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Trademark Help : Trademark Opposition, Cancellation, Answer |
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Trademark Opposition
Questions and Answers - FAQs If you currently have a trademark problem click here.
What is trademark opposition and what does it mean? Seven very important things to understand about an Opposition:
A
trademark opposition or cancellation, or Petition to Cancel means that a party
wants you to stop using your brand, product, or service name - and can. If your trademark is registered circle ®, a Petition to Cancel means cancellation of your name and right to use it - just like an opposition - years later. If you simply used a trademark and then applied for a trademark, you may be accused of infringement, and your use may cause a District Court law suit. If you never applied for a trademark, then your trademark application or registration cannot be opposed since you have none, and instead the remedy for one claiming infringement is to file a law suit against you for use and damages from your use. If you applied for a trademark, even though the trademark examiner reviewed and approved it, the mark is Published for Opposition so others may oppose, and opposition is becoming increasingly common and easier than ever before. The more successful your business becomes, the greater the chances others will be aware of your brand name and oppose it (force you to stop using it - and demand you destroy or give everything to charity with that brand name on it). A trademark is not a license, it's more like a 'permit' - and can be 'revoked' - by petition of others, often in your industry, yet just as often outside your industry. The cost to file an opposition or cancellation is just $300 or so, plus legal fees. As you'll read below, brand owners must routinely oppose - and do. If you are having a trademark problem, get started now >> How often does trademark opposition and cancellation happen?
All the
time. Oppositions, cancellations (name-based law suits) must be filed
due to a combination of legal doctrines, routine practice, and IP
budgets.
* A Petition to Cancel is a trademark opposition after a trademark is registered, in simple terms. One way or another, you're notified. You're angry, worried, concerned about your business, and not sure how to handle the trademark opposition, cancellation, or other threatened legal action, or even exactly what it means. You have about 40 days to reply to the Opposition or Cancellation with an Answer, yet may have never seen an Answer or thought about what an Answer is. Or the cease and desist letter gives a time by which you must reply. If you are having a trademark problem, get started now >> Accused of infringement, opposed, or facing cancellation based on a name, all or some of your business is at risk. The Opposer wants your name, and perhaps damages for using it, and trademark opposition and cancellation can be a first step to a civil lawsuit - or a civil lawsuit can be the first step. One of the safest trademarks is your own birth name, however, I've helped people that shared the very same birth name in trademark oppositions. Why do trademark attorneys, brand managers, branding companies so often overlook trademark opposition and cancellation when selecting brand names?
If you
don't know what to look for, you'll probably overlook it, which is why
I provide trademark help to attorneys, brand managers, and individuals. The oversight made last year (or worse yet a decade ago) now has put your brand in real peril, and the chances the Complainant has an interest in entertaining an offer to buy your Mark are slim and quite rare. Why won't the complainant simply buy my mark? People
don't sue or file an opposition or cancellation if they're interested in
making a deal with you. If making an offer was their intent, they would
send a polite letter instead, and make an offer. You need advice and trademark help from someone that works both sides - the creative and the legal - though that type is nearly impossible to find. I won my trademark opposition, resolved other problems, and can help with yours, as a business consultant, from life experience, and with an investigative approach. I began helping individuals on their own (Pro Se), and now work in the background for individuals as well as attorneys and their clients. If you are having a trademark problem, get started now >> In simple terms... a trademark opposition is a law suit. A trademark Opposition or Petition for Cancellation, like any other business problem, must be effectively dealt with until resolved. A party intends to force you to stop using your brand name. This means anything and everything with your brand name on it is at risk:
A trademark is a brand, the brand involves marketing, promotion, packaging, logos, fonts, colors, distribution and channels of trade, and other things only experienced marketing and creative directors know - and know better than many attorneys. Most IP Attorneys rely upon what they know best, case law, however, business changes so fast that case law is often outdated, and rarely the best defense in a trademark opposition. If you are having a trademark problem, get started now >> Very few experienced IP attorneys understand branding, (the basis of trademark disputes) at the level required to win, and fewer ever bother to investigate the parties involved or the actual market specifics of the cases they work on. Many push legal papers back and forth at great expense, and without ever making a strong case or even using common sense - as it relates to business. The more you read, the more you'll see why an IP Attorney may not be your best course, at least initially - and also how you can hire an IP Attorney even after you answer Pro Se (on your own), or through your own business counsel - with help. An Opposition is a law suit, in a court (Trademark Trial and Appeal Board or TTAB) that is lower than federal circuit court, (a lower court). However, many trademark cases can escalate from the lower court to circuit court (a higher court), and then include monetary damages and other forms of 'relief'. The argument chosen and presented in answer right now, at the initial Opposition or Petition to Cancel stage, based on serious investigation, can have great bearing and effect on the costs and outcome of the balance of this law suit. If you have not received an opposition or cease and desist, and are naming, we can choose the safest name, build the defense now, before its too late - once used. If you are having a trademark problem, get started now >> For the most part, oppositions are trials by paperwork, yet they are trials. Trademark opposition and infringement law suits can take years. Though the shortest time frame is about 1 year, some last many years. Trademark trials proceed fairly slowly with an exchange of documents and requests i.e. a Trial by Paperwork. At key points, deepest assessment and very best judgment is critical, not only to win, but to avoid escalation and greater liability, including money damages. Though there are certain similarities, each opposition must be assessed on its particular nature and merit - from legal, business, and marketing perspectives. Boilerplate solutions increase chances of escalation, protraction (from a year to years), and create many liabilities and risks - including the risk of being sued for damages based on infringement...then potentially owing the petitioner $millions. Trademark cases are going on all the time - lots of them - every day. Trademark disputes rarely make the news - even though $millions is often at stake. Trademark oppositions or cancellations are 'dull' for the most part, and companies about to lose their names prefer not to publicize. As you'll read further below, due to the doctrine of acquiescence, brand owners must oppose other marks (registered or not). If you are having a trademark problem, get started now >> Then
there's the small budget/large budget problem: Other oppositions and cancellations escalate $100,000 to $1million as a result of large budgets.
Intellectual Property (IP) and trademark law firms and practitioners
make their money on hourly fees, leaving no direct incentive to expedite
a resolution. Oppositions are often lost due to:
No opposition or complaint is harmless, and no opposition can be overlooked. DO NOT TAKE CHANCES WITH YOUR OWN NAME.
If
you are having a trademark problem,
get started now >> You
do not need to have a trademark to have your company, product or service
name at risk and/or to receive a cease and desist that may be enforceable. Quick links: Basics of trademark oppositions: What is a
trademark opposition? A trademark opposition is a law suit, except you probably will not have to appear in Court, and likely there will be no direct monetary damages. However, law suits based on oppositions can result in $millions in damages, which is the primary reason to take an opposition very seriously. In many cases, the entire opposition is conducted with the exchange of papers. You could think of most oppositions as a 'trial by paperwork'. Therefore, the papers, and the exact wording on them, is critically important. Without trademark experience, you should never Answer an Opposition or Petition to Cancel without some help. Mistakes can be disastrous. Read more...
If
you are having a trademark problem,
get started now >>
Never think of a trademark proceeding as "LA Law" or "Court TV". The biggest mistake people make is assuming they understand trademarks and trademark concepts, however, many seasoned attorneys do not. An attorney spent years in law school and may have in practice, yet real estate, divorce, tort, criminal, and even business law is most often much different than trademark law and related concepts. Some end up here as a result of their own attempts, while others had attorneys, yet the attorneys either did not understand trademarks - or did not take the time to understand your brand and your trademark. Others hired great IP Counsel, yet Counsel did not understand the nature of the opposition or cancellation in business terms and in its full scope and detail. If you are having a trademark problem, get started now >> What is an Answer to a Trademark Opposition? The Answer is your response to the allegations or claims made in the Notice of Opposition (or Petition to Cancel). Like
an arraignment, though you may wish to reply with thousands of pages or
'argument' justifying
why your mark should not be opposed, that is not appropriate in an Answer.
However, you have some options in how you plead. As a layman, it's nearly impossible to guess. As an attorney, you must know the business, trade customs, background, history and more. An artful Answer can be the basis for
the strongest defense. Many oppositions are boilerplate, and many (weak) Answers are as well. An 'artful' Answer is not boilerplate. A strong answer, where very careful consideration has been given to the entire case - from a legal and business perspective - becomes the foundation for everything that may follow - with defenses built into it. Artful
answers can nip problems in the bud, putting you on a firm foundation that
can lead to winning an opposition from the very start.
Unless you
have truly studied trademarks and understand how opposition and
cancellation relates to business, answering Pro Se (on your own) is
difficult if not impossible, and can be very risky. Certain
answers can be more harmful than helpful, and everything, written or
oral, should be very carefully assessed since it becomes of record. An Opposition, in and of itself, does not include monetary damages, yet a law suit based upon an Opposition can. You could lose your mark, and be sued. Evaluating trademark problems from a broader perspective than most has proven to be very helpful - with or without Intellectual Property Counsel.
If
you are having a trademark problem,
get started now >> The Opposer is a very large company. Should I be overly concerned? Not necessarily. You should be responsive, however, whether the Opposer is large or small should not be a consideration, as long as you have grounds. Why have I become the defendant? You are the defendant since the plaintiff, the one alleging the damage your mark's registration could cause them, is the plaintiff or petitioner. What should I do about a trademark opposition? I
recommend we begin to talk about this immediately. In more than one opposition,
this has led to a clouding of the initial issues, and over $500,000 in
legal fees.
Judges at the Trademark Trial and Appeal Board are like 'surgeons' in regards to trademarks and trademark-related concepts - while you might consider even the best Civil or Federal Judge as a 'General Practitioner' of law. Trademark Trial and Appeal Board Judges deal with intellectual property issues all the time, and have a much deeper understanding - while civil and Federal Judges may have only a very basic understanding of trademark, business law, and business customs and practices. The civil judge may have last ruled on a divorce, property settlement, or other completely unrelated matter - just before ruling on your trademark.
The judges
at the TTAB focus on IP (intellectual property matters) all the time, and understand advanced concepts
in intellectual property rights. A Motion for Summary Judgment under Rule 56 seems to be frequently used to take cases out of the Trademark Trial and Appeal Board (and the TTAB's expert judges and simpler, less costly 'trial by paperwork' procedures), and into Civil or Federal Court, and costly personal appearances by both parties and their counsel. In addition, since the case is being heard by a civil judge (typically unfamiliar or at least far from being as familiar as a judge from the TTAB), the time and costs to prepare for a civil case are what drive the costs into the $millions. If you are having a trademark problem, get started now >> Often the
choice is between a jury trial and a bench trial. A Rule 56 Motion for Summary Judgment causes suspension of the TTAB proceeding, since one case cannot continue if the outcome of another concurrent case shall effect it. Therefore, a Rule 56 Motion for Summary Judgment, in a higher court (civil or federal), causes the Trademark Opposition or Trademark Cancellation proceeding to be suspended pending the outcome of the civil case. You would think you could later remand the case back to the TTAB (wanting judges that know trademarks to hear it) yet, after having it heard in civil or Federal court, this seems to be the exception, not the rule. To get to the higher court, the Motion for Summary Judgment based on Rule 56 usually includes new allegations that the TTAB cannot hear. These 'may be' trademark settlement agreements gone awry that turn into breach of agreement, and/or other issues. Virtually all trademark oppositions and cancellations that escalate to civil court via Rule 56B Motion for Summary Judgment (that we have seen) have little or nothing to do with the initial opposition or cancellation - or its initial grounds or basis. This is one reason I tell clients to be aware that anything they say or do could well end up in a court of law, and therefore to avoid settlement. I have
never seen any reasonable settlement, though they may seem reasonable at
first glance. Am I being singled out with the trademark opposition? Not
always. To maintain a trademark registration, a trademark owner/registrant
must police its mark in order to maintain its rights in the mark. This does not mean that any trademark opposition should be viewed as frivolous, or that any trademark opposition need not be taken seriously. A trademark opposition is very serious, and can cause very serious problems. Is the Opposer trying to put me out of business? Not
necessarily. See the paragraph above. Many Oppositions, especially at
first glance, are (or may seem) unwarranted. Some are simply a matter of
procedure where an effective Answer can resolve the problem. In layman's terms, acquiescence means not doing anything about a potentially damaging problem that you have been made aware of over a reasonably long period of time - i.e. acceptance without protest. The Opposer needs to oppose to avoid acquiescence since acquiescence can severely limit the rights of the Opposer. Though
I find most oppositions are simply routine procedure to avoid
acquiescence, they all have the potential to put you out of business,
and/or suffer the consequences of having to change a brand, product, or
business name you have built and developed good will and awareness of. Think of a trademark opposition as a business problem that will not likely go away and that must be dealt with effectively and efficiently - in the best possible manner - with serious thought, analysis, research, and deep consideration of options, contingencies, and alternatives depending on outcomes and scenarios. You would take a 'slip and fall' allegation and potential suit for damages seriously. A
trademark opposition should be thought of the same way, since the outcome
- after years of effort and great expense - can easily result in harm to
your business. If you received a letter that indicated someone was complaining they had a 'slip and fall' on the ice on your front steps, you wouldn't answer directly - or immediately - would likely consult an Attorney - and would more than likely investigate the situation thoroughly and thoughtfully before responding. If you are having a trademark problem, get started now >> Business management, unaware of trademark concepts or the consequences of a trademark opposition, may dismiss a Notice of Opposition, Petition to Cancel, even a cease and desist letter. Treat an opposition/complaint like any legal business problem - seriously.
I strongly recommend you treat any trademark opposition - any cease and desist letter - or any complaint made against you or your business just as you would a 'slip and fall' law suit, or the threat of one. Losing the name of your brand, product, or service can cause harm - and harm is the basis of nearly every Trademark Opposition Notice. The opposing party is demanding you give up your name, and likely, since they filed a law suit, or threatened one, not willing to settle. A trademark opposition can have grave consequences if answered improperly, or not answered altogether. Unfortunately, like a serious 'slip and fall' complaint (or worse since there are often no damages awarded), the legal fees involved may be significant i.e. $10k-$20k just to retain an intellectual property Attorney - the best of whom seem to charge about $1000/hour. Even at $250/hour most qualified firms require a significant retainer. Worse yet, you need an intellectual property or trademark Attorney, (not a 'general practitioner' Attorney), since trademark concepts are far different than even the best 'generalized practice' Attorney could imagine. More trademark problem FAQs: My mark is not even the same as the Opposer's yet it can be opposed? Yes. Marks do not have to be identical to cause an opposition. For more information see factors related to likelihood of confusion >> My mark was allowed by the trademark examiner yet it can be opposed? Yes.
After the trademark examination,
your mark was Published for Opposition.
The trademark examiner has reviewed your application and done the best
he/she can to avoid opposition - and assess other issues - prior to
allowing your mark to be Published for Opposition. Should I attempt to settle before an Answer? No. Rushing to settlement without an Answer is (we feel) rarely your best option. If
the opposer wanted to settle, they would not file an Opposition, which can
be thought of the same as a law suit. I have often seen what I feel to be obvious defenses and solutions overlooked, as well as a number of apparent errors in judgment. If you are having a trademark problem, get started now >> Should I attempt to settle after an Answer? No, maybe, definitively not. I recommend not attempting any settlement on your own. Without realizing larger issues and concepts, you may make statements that are contrary to your position. Anything
you say can and will be used against you. Since
an opposition is a law suit, no opposition is truly 'friendly'.
What should I do about this Notice of Opposition or Cancellation? Talk to a trademark attorney and then let me review the specifics, provide some explanation and analysis, and report back to you. I
always recommend you seek the opinion of qualified legal counsel - whether
or not we become involved in helping you - and whether or not you choose
to be represented, or act Pro Se (on your own). However,
oppositions happen and seemingly will continue to. I do not foresee any
legislation or changes that could eliminate trademark oppositions or
cancellations. Learning the hard way, yet spending the time and effort to win, I now view Trademark Oppositions as simply another potential business liability. I also have come to recognize that there are so many variables in a trademark objection that there is no way to set a budget unless you have a working crystal ball. You can simply never know what the other side will do that increases costs, and while there are some 'jumping off' points, mainly you have to stick to the procedures or face losing your Mark. Even if
you are just a start up, there's nothing more important than your trade
or brand name, being allowed to continue to use it, and doing everything
to maintain your mark and your rights in it. If you are having a trademark problem, get started now >> Where
I fit in:
Not an Attorney - yet helping with or without counsel. In many cases, I also identify trademark uses that put the mark at risk. My approach combines legal and business concepts to develop best solutions. Legal Counsel seems ideal for the granular - and sometimes boilerplate - yet often, in my experience, overlooks defenses, argument, and solutions that are legal yet 'outside the legal box'. Many attorneys do not have the time, or the business acumen, even though they may be exceptional 'in the box' of trademark practice. I
help
recognize, develop and assess solutions designed to avoid protracting cases
from the very start - in the Answer - and this is the answer to avoiding
escalation.
I
help step by step, explaining every step of the way. A strong thoroughly assessed non-boilerplate Answer - where the Answer to the Opposition is the best and most solid it can be - by looking at the entire issue, researching the opposer, assessing every option, and taking everything into consideration - is the first step to winning a trademark opposition. A brilliant Answer takes time and effort, yet the alternative may be losing your trademark, harm to your business, and/or a long, protracted case.
Based on branding and marketing principles, trade customs, and other things I know very well from 30+ years following market trends, my methods have been extremely effective for non-Attorneys (Pro Se) as well as Attorneys that contact me to help in simple and highly complex trademark-related brand problems. Self taught in trademark law, yet an avid reader, it all clicked in my mind when I immersed himself in and resolved my own trademark problems. The goal is to nip trademark problems in the bud, with an extremely effective Answer and/or other documents that resolve problems rather than create new ones, or protract existing ones. To me, it's all about time spent up front to reduce time and expense later. One of the prevailing strategies is to financially drain the other party. I do my very best to turn that around - without boilerplate that almost always protracts. What works best is compelling argument from a branding, marketing, commerce, and investigative perspective - and that's what I do - for attorneys and individuals. Please note that I am not an attorney, therefore my services may augment yet are not intended as a substitute for advice from a knowledgeable lawyer licensed to practice trademark law. If you are having a trademark problem, get started now >> Other trademark-related pages:
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