FILING OPPOSITIONS AND CANCELLATIONS

OPPOSITIONS:

Before a trademark is registered, a third party may oppose the pending application for several reasons such as (1) likelihood of confusion with an existing trademark, (2) descriptiveness or genericness of the applied-for mark, (3) dilution of a famous mark, (4) fraud or bad faith in filing, (5) the mark is scandalous, immoral, or deceptive, or (6) non-use or lack of bona fide intent to use (for intent-to-use applications).

Trademark oppositions are formal legal disputes in which a party challenges another party’s attempt to register a trademark. This process occurs after a trademark application is approved by the United States Patent and Trademark Office (USPTO) but before it is officially registered. Once a trademark application passes the USPTO’s examination, it is published in the Official Gazette for 30 days. During this window, third parties can: file a Notice of Opposition, or request an extension of time to oppose (up to 180 days total with sufficient cause). 

Once the Notice of Opposition is filed, an answer must be filed by the applicant and then the matter goes into the discovery phase. This is where the parties exchange evidence and conduct depositions  if needed. Upon completion of discovery, the parties submit written arguments known as briefs. Finally, the Trademark Trial and Appeal Board (TTAB) issues a decision based on the filings and evidence. This full process can take more than 24 months depending on the complexity of the matter, however, many cases settle before reaching the final decision.

An experienced attorney is strongly recommended for this long and sometimes difficult process before the TTAB. The Colibri Firm can not only prepare and file the opposition outlining the legal grounds and facts on your behalf but can also respond to any filed against your soon to be registered trademark.

CANCELLATIONS:

Trademark cancellations are similar to oppositions but filed against trademarks that are already registered. The Colibri Firm can assist you with the preparation and filing of a cancellation to remove a registered trademark from the USPTO’s federal register within the contestable period or respond to a cancellation filed against your registered mark. Currently, the contestable period is limited to 5 years from the registration. After the 5 year contestable  period, you can only challenge a registered mark for (1) abandonment, (2) genericness, (3) fraud, (4) the mark is functional, (5) the mark is misleading, (6) likelihood of confusion.