How to reduce the probability of trademark oppositions

Neither you nor your IP attorney can predict with absolute certainty how third parties may feel about your particular trademark. Keep in mind we are not talking about the review of your application by the USPTO trademark examining attorney. Even if the examining attorney believes your mark is allowable, there is no assurance that other trademark owners would feel the same. You cannot control the actions of others, but is there anything you can do to prevent a trademark opposition?

By planning ahead and taking certainly precautionary steps before filing your trademark application, you can reduce the likelihood of others opposing your trademark application.

How to choose a safer trademark to avoid oppositions

Years of trademark experience have taught me that I can never guarantee 100% success in registering a particular trademark. Even in cases where a client has obtained prior registrations for similar marks, it is possible that a new application for the same mark on different goods or services, however related, may still get rejected. So, the goal is not choosing a perfectly safe trademark, but a safer mark with fewer risks of rejection.

To begin, it is critical to know upfront that the two most common trademark rejections are likelihood of confusion and mere descriptiveness. Understanding these potential obstacles upfront will provide a roadmap for reducing the probability of trademark oppositions based on these grounds.

Selecting a mark that is not merely descriptive would involve avoiding words that tell consumers something about the product such as a feature, quality, characteristic, ingredient, etc. These words may be found in the English dictionary or be intentionally misspelled. The issue is whether a consumer could tell that the mark when viewed in connection with your goods or services is conveying information about the product.

Where the line gets blurry is when a mark is suggestive, but not descriptive, of the goods or services. Suggestive marks are great. They imply something about the product without explaining it. The USPTO is not supposed to refuse suggestive marks on the basis of mere descriptiveness. Of course, what the USPTO is supposed to do and what trademark examining attorneys actually do are not always consistent.

How to reduce the likelihood of confusion with other trademarks

Likelihood of confusion is not the same as actual confusion. It is a hypothetical question: How likely would consumers be confused into thinking that your goods or services originate from the same source as that of another trademark?

To lower the risk of an opposition, have a knockout search conducted before choosing a mark to apply for. In the end, you still might not be able to prevent a trademark opposition by an aggressive brand owner, but you can at least diminish their arguments on how your mark is confusingly similar to theirs.

How to choose safer goods and services to prevent a trademark opposition

Besides the mark itself, you and your IP attorney should carefully draft the identification of goods and services. Most importantly, you want to avoid overlap with any goods or services of previously filed or registered trademarks that might be somewhat similar to yours.

This is a delicate task that involves careful deliberation and strategy. Keep in mind that even if the USPTO allows your application, the owners of the other (allegedly) similar trademarks might still take issue with your mark. So you want to craft a description of goods and services that minimizes the risk of opposition.

How to respond to a trademark opposition

Even with your best efforts and intentions, you might not be able to avoid an opposition. If you find yourself on the receiving end of a TTAB Notice of Opposition, consider a cost-effective plan for defending the opposition.

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Chair at Innovation Capital Law Group
We love working with startups and small businesses. I help entrepreneurs protect their intellectual property so they can reach their business goals.

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