Trademarks, company, brand, product naming, and how safe naming before an application can save your business.
by Rob Cummings, a trademark and business problem solver.
Our Trademark attorneys in San Diego present expert counseling for the trademark registration process. We will not only guide you but also provide protect your financial and intellectual property against potential risks. You can call us at (888) 636-4884 for a FREE consultation now!
Before filing a trademark application you absolutely need to know and understand the following:
- What trademarks are
- How trademarks work
- Where and how to file a trademark application
- The process of obtaining a trademark
- Avoiding and overcoming trademark problems
- Why brand names fail to be registered and never get the circle ®
- How to avoid trademark infringement law suits based on a name
- Marks that are never allowed to become trademarks
- Likelihood of confusion and the DuPont Factors
For those facing a trademark problem such as trademark opposition, office actions, and other issues, I help resolve problems with trademarks.
A trademark is the foundation of your company or brand. All know a brand name as an asset, fewer recognize the liability (which is greater).
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Startup or in business for years, reading this is critical to staying in business. Read this page first or skip to Trademark Basics and return to this page afterward.
Losing your brand name… far easier than most believe.
Trademarks (brand names) are taken away all the time – and involuntarily abandoned. Chances of having a trademark problem are far greater than not – yet few realize until years later – when losing a name is extremely damaging.
It makes no sense to cut corners in your name – ever – though in my practice I see it all the time. I help develop safe and sound names, yet spend more time helping people that did not do so, to save their brand names. I’m not talking about brand failure, next level, brand gone. What others don’t mention can result in being put out of business, and also sued.
You may be reading this before or after you had a trademark problem.
Hopefully before. Please read to avoid needing help ‘after’ since it’s costly.
I won my own cases, and believe my success with others I’ve helped (helping Attorneys and non-Attorneys) is due to my business, trade customs, marketing, general knowledge, and life experiences since 1979. I help avoid trademark problems from initial trademark application, and as the application matures, considering business, industry, and trademark issues at the same time. A rare yet necessary combination.
My services may augment yet are not intended as a substitute for advice from a knowledgeable lawyer licensed to practice trademark law. Since brands rely on trademarks, I’ve become a useful brand consultant who helps people understand the connection between marketing and trademark safety. My methods extend well beyond attorney’s boilerplate solutions to nip trademark problems ‘in the bud’.
“In the bud’ still may mean years, since trademark problems can take years to resolve, yet years less than the typical attorney’s approach. With my ability to assess risk and reward, I also help settle trademark disputes in the smartest possible manner – with the longest lasting results.
Trademark problems are far more common than most realize.
Many trademark-related problems are the result of a poorly considered initial trademark application that leads to a trademark opposition. See trademark opposition FAQs. Trademark problems rarely make the News, and those facing a trademark problem rarely want it publicized – especially since the company or brand name is at stake – either by USPTO Office Action, or Petition to Oppose or Cancel, or a Civil Action. Many trademark problems are settled with confidential agreements no outside party can see.
With the ‘ice off your front steps’, people can’t easily slip and fall.
In helping develop best solutions, I explain trademark issues, business strategies, options, contingencies and alternatives in layman’s terms. This helps my clients learn how to protect themselves from trademark problems now and in the future. I also help with a company, brand, product names, name research and development, naming, name analysis, and proper trademark and brand use, to help you avoid having a trademark problem.
This page will give you a reasonable overview of trademarks.
- Quick links on this page:
- Marks never allowed registration
- Reasons a registration may be refused
- Some factors used to assess likelihood of confusion
Basics of trademarks and the trademark process.
Trademarks and service marks (Marks) are used to identify your ‘goods and services’ to consumers, and to differentiate your brand from others. Obtaining a trademark registration, and maintaining your rights in a mark, are not as most people immediately assume. This page helps explain.
A trademark registration *is not* a license and never was, it’s more like a permit or notice.
- It’s critical that you understand the following about trademarks and brands:
- Applying for a trademark puts you on the ‘radar screen’ of those who may oppose
- If you used a Mark that another view similar, an infringement action often occurs
- Everything you write in application will be scrutinized now and later
- Anyone may cancel or oppose your trademark, filing an opposition or law suit
- Trademark problems can cost in the $100,000s
- Brand names are lost all the time due to trademark problems
- If you survive opposition, you do not get damages, just the right to keep your name
- If another party properly objects, most often you have to stop all use of the name
- Many brand names are refused registration by the USPTO
- Many brand names are lost as a result of a Petition to Cancel (years later)
- Many trademarks face cancellation by competitors (years later)
Quick links to trademark problem pages:
- Trademark Notice of Opposition Common Questions
What is a trademark?
A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others and to indicate the source of the goods. In short, a trademark is a brand name.
What is a service mark?
A service mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce, to identify and distinguish the services of one provider from services provided by others, and to indicate the source of the services.
What is a certification mark?
A certification mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce with the owner’s permission by someone other than its owner, to certify regional or other geographic origin, material, mode of manufacture, quality, accuracy, or other characteristics of someone’s goods or services, or that the work or labor on the goods or services was performed by members of a union or other organization.
What is a collective mark?
A collective mark is a trademark or service mark used or intended to be used, in commerce, by the members of a cooperative, an association, or other collective group or organization, including a mark which indicates membership in a union, an association, or other organization.
All you need on your end for help with trademarks…
- A reliable Internet connection
- A reliable email account that archives emails for future reference
- Adobe acrobat reader – free and installed on most machines
Most common reasons that marks are refused trademark registration:
1. the proposed mark consists of or comprises immoral, deceptive, or scandalous matter
2. the proposed mark may disparage or falsely suggest a connection with persons (living or dead), institutions, beliefs, or national symbols, or bring them into contempt or disrepute
3. the proposed mark consists of or comprises the flag or coat of arms, or other insignia of the United States, or of any State or municipality, or of any foreign nation
4. the proposed mark consists of or comprises a name, portrait or signature identifying a particular living individual, except by that individual’s written consent; or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow
5. the proposed mark so resembles a mark already registered in the Patent and Trademark Office (PTO) that use of the mark on applicant’s goods or services are likely to cause confusion, mistake, or deception
6. the proposed mark is merely descriptive or deceptively misdescriptive of applicant’s goods or services
7. the proposed mark is primarily geographically descriptive or deceptively geographically misdescriptive of applicant’s goods or services
8. the proposed mark is primarily merely a surname; and
9. matter that, as a whole, is functional.
Can one trademark a slogan, positioning statement, or tagline?
No, not as a rule, unless the slogan is the brand – or in very rare cases where, like ‘Just Do It’, the slogan has become (not becomes) so famous that most know it and the brand it relates to. Nike is one of the few with its ‘Just Do It’ slogan. In most cases, a slogan is not a brand or source identifier and therefore a slogan does not meet the requirements for a trademark.
Can one trademark a symbol?
Yes. An example is the Nike ‘swoosh’. However, the symbol must be made famous most often through extensive marketing, advertising, and promotion.
Can one trademark a design?
Yes. For example, a certain bottle design can be protected as ‘trade dress’. The original coke bottle is a good example of trade dress. Other features can be as well.
The TM, SM, and the R in the circle ®.
You can and probably want to use the trademark symbol™ (TM), or service mark symbol (SM) to alert the public to your claim on the design and/or word mark. After your trademark is registered, you can use the ® symbol, not before. It is against the law to use the ® symbol unless you have received the official trademark registration certificate (which typically takes a few years). A trademark application begins the process towards a trademark registration, however, an application is not a registration.
Why obtain a trademark registration?
Owning a federal trademark registration has several advantages, including:
- notice to the public of the registrant’s claim of ownership of the mark
- a legal presumption of ownership nationwide
- the exclusive right to use the mark on or in connection with the goods or services set forth in the registration
- the ability to bring an action concerning the mark in federal court
- the use of the U.S. registration as a basis to obtain registration in foreign countries
- the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.
Trademark law is likely one of the most confusing and fuzzy areas of law, since it is constantly evolving, and subject to change.
You need to use your mark to obtain a trademark registration, and you must use your trademark ‘as a trademark’.
An interesting case: ‘escalator’ was once a trademark. However, ‘escalator’ was improperly used by its trademark holder. The term ‘escalator’ became ‘genericized’, meaning that it became the term that most think of in relation to moving stairs. Had the trademark holder referred to its product as ‘Escalator brand moving stairs’, rather than ‘an escalator’, the trademark would likely be valid today. There are many similarly interesting and unusual cases involving trademarks.
A Trademark application can be filed and processed at any time, before or even years after a Mark is used in interstate commerce. A trademark application as ‘intent to use’ (or ITU) can be filed before a Mark is used in interstate commerce, however, an ITU must be followed up by a bona fide statement of use in interstate commerce in order for a trademark registration to be issued. Trademark registration is not a guarantee of trademark protection. The best way to protect a trademark or pending Mark, is to use it (as long as it does not cause confusion in the marketplace with other registered trademarks).
The concern of the trademark office is twofold in application review:
1) To protect consumers from others fraudulently deceiving/misleading consumers with deceptively similar names
2) To protect the rights of trademark holders (registrants)
The United States Patent and Trademark office (USPTO) is a division of the Department of Commerce. The mission of the USPTO, like the Department of Commerce, is fair trade.
Once a trademark is registered, the registration offers some protection, however, it is the registrant’s responsibility to do all that is required to maintain the trademark. This includes proper use of the trademark and proper enforcement to keep others from infringing on the rights of the trademark registrant.
The basic trademark process in the United States:
The first step:
To obtain a trademark (or service mark), you file an Application for your Mark with the United States Patent and Trademark office, and pay about $365 (application fee – per class) to the US Patent and Trademark Office (USPTO). This can be done online at uspto.gov.
! Before filing the trademark application, you should do a thorough trademark search and pay careful attention to the writing of your description of goods and services (G&S), as well as the class or classes your G&S will fall within.
Your Mark is your intended trademark. It can be a word or phrase, or a design, or both. Trademarks also can be for other aspects which are not covered here including ‘trade dress’ which involves the appearance of your packaging.
At uspto.gov you will be able to search for other existing trademarks that ‘may’ cause your trademark application to be refused.
! Searching for your exact same Mark and not finding your exact same Mark registered or applied for at uspto.gov is no guarantee that you will own a trademark, that the trademark office will accept your application, or that it will not later be challenged in a trademark opposition.
A trademark must not cause ‘likelihood of confusion’ in the marketplace. Therefore, you will not be allowed to take a ‘famous name’, change a letter or add a hyphen, or slightly alter its spelling, and expect to have your Application go through to registration. In fact, in some cases, if your Mark even seems to sound similar to a registered trademark, or have similar elements, if that other registered trademark has achieved ‘significant fame’, your Application may be refused – or opposed.
When you file your Application, you select a category or ‘class’ of goods and services provided by the USPTO. Within this ‘class’, you include a written description of the goods and services (G&S) that your mark is used in connection with. The ‘G&S’ is important in that it must be highly descriptive yet offer the broadest protection.
The initial review by the trademark examiner at the USPTO:
Within six months (sometimes sooner, sometimes longer), an Examining Attorney at the United States Patent and Trademark Office reviews your Application.
This Trademark Examiner (a Trademark Attorney of the USPTO) assesses your Application and scrutinizes every detail.
While it may have been simple to apply online…
… the examiner (about 6 months after trademark application is filed) is now going to scrutinize your application as if filed by a trademark attorney. The USPTO examiner must follow the laws, and treat every trademark applicant (trademark attorney, general attorney, non-attorney) as a trademark specialist. The trademark examiner examines your trademark application in its entirety, reviewing and assessing every detail. Though your trademark application may have taken you minutes to apply online, and you received a confirmation, everything you stated in the trademark application was stated under oath when you filed.
It is not easy to change dates and details afterward, and often not possible at all.The confirmation of application only means you paid, it does not indicate that you will get a trademark registration, or that your trademark application has been examined.
The examiner must make his/her judgment as to if your Application if allowed to proceed to Registration, could cause ‘likelihood of confusion’ or damage to any existing registrant. In addition, your trademark application must be acceptable in many ‘other ways’. Many of the ‘other ways’ are based on commerce principals. By necessity, trademark prosecution involves many aspects more closely related to business, marketing, trade customs, and other business principles that extend well beyond the civil law and/or civil law concepts. This can confuse even the most seasoned ‘general law’ attorneys – and often does.
At the highest level, seasoned Intellectual Property (IP) attorneys may fail without the business and marketing knowledge or experience needed to prevail.
A ‘Registrant’ is a current registered trademark holder. An ‘Applicant’ is one applying for a trademark. In trademark law, the registrant has far more rights than the applicant.
Marks that can never become trademarks:
The following types of marks are not allowed to become trademarks:
1. The matter which is merely the generic name of the goods on which it is used cannot be registered.
2. The proposed mark consists of or comprises immoral, deceptive, or scandalous matter;
3. The proposed mark may disparage or falsely suggest a connection with persons (living or dead), institutions, beliefs, or national symbols, or bring them into contempt or disrepute;
4. The proposed mark consists of or comprises the flag or coat of arms, or another insignia of the United States, or of any State or municipality, or of any foreign nation;
5. The proposed mark consists of or comprises a name, portrait or signature identifying a particular living individual, except by that individual’s written consent; or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow;
6. The proposed mark so resembles a mark already registered in the Patent and Trademark Office (PTO) that use of the mark on applicant’s goods or services are likely to cause confusion, mistake, or deception;
7. The proposed mark is merely descriptive or deceptively misdescriptive of applicant’s goods or services;
8. The proposed mark is primarily geographically descriptive or deceptively geographically misdescriptive of applicant’s goods or services;
Understanding likelihood of confusion, the most common trademark problem, and how confusion is analyzed with The DuPont Factors.
Though trademark law is far more complex than you will read here, and truly takes years of the following business to understand, this will help – in layman’s terms. Trademarks (registered or not) are brands, brands are used in commerce.
Branded goods and services may include words or terms, colors, images, fonts, packaging design, other elements and components that hopefully set them apart. Most important, a trademark must serve to indicate the source of the goods (the maker), and conversely, not create a likelihood of confusion or actual confusion as to the maker. How brands can appear ‘similar’ is not always obvious until you catch on.
Currently, similarity in the US is based on an evaluation of the DuPont Factors below. Oppositions and objections to brand names, product and service names, trademarks (Marks) and trade names rely far more on commerce and marketing-related principles than on laws. These include yet are not limited to:
- advertising, design, marketing, promotion – even colors and fonts
- packaging, distribution channels, channels of trade, demographics
- wholesale and retail pricing
- markets, marketing, market perception
- look and feel – commercial impression and connotation
- types of consumers
- the purchasing decision required to buy the goods or services
Note the DuPont Factors shown below cover the aspects of marketing stated above.
Unlike civil law (where robbery is always robbery, or a burglar either did it or not), trademarks, like business and commerce, change over time, and with the times.
The ‘fluid’ nature of the business ‘over time’ is the reason old ‘case law’ can often be proven to no longer apply, and why there can be no real ‘rule book’ – other than procedural.
The Internet, globalization, national and international mergers and acquisitions, coupled with trademark monitoring services and burgeoning Intellectual Property protection budgets have increased and escalated trademark problems and created new ones.
Unlike in the past, the moment you apply for a trademark or use a Mark as a domain name, the world becomes instantly aware – as does the risk of objection.
Many brand name problems are based on ‘likelihood of confusion’.
There is a set of factors that a Trademark Examiner, Trademark Trial and Appeal Board Judge, District Court Judge, or other Judge or jury consider in relation to assessing whether or not trademarks are likely to cause confusion known as the DuPont Factors.
The DuPont Factors are very strongly considered in a trademark opposition.
Whether you wish to avoid opposition, or face opposition, you need to understand the DuPont Factors more from a marketing and business perspective than legal.
According to the DuPont Factors, as you are about to read, a Mark does not have to be the same exact phrase or spelling, or be identical, or even be in the exact same class, or be used in connection with the same goods or services, in order to cause the possibility of confusion in the marketplace.
The aspect of ‘similarity’ is very important to understand and often arguable for and against. The words or terms in a mark are dissimilar perhaps yet the icon, colors, symbol, or packaging can also cause problems.
Things that are “related and complementary” and sold to common customers in the same or similar channels of trade can cause problems as well.
Confusion claims sometimes are obvious yet a great many are not so obvious – until thought carefully about – and some claims truly are frivolous yet a problem just the same.
The DuPont Factors are included here to help guide you, and make you aware of the basic issues that are normally considered when two Marks ‘may’ be in conflict.
THE DUPONT FACTORS
1: The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression.
1a: Similar or Dissimilar Appearance
1b: Similar or Dissimilar Sound
1c: Similar or dissimilar commercial impression
1d: Similar or dissimilar connotation
2: The similarity or dissimilarity and nature of the goods and services as described in the application or in connection with which a prior mark is in use.
3: The similarity or dissimilarity of established, likely-to-continue trade channels.
4: The conditions under which the buyers to whom sales are made i.e. “impulse’ vs. careful, sophisticated purchasing.
5: The fame of the prior mark in terms of sales, advertising, and length of use.
6: The number and nature of similar marks in use on similar goods.
7: The nature and extent of any actual confusion.
8: The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.
9: The variety of goods on which a mark is or is not used i.e. house mark, family mark, product mark may also be considered.
10: The market interface between applicant and the owner of a prior mark
11: The extent to which applicant has a right to exclude others from use of its mark on its goods.
12: The extent of potential confusion i.e. whether de minimus or substantial.
13: Any other fact probative of the effect of use.
! Note: the ‘weight’ of each of the 13 DuPont Factors is not equal.
Each of the DuPont Factors is considered ‘case by case’ to determine if a trademark application should be allowed, and/or if a party opposing a trademark could prevail.
Even if 1 out of the 13 is the only factor in favor, that factor could be strong enough, on its own, to win an opposition. Obviously the more factors in favor, the better. Since just about anything can affect trademark cases, it greatly helps to know about a lot of other things – (why we do such in-depth investigation). Aside from the DuPont Factors, other concepts of law, marketing, business, fair trade, trade customs, and more may also apply and may be given consideration.
Since trademarks are based on business, and business changes over time, trademarks and rulings are fluid, rather than static. Things change over time, and therefore a mark’s strength or weakness can as well. Marks that were extremely strong a decade ago, may not be as defensible today. On the other hand, a mark like Apple (the computer and iPod company) might become so strong it crosses classes – so Apple clothing would infringe. Apple (The Beatles) and Apple Computer, decades later, had a trademark problem.
Then again, marks can (over time) become so famous that they become the generic term for the product, like ‘escalator’. Xerox and Kleenex face this problem. It takes years of reading trademark cases, a marketing and business mindset, and a keen awareness of changes in business, to begin to understand trademarking, to be ‘artful’ at it, and keep your brand, product or trade names safe.
Being ‘artful’ in trademarks involves an unusual combination of skills.
Trademark issues and concepts are very different than people would first imagine. Very different than many Attorneys that have not specialized in trademarks would be aware of, nearly impossible to understand for anyone – other than someone with experience in marketing and trademark opposition. The artful approach to trademarks involves far deeper consideration than most would imagine (and far beyond legal) in regards to skillful:
- marketing concepts
- promotional considerations
- business concepts
- trademark and branding concepts
- search engine concepts
- advanced trademark search report analysis concepts
- trademark law
- business law
- civil law
Rob Cummings follows changes in business and marketing all the time. This gives him an edge over many attorneys and is why attorneys and non-attorneys hire him to help.
Court – the worst case scenario for a trademark problem:
Most trademark cases never go to a civil or Federal Court and instead involve an exchange of paperwork – reply briefs, business letters, other exchanges between parties – or between a party and the trademark office. Most are handled by the trademark office (USPTO) or the Trademark Trial and Appeals Board (TTAB).
In trademark cases that end up in Federal or Civil Court, one of the greatest problems is that these Judges – not trademark specialists, not Judges on the Trademark Trial and Appeals Board, and not trademark examiners – are not involved in trademark cases day to day. This means they may not be fully aware of things like The DuPont Factors, or up to date on trademark cases, decisions, and rulings. Without going into too much detail, we have increasingly seen cases that have gone to court for summary judgment under Rule 56. Apparently, since civil or Federal Court is a higher court than the trademark remedies, these cases are not able to be remanded back to trademark specialists who have the necessary in-depth knowledge required in trademarks.
IF any of the factors above apply to the Mark you are applying for, you may wish to reconsider your Application, discuss it with Rob and/or see naming strategies. The process of obtaining trademark registration normally takes years, so you definitely want to be sure that you have done the research and made the best possible application to avoid delays and possible refusal, opposition, cancellation, or worse yet, a law suit.
If your Application is approved:
If your Trademark Application is approved at this first stage (application stage) by the Trademark Examiner, your application’s Mark is ‘published for Opposition’ in the Trademark Gazette. Anyone, registrant or not, may oppose an application for a trademark, however, the opposer must have grounds for the opposition.
If no one opposes your Mark within 30 days (as of this writing) from the date your Mark is published in the Trademark Gazette, (typically, after about a year or more as long as you have no problems), your trademark is approved for registration in the USPTO principal register, a Notice of Allowance is issued, if you have not yet done so you file a Statement of Use, the mark is then officially registered when the certificate is issued, and you can and should place the ‘r’ in the circle ® with your Mark to indicate registration.
What if the trademark application is initially refused?
If the Trademark Examiner (at the application stage) finds a filing and application of a Mark may cause confusion with an existing registered trademark, or notes any other deficiency in the application, the Examiner will refuse it.
In this case, the Trademark Examiner will issue you a non-final office action (basically an initial refusal), asking you to either change or clarify elements of the application, or abandon the application if your Mark, its ‘class’ and its description of Goods and Services is confusingly similar with another. There are also other potential reasons for refusal that will appear in the Trademark Examiner’s initial refusal that will be mailed to you. Either way, refused or accepted, the application fee is not refundable.
At the Initial Refusal stage, you have the option to make corrections to and amend your Application, and respond to the examiner’s concerns, or abandon it. Normally amending your application involves defining your goods and services more clearly, or redefining your channels of trade, or redefining other aspects often based on the DuPont Factors. If your amended application is acceptable, your application is allowed for publication for Opposition in the USPTO Trademark Gazette.
What if the trademark application receives a Final Refusal?
If your Mark is ultimately refused with a Final Refusal from the USPTO trademark examiner, you can still appeal to the Trademark Trial and Appeal Board (TTAB). This Appeal can be in plain writing, must resolve all of the concerns of the Trademark Examiner, and must include a fee, about $100. This ‘Appeal’ is called an ‘ex parte proceeding’ since it is a proceeding between an Applicant and the USPTO.
[ex-partes means by or for one party. An ex parte proceeding is one brought for the benefit of one party only, without notice to or challenges by an adverse party].
In some cases, though somewhat rare, the TTAB will reverse its decision and Final Refusal and allow your Mark to proceed.
The next step:
If your mark is approved for publication by the USPTO, you will receive a Notice of Publication.
Your Mark, along with its G&S description, will then be published in the Trademark Gazette. It’s important that your description of goods and services is very accurate since you will ultimately need to file an affidavit, provide specimens, and (in layman’s terms) prove that your trademark is used in the exact way it is described. The reason for publishing in the Trademark Gazette is to notify all others of your Application, which remains pending yet proceeding.
Publishing in the USPTO Trademark Gazette gives industry peers and existing trademark registrants the opportunity to oppose your application from proceeding if they feel the opposition is warranted and proceeding will cause them damage or harm. Your application may be opposed by any other person who feels they may be harmed by the registration of your trademark.
In most cases, the opposer is the holder of a registered trademark, though an opposer may be one with no registration and base the opposition on common law rights. Rob Cummings, Trademark Consultant – Not an Attorney, a trademark and business problem solver.
What if a Notice of Opposition is filed against the applicant?
If others suspect they will be harmed if your application is allowed to proceed to registration, they pay a relatively small filing fee and file a Notice of Opposition against you, the applicant. Notice of Opposition is a list of allegations regarding how and why an existing registrant feels your pending registration will harm them, and why your registration should be refused. Like a law suit, but without a jury, you must Answer the Notice of Opposition in a timely manner (usually 40 days) as prescribed in the Notice you receive. There are specific formalities to the way you must present your Answer, as well as strategies that can help. Your Answer must not be argumentative, and must not be in the form of a brief, which makes writing the Answer a bit more complex than many would imagine.
Your Answer needs to be a responsive pleading to the notice of Opposition, and your Answer must include your formal response to each of the numbered allegations made. If you do not file a formal Answer in a timely manner, the registrant that filed the Notice of Opposition will prevail and your Application and Mark will be abandoned.
There are certain very specific procedures that you must follow in relation to your formal Answer. In most cases the Notice of Opposition and the Answer are based on the DuPont Factors listed above.
Often, large Companies routinely file Notices of Opposition against any Applicant that ‘may’ cause likelihood of confusion.
They do so to avoid acquiescence, which is a concept where, if a registrant does not file a Notice of Opposition, that registrant may lose its rights to its own trademark by not properly defending it, and willfully allowing others to infringe on their rights.
It should be understood that the USPTO does not actively police trademark registrations. Instead the USPTO serves as an administrator of trademark registrations. In a similar fashion (in layman’s terms), the Trademark Trial and Appeal Board facilitates oppositions (and other trademark issues).
If a Notice of Opposition is filed after publication in the Trademark Gazette, this becomes a proceeding between the applicant and the opposer known as an ‘inter-partes’ proceeding. An inter partes proceeding is one in which adverse parties are involved. The opposer in this proceeding is the ‘plaintiff’ while the applicant is presumed guilty and becomes the ‘defendant’.
Typically, Lawyers from both sides try to settle out of court if possible in an Opposition proceeding. A settlement may include a refinement of the definition of the Goods and Services and/or an agreement not to sell in certain channels of trade that might cause conflict. Otherwise, the parties, plaintiff and defendant, stay their course and follow specific procedures of the manual of procedure.
If both sides cannot agree on any resolution, the Trademark Trial and Appeal Board reviews all of the information filed, and, with three USPTO Trademark Trial and Appeal Board Judges, makes the final decision. This process can take years.
Notices of Opposition are often unanswered. As mentioned previously, the defendant ‘defaults’ and loses the application if an Answer is not timely filed or not filed at all. Many smaller applicant companies and individuals have no idea of how to Answer a Notice of Opposition, do not have the funds for an Attorney, nor the time. In this case, the company filing the Notice of Opposition hopes to ‘win by default’, and have the Application refused when the Applicant does not Answer. In other words, the Applicant simply gives up, and the Application and Mark are abandoned.
Can you defend yourself in a trademark case?
Although it is possible, it will be extremely time-consuming. It is important to know the USPTO or TTAB cannot treat you any differently than they would a qualified trademark attorney, cannot offer advice, and therefore it is a very bad idea to simply read pages on this Site or others and believe you will be able to prevail.
Rob Cummings reversed a Final Refusal in an ex-party proceeding before the Board and managed to win in an inter-partes proceeding (a proceeding based on a Notice of Opposition) – in his own cases – which is how he started to help others.
Each case is different, and each takes a great deal of research and time, and a knack for understanding the oddities of trademark law – and business – and, in an opposition or cancellation, who the opposer is. Unlike civil law, trademarks involve a different type of creative analysis and creative thinking along with an understanding of the wants and needs of the parties involved.
Your best strategy:
Your best strategy in attempting to create a trademark is to carefully evaluate the name you plan to register and to create a name with the least liability. Rob can help you do this. See naming.
Quick review and further information:
The initial decision to proceed with a trademark application for registration is made by the USPTO trademark examiner.
The trademark examiner is an attorney, so his/her judgment is normally wise in the application process. However, just because the USPTO examiner ‘saw no problem’ and allowed your Mark to continue on to publication does not mean another registrant might see a problem and oppose your registration – which could happen years later – after your business is up and going.
Since a successful trademark opposition could cause you to cease and desist from using your Mark, or worse yet, pay damages for infringement of the Mark of another registrant, it is critical that you very carefully assess your naming strategies. If allowed by the trademark examiner, the trademark application for the Mark is approved for publication in the Trademark Gazette to then allow others in the industry the option to oppose it.
If the trademark examiner opposes the Mark prior to approval in an Office Action, the applicant can first file an informal answer to attempt to resolve the concerns of the trademark attorney in a reply to the Office Action. If the Applicant’s reply to a non-final Office Action results in a Final Refusal, an appeal with the Trademark Trial and Appeal Board can be filed by the applicant. This Appeal becomes a proceeding between the applicant and the Board and the Appeal is known as an ‘ex-parties’ proceeding.
If the mark is opposed by another registrant and the registrant files a ‘Notice of Opposition’, the proceeding becomes an inter-partes proceeding. In this case, the USPTO Trademark Trial and Appeal Board mediates the proceeding though the actual proceeding is similar to a civil proceeding between Lawyers. If no resolution can be arrived at between the parties, the TTAB ultimately makes a judgment, typically years after the Mark was applied for.
If allowed to be published for Opposition, and no Notice of Opposition is filed, a trademark registration is ultimately issued. In the best case, this normally takes over a year.
Contact Rob for help with trademarks, service marks, avoiding and/or overcoming a trademark Notice of Opposition or Cancellation, writing the Answer to a Notice of Opposition or Petition to Cancel, and with any other trademark-related problems.
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Other trademark-related pages:
- naming strategies to avoid trademark problems
- my own trademark problem(s) that led me to become a consultant
- my rates and what I do differently
- trademark application, filing, registration
- trademark resources
- online store
- latest update
- common questions relating to a trademark opposition
For more info about our trademark services, please call our trademark attorneys in San Diego at (888) 636-4884.