What can you do if your trademark application is opposed?
It can be a bit disheartening to receive an opposition to your trademark application. After the USPTO had preliminarily approved your mark, a third party files a challenge you would rather avoid. You now need to make some tough decisions on whether and how to respond to a trademark opposition.
Unless a settlement is reached early on, a trademark opposition is an adversarial battle that can drag on for a couple of years. This post covers some key questions to consider:
- How much do you care about registering your trademark?
- If you are interested in defending your trademark application, how much would a trademark opposition cost?
- Are there ways to reduce the cost and length of time of a TTAB trademark opposition?
Most trademark oppositions will include likelihood of confusion as grounds for denying the registration of an applied-for mark. Therefore, trademark opposition defendants should consider any effective defenses for arguing against the probability of confusion. Trademark applicants/defendants should also investigate whether the opposer has earlier trademark priority (e.g., earlier use or a priority date).
Is a trademark registration worth fighting for?
A cost benefit analysis would be prudent in deciding whether or not to defend a trademark opposition. Consider the potential value of a trademark registration, not only for the current goods or services, but also for future products that you may want to launch under the same mark. Owning a first registration paves the way for future applications for the same mark on expanded product lines.
If you surrender your opposed trademark application, consider the opportunity cost of any future registrations for similar marks. Would you be surrendering a potential family of trademark registrations, thereby forfeiting the power to block others from registering similar marks in the same field as your business?
How much does a trademark opposition cost?
Your decision to defend your trademark application may be contingent on the cost of a trademark opposition. A trademark opposition is adversarial in nature, meaning that you are fighting against an opponent. As in any kind of litigation, costs will largely depend upon the stamina and financial resources of your opponent. How much is the opposer willing to spend to defeat your trademark application? Any insights you can gain into the other side’s financial ability and/or determination would help you in making an informed decision on whether or not to defend.
If the opposer is willing to work out an amicable resolution, an early settlement of a trademark opposition may range from $3,000 to $6,000. For example, the opposer may want the defendant-applicant to remove certain goods or services from the trademark application, or exclude an item or channel of trade from the identification of goods/services.
A more vigorous opposition proceeding where both sides are actively fighting for their rights may get into the tens of thousands of dollars in legal fees.
How far are you willing to go to defend a trademark opposition?
As the defendant, you have the option of giving up. You can simply forego your defense At any point in time in the opposition. As a result, your trademark application will likely be abandoned. This flexibility enables an opposition defendant to set a certain budget and see if a resolution can be reached before hitting the maximum limit.
Respond to a trademark opposition with a Plan B?
It’s wise to consider fallback positions. If your trademark application in its current state were deemed to be confusingly similar, what concessions would you be willing to give in order to get your trademark registered? For example, are there any goods or services you would be willing to delete from your identification to avoid overlap with the goods/services of the opposer? Would you be willing to limit your channels of trade, or agree not to sell in certain venues?
Would it make sense to file a new trademark application for a different mark with different goods or services? It might be more cost-effective to pivot to a new trademark than to defend our current trademark application, especially if the opposer is a larger company with substantial financial resources.
Need to respond to a trademark opposition?
Reach out to patent and trademark attorney Vic Lin at firstname.lastname@example.org or call (949) 223-9623 to see how we can help you navigate through a trademark opposition. Let’s see if we can help get your trademark registered.
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