks once all the issues have been taken care of so right around five months give or take so can I use it during this time yeah I mean you can still use it you should always review the merits of the opposition closely and determine if there is any infringement potentially by any party or what's really being alleged you may decide that the risk is too great you may want to you know put put use on the mark on hold to limits you know damages and that sort of thing but unless counsel you know instructs you otherwise generally both parties will continue to use the mark during that time frame but if you've done a trademark search then hopefully this would have come up in the search yeah I mean that would be you know the idea and in all likelihood it may have obviously if you get to the point of publication the trademark office doesn't think that there's any issue right so you've passed that threshold because the trademark office does review your application in light of third party federal registrations it may be that someone has you know an unregistered use which again you know in all likelihood we should have found it in the search and already be aware of and counseled you on or at the end of the day people are subjective they can form their own opinions if they think that something is too similar you know trademarks are if you don't use it you lose it type things so you do have to actively police you know the mark and some members of the public or you know even corporations will employ you know watch services to watch over the trademark Cosette's and the publications and and basically will file an opposition or an extension at least and engage you at that level if anything is even remotely close at times it may be much ado about nothing and may be able to dispatch it pretty easily other times it's going to be you know much more nuanced it'll it'll just kind of depend so the sequence is you file the trademark application you go through all this stuff with the trademark office and they say okay well we think you can have the trademark but we're going to make sure that nobody else wants to fight you on it and so then they publish it and then somebody can do a trademark composition see right so the trademark office thinks you should have it but somebody else can say I don't think they should have it right then eventually if you go progress far enough you know the trademark trial and appeal board will render a decision and who's correct or not so then what if they say you can't have it and this other person was wrong at that point then you know they would have issued you know a decision or you reached a settlement you know to that respect you should be allowed to proceed to registration at that time and they're not going to be able to come back does that cost a lot you have to pay legal fees for an opposition yeah yeah I mean opposition's as I said before it can go on for some amount of time you have discovery you have briefs you have you know potentially depositions and all of those good things that come along with that so you can certainly you know spend a fair amount obviously it's gonna depend a little bit how far through the process that you go through some initial discovery depending on how complex it is I mean you could easily spend twenty five thousand plus so I should probably balance at that point then so let's say I started using my trademark for a couple months got my first sales so that I could register it as a trademark in use across state lines or whatever I did an internet sale and then six months later so it's been like maybe eight months for me I get this opposition and so then I have to weigh how much marketing have I done how much branding have I done with this name versus fighting the opposition with legal fees right right you have to weigh the pros and the cons and your investment versus the budget versus you know the brand power that the mark holds and rebranding has to be you know part of that as well in terms of you know your considerations so could you rebrand just a little bit maybe sometimes it would work likes instead of like fuzzy babies fuzzy infan


Thanks Audrea your participation is very much appreciated
- Scarlett Maclaurin


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