PRACTICE AREA
Trademark Oppositions and USPTO Proceedings Attorney
When someone believes a trademark should not be registered, they can file a complaint with the United States Patent and Trademark Office. The trademark applicant must argue their case before the Trademark Trial and Appeal Board (TTAB). But an opposition case is one of many reasons you may need legal assistance with a USPTO proceeding. Everything from applying for trademark registration to transferring marks requires a knowledgeable IP attorney on your side.
When you are facing opposition to your trademark registration or another USPTO proceeding manner, it may be time to contact the BOAG Law legal team. We are here to represent you through these legal proceedings.
What Is a Trademark Opposition?
While you may believe the trademark filing process is easy, there can be a few problems along the way. In some situations, someone might have a reason to oppose your application. According to the Trademark Act, there are a series of reasons why an individual or company can oppose a trademark. Anyone who believes the trademark registration may cause damages to them can file a complaint to the Trademark Trial and Appeal Board.
In their complaint, the opposing party must list reasons why a trademark should not be granted. If there is a basis for these claims, then this party can submit an opposition to the application. The opposition must often be filed within 30 days after the trademark’s publication in the UPSTO’s Official Gazette. However, there are times when an extension may be granted to an opposing party.
A business or individual can file a trademark opposition on several grounds, such as:
- The mark is similar to an existing trademark
- The mark is not descriptive, or it is too generic
- The mark lacks decisiveness
If the Trademark Opposition succeeds, the USPTO can cancel or deny the application. However, if the complaint is unsuccessful, the trademark can be registered, but the opposing party can appeal the TTAB’s decision.
similar to an existing TM
not descriptive, or too generic
lacks decisiveness
Other USPTO Proceedings Involving Trademarks
Along with Trademark Oppositions, other proceedings can involve the USPTO. The most common ones include the following:
- Trademark applications register a trademark with the USPTO.
- Trademark cancellations void an existing trademark registration.
- Trademark infringement is a lawsuit brought by a trademark owner against a third party for unauthorized use of the mark.
- Trademark dilution can stop the unauthorized use of a trademark that weakens the mark’s distinctiveness.
- Trademark abandonment occurs when a trademark owner stops using the mark, losing the trademark’s legal protection.
- Trademark renewals maintain the mark’s standing by filing a renewal application and paying the required fees.
- Trademark assignment allows for transferring ownership of a trademark from one entity to another.
Reach Out to BOAG Law for Your Trademark Opposition Process
Any proceeding involving the USPTO requires assistance from a skilled and knowledgeable trademark legal team. At BOAG Law, we can help defend you against any trademark case, whether you need to fight infringement charges or opposition filings. Additionally, our team is well-versed in assisting trademark holders in protecting their trademark rights. To schedule a confidential consultation, contact our offices online or call us at 212-203-6651 to schedule an appointment. We are available for in-office consultations or videoconferencing.