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Once all objections of the examining attorney regarding a trademark application have been addressed, a trademark application is approved for publication. Anyone who believes that their mark will be damaged by the published mark can initiate a trademark opposition proceeding before the United States Patent and Trademark Office’s (USPTO) Trademark Trial and Appeal Board (also known as the TTAB). More specifically:
“An opposition is a proceeding in which the plaintiff seeks to prevent the issuance of a registration of a mark on the Principal Register. ‘Any person who believes that he would be damaged by the registration of the mark’ may file an opposition thereto, but the opposition may be filed only as a timely response to the publication of the of the mark…”
Some of the more common grounds for a trademark opposition is for the senior trademark holder to claim that the junior trademark is confusingly similar to the senior trademark. The senior trademark holder has to show their superior trademark rights, and this is typically shown through registration of one or more trademarks. It is also possible to oppose a trademark through common law trademark rights.
There are less common grounds for trademark oppositions, including:
- merely descriptive or generic;
- fraud in attempting to register the trademark;
- a trademark that disparages a particular group;
- a trademark that is scandalous; and
- a number of other grounds set forth in Section 300 of the TBMP.
The trademark opposition process is similar to a court proceeding, conducted before the TTAB. Due to the complexity of the trademark opposition process, including depositions, discovery, motions and counter-motions, it is not generally recommended for individuals to either initiate or defend a trademark opposition on their own. And, while some pro se advocates do successfully represent themselves In TTAB proceedings, the learning curve is substantial.
Last Modified: February 23rd, 2010