Trademark examination report shall contain the reason for objection. on failure of filing the counter-statement the application for registration deemed to … The counter statement shall typically comprise the following: Oftentimes, during the trademark registration process, the Trademark Registrar raises objections on the intended trademark if it violates rules and laws of trademark registration. First, the Opposer files its brief, then the trademark Applicant files its brief, and then the Opposer is presented with the opportunity to file a rebuttal brief. In the event that the main charge of trademark opposition case is that the newly filed trademark is merely descriptive (Section 2(e) of the Act), the Opposer will need to generate an explanation as to why the mark is merely descriptive. Mere descriptiveness. The requirements for a properly drafted Answer may be found in TBMP Section 311. a. Trial Briefs: Trial briefs allow for each respective side to present a coherent argument and summation of their positions in alternating fashion. 3. Each respective party must include an affirmative defense (if appropriate) in its brief or waive the right to the affirmative defense. While there is no standard format for an Answer, it is generally best to answer each numbered paragraph of the complaint by providing a short statement either admitting or denying the alleged facts. The Applicant, contrary to the required trademark registration provisions, never had a bona fide intention to actually use the mark in commerce when the trademark application was submitted. A trademark is a source identifier – when an individual sees a trademark attached to a good/service, the viewer immediately understands the source of that good/service, or the company, which produced it. can your trademark be considered to have more than one meaning such that it is not merely descriptive of your applied for goods and services? Therefore, the TTAB requires the Opposer to provide both procedural and indeed substantive arguments, which support the proposition that the trademark should not register. are all of the goods and services in the Opposer’s registration being currently used in commerce? See the Trademark Trial and Appeal Board forms. Likelihood of confusion. Alternatively, the Opposer may mount a likelihood of confusion argument and will be required to demonstrate how under the 13-part test outlined in the In re E.I. available under the jurisdiction of the Trademark Trial and Appeal Board (TTAB) are akin to real, bona fide lawsuits filed in federal court. (This article has been updated for 2021). Should the plaintiff’s standing be called into question? It takes about three (3) months from the close of the opposition period (including extensions) until a registration issues if the case is not an Intent to Use case. It needs to be submitted to the same registration office where the applicant has applied for the trademark. £200: Opposition based on, or including, any other grounds. Pleadings are fairly straightforward with the Opposer making an initial claim as to why the mark should be denied followed by the applicant’s response to the motion. For example, the trademark BED AND BREAKFAST REGISTRY has been found to be merely descriptive of lodging reservation services. The bar to be a qualified party to file the Trademark opposition is admittedly fairly low: “15 U.S.C. There are motions, discovery, and trial and as such, a trademark opposition proceeding should be taken very seriously and with the understanding that they can be time-consuming and costly indeed. Stage 1 – Filing a Notice of Opposition/Filing a Counter-Statement: Any person wanting to oppose a mark can do so by filing a Notice of Opposition on the prescribed form along with the prescribed fee within four (4) months of advertisement of the mark. Receipt of a notice. After granting preliminary approval of a trademark, it is published to the Official Gazette for 30 days which allows any individual/company the opportunity to Oppose to the registration of the mark if the Opposer can demonstrate that he has standing (legitimate interest in the case) and a substantive argument. You may file a petition to cancel, after the trademark registers. Fundamentally, the objective of the conference is to facilitate an open discussion about the “nature and basis of the involved claims and defenses, the possibility of settlement of the case or modification of the pleadings, and plans for disclosures and discovery…” TTAB 408.01(a). If you want to oppose the registration of a trade mark then you must file a TM7 ‘Notice of opposition and statement of ground’. An opposition must be filed within three months of the date of publication of the EUTM Bulletin in which the application to be opposed is published. Trademark opposition guidelines may be found in the Trademark Board Manual of Procedure. In the event that you did not respond to a notice of opposition (or potentially other required information), you will likely receive a Notice of Default which means that because of your inactivity, the TTAB has issued a ruling favorable to the party who has filed the Opposition. The notice of opposition may only be filed in one of these languages and the language must also coincide with one of the two languages chosen by the applicant for the European Union trade mark, as indicated upon publication of the application in the EU Trade Marks … This includes the time to file an Answer, the initial conference, initial disclosures, discovery, and trial dates. Such defenses include that the Applicant should be entitled to registration subject to certain restrictions to its identification of goods or services. 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. When filing the answer to the opposition, there are several fundamental things to keep in mind. Remember, Trademark Opposition proceedings along with all of the other proceedings (trademark cancellations etc.) More: Reply to Trademark Objection. The Opposition Division of the EUIPO uses the five languages of the Office (English, French, German, Italian and Spanish). (one way to determine this is to conduct a search of the Opposer’s website and commercial activities); are the Opposer’s goods and services in the same class as those in your trademark application? The discovery phase, conversely, like any lawsuit, is an extensive and resource-consuming process and consists of requests for production of documents, admissions, written interrogatories, depositions etc. You basically have three options: 1. Of course, none but the most prophetic among us can guarantee an outcome but there are at least enough markers and guideposts to look to in order to evaluate one’s chances of success or failure. §2.64 (b). Fight Back On Your Own.To do this effectively, you will need to learn how to navigate the Federal Rules of Civil Procedure properly. Depending on the facts of the case and relative strengths of the parties’ positions, doing so could provide needed leverage at the discovery conference and later settlement discussions. The party that files a notice of opposition is called the Opposer. The USPTO recognizes that just because an examining attorney determines based on a preliminary review that a trademark is suitable for registration, that doesn’t necessarily mean that relevant third parties with an interest in the trademark should not have the right to oppose the mark’s registration. Step #2:  Analyze the Opposer’s claims. Draft the Answer. Of course, there are certain instances under which the TTAB will grant an extension of time to answer if the defendant can show good cause. The Notice of Opposition must contain (1) a short and plain statement of the reason why opposer believes it would be damaged by the registration of the opposed mark (i.e., opposer’s standing to maintain the proceeding); and (2) the grounds for the opposition. If the losing party is not satisfied with the decision, he/she may appeal to the United States Court of Appeals of the Federal Circuit. All Rights Reserved. Remember, trademark law requires a mark to be sufficiently “distinctive” and if a trademark is synonymous with a specific feature of the goods/services sold under the trademark, it is said to be a descriptive trademark and therefore ineligible for registration (unless the mark has achieved secondary meaning). In order to oppose a trademark, one must file a Notice of Opposition with the TTAB. What is interesting about the format of the Answer is that while there are no strict structural guidelines to a proper response, there are certainly best practices. The Notice of Opposition must state and articulate both the Opposer’s standing to file the opposition and the substantive grounds for the opposition. Here are six steps to consider when preparing and filing an Answer to a Notice of Opposition: Step #1.  Review the Opposer’s complaint. In case if the examination report contains any observations, the same will be communicated to the applicant/trademark agent for submitting a reply to the examination report. Thus, anyone with a “real” or bona fide interest in the proceeding of the trademark is eligible to oppose it. The TTAB’s primary purpose is to decide whether or not a given trademark deserves trademark registration in the United States Patent and Trademark Office (USPTO). In general, such oppositions need to be filed within a short period of time (perhaps as little as two months from publication of the attempted registration). This situation is known as Trademark Opposition. While a Trademark Opposition Proceeding does not occur in Federal Court, it has many of the same procedural aspects of a lawsuit including pleadings, discovery, and trial. Failure to do so will move the mark to abandoned state and anyone will be free to apply for its registration. Time limits for filing Notices of Opposition or Requests for Extensions of Time to Oppose are strictly enforced. A counterclaim is where the Defendant/Applicant seeks to attack the pleaded registrations of the Opposer. Trademark Opposition Process: A Complete Procedural Guide to the Trademark Trial and Appeal Board (TTAB Oppositions) written by trademark attorneys. A trademark may be a word, logo, phrase, sound and serves to distinguish a product from those of the company’s competitors. Apart from a Trademark Registration, EbizFiling.com also helps you with Trademark Objection filing, draft Trademark objection reply letter, Trademark Renewals, Trademark Assignment, Trademark withdrawal, Trademark opposition and Trademark rectification services. The failure to comply with the case management dates could irreversibly jeopardize a party’s rights. Trademark Opposition reply format. The aggrieved party will send the notice of opposition to the applicant as well as to the registrar of the trademark in “FORM O” along with prescribed fees. So, now that we know who may file the opposition, on what grounds can the trademark opposition be filed? Updates on developments related to IPR (Intellectual property). What is a notice of opposition? COVID-19 Global Trademark Opposition and Cancellation Updates. Once the Notice of Opposition has been served upon the Defendant, the TTAB will issue an Order setting forth the relevant dates for each successive phase of the proceeding. Well, in this case, the Opposer must actually demonstrate that his mark and its usage in commerce precedes the newly applied for mark. Trademark Opposition is a step-by-step procedure which can be filed by anyone including companies, partnership firms or individuals. The following is a high-level summation of the process involved in a Trademark Opposition Proceeding: Notice of Opposition is Officially Filed: Within 30 days of the trademark’s publication to the Official Gazette, an Opposer submits a Notice of Opposition, Respondent’s Answer is Filed: Once the trademark applicant decides that he/she wants to fight the trademark opposition proceeding, he must submit an Answer to the Complaint within 40 days of the Notice of Opposition. Is the substantive argument weak (Likelihood of confusion would be a preposterous outcome of the mark’s registration)? In order to demonstrate prior use, the Opposer may illustrate either earlier trademark use or actual prior registration date. The Answer is not the place to respond to the merits of the Notice of Opposition. This includes all requirements and deadlines that must be adhered to in an inter partes proceedings before the Board. Trademark opposition proceedings are contested matters before the U.S. Trademark Search Trademark Order TM Office Action. Testimony Stage: Again, this period is heavily governed by dates and timelines. The main difference between Trademark Objection and Opposition is that Objection is raised at a preliminary stage of the trademark registration process. 37 C.F.R. If you cannot do so, then state that you have insufficient facts to either admit or deny the claims. Here is a recent example of an office action filed with the USPTO that succeeded in overcoming both a likelihood of confusion refusal with a registration under Trademark Act Section 2(d), 15 U.S.C. An Opposer may raise any available statutory ground for opposition that negates the defendant’s right to registration, including likelihood of confusion, mere descriptiveness, or that the Applicant lacked a bona fide intention to use the mark at the time of fling. We use cookies to improve your experience on our website. The complex and nuanced rules of the Federal Rules of Civil Procedure along with the idiosyncrasies of trademark law, as governed by the Lanham Aact (15 U.S.C. Such a registration is raised by the trademarks examiner. © ​​2020 Cohn Legal, PLLC. It is first sent to the Registry for review and if all the formalities are met, the Registry will then serve the notice on the other party.A … If you are the Applicant, it is important to understand the basis for the Opposers’ claims. If your status in the trademark registry shows that it is “objected”, it means that the registrar finds the mark you selected in the application filed is not eligible for being registered. Principally, the testimony period allows for alternating periods in which each respective side can present the evidence that they have gathered. The early detection of potentially conflicting trademarks is an essential part of any trademark protection strategy, but it is a particular necessity if you are to meet the deadlines associated with submitting objections (known as ‘oppositions’) to an attempted registration by a third party. The party that filed the application that is being opposed is known as the Applicant. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973) case, the total commercial impression of the trademark would lead to consumer confusion. The application shall contain: the name of the aggrieved party, Conclusion:  As a defendant in a trademark opposition proceeding, it is important to have a well-crafted answer, affirmative defenses, and counterclaims, where appropriate. The USPTO is concerned with balancing the competing interests of protecting the trademark holder from unnecessary harassment while still providing a legitimately concerned party with the opportunity to oppose the trademark. If a person objects to the registration of a trademark that has been applied for, they can start an opposition as long as it properly raises at least one ground of opposition set out in sufficient detail to enable the other party (the applicant) to reply to it. Challenging trademarks after registratio… does your trademark contain a logo design or other words that are not descriptive of your goods or services? Step #6. The briefs contain a discussion of the facts of the case, the relevant statutory and case law, affirmative arguments and a rebuttal of the party’s adversary’s arguments. has 40 days to file a formal answer with the TTAB. A Notice of Appeal is a different form that you must file separately to preserve your right to appeal the final refusal, if appropriate. We are also engaged in preparing Compliance calendar applicable to your establishment. When the applied trademark is published in the Journal of Trademarks, anyone can oppose the published trademark within 3 months from the date of journal publication. Here, the Opposer will argue that the proposed trademark is excessively similar to his trademark and the registration of the trademark will adversely affect his own stake in the mark. Trademark Board Rules. If the Opposer is claiming that your trademark is merely descriptive and should be refused registration, here are some factors to consider: c.  Lack of bona fide intent. After around 3-4 months, the applicant will either receive an office action outlining certain defects within the trademark application and how it may be cured or, if the trademark does not have any issues, the examining attorney will publish the trademark to the Official Gazette for “Opposition”. Remember, one of the most common grounds for a Trademark Opposition is the claim that the newly published trademark would create a likelihood of consumer confusion with the Opposer’s existing trademark (under Section 2(d) of the Trademark Act). TTAB Issues a Decision: Typically, within six months of the evidence being submitted and the trial’s completion, the TTAB will issue a decision and rule in favor of one of the parties. The response can also be made by an agent authorized by the trademark applicant. Free consultation on counter statements for trademark opposition. The plaintiff (Opposer) submits all evidence through a 30 day period and the Respondent has 30 days to submit its own evidence. Trademark Trial and Appeal Board (TTAB). Usually, the registrar takes around 3-5 months to respond to the reply filed by the applicant in respect of the examination report. Hire An Attorney.You can hire an attorney to either represent you in the proceeding or consult you on how to represent yourself (an affordable … Trademark Trial and Appeal Board practice group of Collen, a leading U.S. intellectual property law firm. Even for counter statements, the fee incurred shall be with respect to each class to which the counter is being filed. In response to the trademark opposition, the trademark owner has to give a suitable reply to such Trademark Opposition. The trademark in question, when used in conjunction with the applied for goods/services may lead to consumer confusion with the Opposer’s trademark (whether the Opposer’s trademark is registered or merely used in commerce). This authorization is made by a Power of Attorney by the virtue of Form TM48 under the Trade Marks Act, 1999. is your trademark similar in sight, sound, or meaning to the Opposer’s trademark? Speak with a Trademark Opposition Attorney to both discuss whether or not responding to a trademark opposition is worth pursuing and the best legal strategy to ensure that it is a success. However, where the EUTM is designated in an International Registration, the three month opposition period will start one month after the initial republication by the EUIPO. The most common grounds are a petition to cancel one or more of the Opposer’s pleaded registrations based on abandonment. The Trademark Act provides a series of Causes of Action, or reasons, for which an individual/company may bring a trademark opposition case. If the Opposer successfully demonstrates that he has standing and is in fact a legitimate Opposer, he will need to move on to the more tenuous part of the case, which is proving, the various elements of the charge. Contact Ebizfiling for Trademark Objection and Trademark Objection Reply. Read the Complaint very carefully and make an honest assessment, with the help of a trademark litigation attorney, of the strength of the complaint and the plaintiff’s likelihood of prevailing. This default judgment is very serious indeed and is binding against future trademark applications. Once your notice of opposition is filed, the applicant has thirty days to respond with an answer. An experienced professional can significantly improve chances of successful trademark registration by filing a professional response, addressing all the concers cited in the Trademark Examination report. § 1052(d), as well as a descriptiveness refusal pursuant to Trademark Act Section 2(e)(1), 15 U.S.C. If the trademark holder does not file an Answer, he risks losing his rights to the trademark and the application going Abandoned, Discovery: The Discovery Process is designed to allow each party to elicit relevant information and favorable facts from the opposing party and is kicked off with the requisite discovery conference whereby each side confers and discusses their respective plans for discovery. Published 16 September 2013 Last updated 9 November 2020 + show all updates. Because, going through an entire trademark opposition proceeding can be so tremendously expensive (for both sides), it is very often the case that the two parties will reach a settlement before the proceeding becomes too advanced. § 1063(a) [Trademark Act § 13(a), TRADEMARK OPPOSITION PROCEEDINGS: PRE-TRIAL CONSIDERATIONS, CEASE AND DESIST LETTER COPYRIGHT INFRINGEMENT, Trademark Opposition Process: A Complete Procedural Guide to the TTAB. The application is then open for others to oppose its registration. 9 November … This brief summary explains the procedures for opposing trade mark applications in the EU and for defending an opposition. does your trademark describe an ingredient, function, or feature of your goods? 15 U.S.C. If the Opposer cannot establish standing, the action will be dismissed before any of the substantive arguments can be raised. Remember, at the time of the Trademark Opposition motion, the Trademark in question has already posted to the Official Gazette and in the eyes of the Trademark Trial and Appeal Board, is a presumably valid trademark. Here's What you Need to Know, Copyright law covers “original works of authorship” - If someone has stolen or reproduced your work without your permission, sending a cease and desist letter is the first step. The applicant is required to file his reply in 30 days from the examination report. Objection to Trademark application can be raised by the Registrar. Possible grounds for oppositi… The response to an objection in a trademark examination report can be submitted by the trademark applicant. 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. If the applicant fails to answer the notice of opposition, the trademark application will ultimately be abandoned. Using a trade mark attorney, you can be sure that your opposition will be made in time and in the correct manner and avoid unnecessary costs. Such defenses include that the Applicant should be entitled to registration subject to certain restrictions to its identification of goods or services. The Manual sets forth the various statutes, rules, and case precedent applicable to trademark oppositions. The reply either can be accepted by the registrar or can be rejected and if the reply is rejected, the registrar will fix the hearing where the applicant has to be present for his trademark hearing. With written reply to the report, one put can put forward the arguments on how the objections are not applicable to the TM application and show the mark’s distinctive features. Perhaps most importantly, it is critical to recognize the immense time, money and resources involved in prosecuting a trademark opposition case and one should, therefore, be very careful to make an honest assessment of the likelihood of winning before commencing suit. Step #4. It is up to the TTAB to set the relevant dates for each part of the proceeding but typically, from the date of the filing of the Notice of Opposition, the defendant (yes, you are now a defendant in litigation!) A trademark is a logo, symbol, tagline, or a combination of these that represents a brand’s identity. Initially, the TTAB will send a Notice of Default containing an order allowing the respondent 30 days to show cause why judgment by default should not be … Merely not wanting the trademark to register is not a good enough reason – the Opposer must somehow personally be affected by the registration of the mark, which very often takes the form of a Likelihood of Confusion claim. The Trademark Trial & Appeal Board will set a trial calendar with the deadlines for each stage of the opposition proceeding. The opposition notice shall be made only on that grounds which are mention in section 9 and 11 of the Trademark Act, 1999. § 1063(a) [Trademark Act § 13(a)] Any person who believes that he would be damaged by the registration of a mark upon the principal register, including the registration of any mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may, upon payment of the prescribed fee, file an opposition in the Patent and Trademark Office, stating the grounds therefor, within thirty days after the publication under subsection (a) of section 1062 of this title of the mark sought to be registered.”. This can include abandonment of use of some of the goods contained in the Opposer’s registration, or all of the goods. Remember, this is litigation so there are formal and meaningful rules which must be followed. The report sets out the grounds for opposition to a trademark, such as the existence of a conflicting mark; or that the trademark is non-distinctive, etc. In conjunction with the Answer, a list of  possible affirmative defenses and potential counterclaims should also be considered. § 1052(e)(1). By continuing to use this website, you agree to the use of cookies. Oral Arguments: Oral arguments are not necessarily part of every Trademark Opposition proceeding however both sides reserve the right to request oral arguments, which can provide a more compelling medium to support the arguments made in trial briefs. Substantive Arguments: Making the Trademark Opposition Case. A counter statement or reply to the notice of opposition must be filed by the applicant within two months of receipt of the notice of opposition by way of Form TM-O along with the prescribe fee of INR 2700. Read More, How to Oppose a U.S. Very often, trademark holders will hire a trademark monitoring service to periodically check the Official Gazette and flag any pending trademarks that might infringe on the senior holder’s mark so that the senior has the chance to oppose the mark. Once a trade mark application has successfully passed the examination of the EU Intellectual Property Office (EUIPO), it is published in the Trade Marks Bulletin. Critically, Trademark Oppositions do not happen in a Federal Court but rather at the level of the Trademark Trial and Appeal Board (TTAB), which is an arm of the United States Patent and Trademark Office (USPTO). Trademark Opposition Lawyer is a publication of the TTAB Practice Group of Collen, a leading U.S. brand protection law firm. # Counter Statement: Rule 44of The Trademark Rules, 2017, states that after the filing of the notice of opposition, the Applicant for the registration of subject mark, can file a counter statement, in Form TM-O, within 2 months (not extendable) of the receipt of the notice of opposition. How to answer a trademark opposition is an important first step in defending your trademark rights. As the applicant of Trademark, one is expected to respond to these objections in the prescribed format. If the Opposer is claiming that you did not have a bona fide intent to use your mark in commerce at the time of filing, verify that: Step #3.  Review the U.S. 2. First, cost awards won’t cover all your proceeding costs. 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