What factors matter in choosing a trademark opposition attorney?

So it appeared that your trademark application was approved and on track to a registration until it got derailed. A third party has filed an opposition with the TTAB to block the registration of your mark. You now need to lawyer up or give up. If you would rather not give up, here are some suggestions on choosing a trademark opposition attorney.

Should you hire a trademark filing service?

It is one thing to file a trademark application. Many online options exist, and several of them are not even lawyers. It is quite another thing to defend a trademark opposition.

A trademark opposition proceeding is adversarial. So results matter as much as costs. In fact, the goal of an applicant might not be a favorable judgment. Winning a trademark opposition might look quite different. Right results reached within a certain budget may ultimately be your most successful and practical outcome.

Trademark war or amicable resolution?

If you’re looking for an all out trademark war, then plenty of large firms will gladly take your money to pursue a scorched earth approach. If you have a limited budget, say around $5,000 to $15,000, you need a strategy that will maximize the probability of obtaining a trademark registration before your legal costs of the trademark opposition exceed your budget.

Ask yourself – Are you trying to win a battle in law or in business? If coexistence is an option that will enable your business to move forward with your trademark, do you really want to spend a ton of money on legal fees to provide a point?

What trademark opposition strategies increase the probability of an earlier settlement?

Oftentimes, the opposer has a pending trademark application that was filed after your application filing date. So the opposer’s application may have been suspended pending the outcome of your application because USPTO trademark applications are examined in the order received.

Understanding where the opposer is coming from may lay the groundwork for a potential early settlement. Sometimes the opposer will be upfront and indicate their settlement intentions early on. Other times, the opposer may keep quiet. In either case, it does not hurt to explore the possibility of settlement at an early stage in the resolution.

In fact, the mandatory discovery conference that must take place between both sides’ lawyers will require a discussion of the possibility of settlement.

What if the opposer does not seem to want settlement?

An opposer may not want to settle, at least not initially. In such cases, it would be prudent to map out a trademark opposition strategy that can stretch your budget and get the most bang for your buck.

Perhaps a summary judgment motion might be a wise option, but only if the law and facts line up strongly in your favor. Many summary judgment motions are denied due to a genuine issue of material fact. So be careful. You may spend a lot of money on a TTAB motion for summary judgment that will go nowhere.

Would a counterclaim against the opposer make sense?

The opposer may have cited certain trademark registrations as the basis for opposing your trademark application. It may worth investigating the opposer’s registered trademarks to see if a valid claim can be made for canceling a registration. A strong counterclaim can serve as leverage for a more favorable or balanced settlement.

Is there a flat fee trademark opposition attorney?

Our firm charges flat fees for handling TTAB trademark oppositions and cancellations. Certain tasks, particularly in the discovery stage, will be still be billed hourly since the scope of a particular project may vary widely.

Need help with defending a trademark opposition?

Feel free to email trademark opposition attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623 to see how we can help you reach a desired outcome that makes sense for your business.

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Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys work as a team to equip startups and founders with solid IP rights that facilitate funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com