Trademark Opposition Attorney
For TTAB Proceedings
(Often Representing the Underdog)
Most of our clients are small businesses trying to protect their trademarks, often from someone bigger who is claiming that the smaller businesses trademark is likely to be confused with the mark of the bigger company. When big companies try to enforce their trademark rights beyond what is reasonable and legal, it can be called trying to enforce a “right in gross” or can be called “trademark bullying.” Many trademark oppositions or cancellations are preceded with a cease and desist letter from the potential opposer.
Even if the TTAB (USPTO Trademark Trial and Appeal Board) finds that an opposer has proven that its marks are famous for purposes of likelihood of confusion, fame alone is not sufficient to establish likelihood of confusion. If that were the case, having a famous mark would entitle an opposer to a right in gross, and that is against the principles of trademark law. See University of Notre Dame du Lac v. J.C. Gourmet Food Imports, Co., Inc., 703 F.2d 1372, 217 USPQ 505, 507 (Fed. Cir. 1983). Fame is just one factor in a likelihood of confusion analysis (the fifth DuPont factor of thirteen). The other du Pont factors must also be considered when they are applicable.
Differences in the goods and services, different commercial impressions by the marks, may also be significant countervailing factors dispelling any likelihood of confusion. See Blue Man Productions Inc. v. Tarmann, 75 USPQ2d 1811, 1819-
A smaller business may be able to protect their trademark rights against an opposer or protect their trademark as an opposer but even if the underdog is completely right in theory, it still must be proven following the proper legal procedures for an opposition or cancellation proceeding (if the proceeding is before the USPTO).
The steps to successfully completing or defending from an opposition are difficult and involve understanding not just trademark law but also federal court procedures for admitting evidence, understanding discovery and how it works and other knowledge. Not Just Patents® Legal Services works with small business to protect trademark rights and works to defend these rights within small budgets. Corporate giants have the budgets to oppose and cancel but do not always have the facts on their side. Let us take a look at the facts and see if your business has to just give in or if your business has a right to defend what you have worked for.
How to Get Started on Claiming Your Trademark Rights
If you have received a Notice of Opposition or Petition to Cancel you need to act quickly. The USPTO does not recommend that trademark owners represent themselves in proceedings (pro se).
Strict compliance with the Trademark Rules and the Federal Rules of Civil Procedure is expected by all parties whether or not represented by counsel. While Patent and Trademark Rule 10.14 permits any person to represent itself, it is generally advisable for a person who is not acquainted with the technicalities of the procedural and substantive law involved in an opposition proceeding to secure the services of an attorney who is familiar with such matters. See Shutemdown Sports, Inc. v. Lacy (TTAB 2012). Many attorneys that have filed trademark applications have never successfully handled a trademark opposition or cancellation. Like anything else, experience matters.
If you have found a competitor using your trademark or a mark that you believe conflicts with your trademark has been applied for or has been published for opposition, you need to act quickly. Waiting too long can have bad unintended results. Opposing a trademark before it registers is easier than trying to cancel the mark after it registers. A registered mark remains registered with full rights during a cancellation proceeding while the same mark being opposed earlier remains a pending application with fewer rights. Missing the opposition for an intent-
If you are just starting the process of obtaining a federal registration, we suggest our service, our methods and strategies. A Not Just Patents Five-
To Verify a potential trademark is strong, available to use, and ready to register, the process should be more than a direct hit federal search. To maximize the commercial strength and minimize the weaknesses of a trademark, a potential trademark user should:
5) Verify the Goods and Services ID is both the correct and the maximum claim that are user can make and verify that the Goods and Services ID meets USPTO requirements before filing.
(*We don’t stop here but this is a good start. Call us if you want to plan for a strong mark.)
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