Los Angeles Trademark Opposition Attorney

By the time you file a trademark application, you’ve invested countless time and resources into crafting a trademark that sets your brand apart. You may even have begun to use this mark in your business, starting the process of gaining customer recognition and goodwill. However, what happens when another person or company opposes your trademark?

Facing a trademark opposition proceeding can quickly bring your new product launch to a halt. Rather than enjoying a successful launch, you may find yourself spending unbudgeted time and money to defend your ability to register your trademark. 

Trademark opposition proceedings are an important avenue for trademark holders to protect their rights to a mark. For those facing opposition, however, these proceedings pose major challenges. The experienced Los Angeles trademark opposition proceeding attorneys at Cohen IP can help you or your business effectively navigate this complex area and work towards your goals of successfully obtaining trademark protection. 

What is a Trademark Opposition Proceeding? 

A trademark opposition proceeding comes up when an applicant files a trademark application and another party, the “opposer,” opposes that application. Typically, the opposing party argues that the U.S. Patent and Trademark Office (“USPTO”) should reject the application. 

If the examining attorney at the USPTO determines that a trademark application should be rejected, the opposer may cite the same arguments in their claim. An opposer may also argue that the mark has been abandoned, the applicant engaged in some type of fraud, or that the new mark will “dilute” the distinctiveness of the opposer’s mark. 

How Long Does Someone Have to File a Trademark Opposition?

Typically, an opposer has thirty days after the Notice of Publication to file an opposition with the Trademark Trials and Appeals Board (“TTAB”). In this opposition, the opposer may make many arguments, which may be similar to those made in a trademark infringement case. For instance, the opposer may argue that the applicant’s mark is too similar to the opposer’s mark and will cause confusion among customers. 

How Does a Trademark Opposition Proceeding Differ from an Infringement Claim?

In several ways, a trademark opposition proceeding is similar to an infringement claim. However, there are several differences between a trademark opposition proceeding and an infringement claim, which include the following:

Nature and Purpose

A trademark opposition proceeding is a process within the trademark office, specifically during the application phase of a trademark. It allows third parties to oppose the registration of a new trademark if they believe it will infringe upon their rights. This proceeding is preventative in nature, aiming to resolve potential conflicts before a trademark is registered.

In contrast, trademark infringement claims are typically filed in court. These claims occur after a trademark has been registered and is being used in commerce. The claim is made by a trademark owner against another party who is allegedly using a similar mark in a way that causes confusion and infringes upon the owner’s trademark rights.

Venue

Trademark opposition claims are conducted in the trademark office or a similar administrative body. However, infringement claims are heard in a civil court, usually a federal district court. 

Basis

Trademark opposition claims are based on the argument that the new trademark is too similar to an existing one and might cause confusion. On the other hand, trademark infringement claims are centered on the alleged unauthorized use of a trademark in commerce, leading to consumer confusion or dilution of the trademark’s value.

Outcome

Trademark opposition claims can result in the refusal of the registration of the opposed trademark. However, no monetary damages are awarded. In contrast, infringement claims can lead to monetary damages, injunctions against the infringer, and sometimes punitive damages.

Process

Trademark opposition claims involve filing an opposition, presenting evidence and arguments to the trademark office, and possibly attending a hearing. Infringement claims, on the other hand, involve filing a lawsuit, which entails going through pre-trial discovery, a trial, and potential appeals.

In summary, while both processes deal with the protection of trademark rights, a trademark opposition is a preemptive administrative procedure to prevent the registration of a conflicting trademark, whereas a trademark infringement claim is a judicial process seeking remedy for unauthorized use of a registered trademark.

Thus, although the arguments are often similar, the terms used in a trademark opposition proceeding are different than those used in an infringement claim. For instance, an opposition proceeding begins when the opposer files a “Notice of Opposition” rather than a standard “complaint.” 

An opposition proceeding takes place before the Trademark Trials and Appeals Board. These proceedings follow the Federal Rules of Civil Procedure in most respects. Because of this, these cases often have a similar feel to federal district court cases. Discovery, depositions, and other pretrial matters often unfold similarly to their process in a federal case. 

Finally, because the case is heard by the TTAB, a trademark opposition proceeding does not involve a jury. Also, the TTAB’s ability to order remedies is limited; for example, unlike a federal court, the TTAB may not require one party to pay monetary damages to the other or enjoin a party from using the mark. The only remedy available to the TTAB is to reject the trademark application. 

Why do Trademark Opposition Proceedings Occur?

A U.S. trademark registration provides several rights and opportunities to the trademark holder. These include the legal presumption that the trademark owner has the legal right to use the mark and to prevent others from using it. 

Trademark opposition proceedings occur when the holder of a registered trademark seeks to protect their right to the mark by pushing back against an application that appears to infringe on their mark. In this way, opposition proceedings differ from the analysis conducted by an attorney who reviews a trademark application at the USPTO. While both parties seek to determine if the trademark can be registered, the opposer raises the specific concern that this mark infringes on their already-existing trademark materially. 

For those seeking to register a new trademark, investing effort into the application can minimize both the risks of rejection and the risk of an opposition proceeding. An experienced Los Angeles trademark attorney can perform the necessary searches and provide the focused advice required to improve the chances of a successful and uneventful registration. 

Speak to an Experienced Los Angeles Trademark Opposition Attorney Today

At the Cohen IP Law Group, P.C., our firm has more than 20 years of experience handling complex IP issues and has filed and defended thousands of trademark matters, particularly those involving USPTO opposition and cancellation proceedings and other complex USPTO matters. We also help our clients apply for trademark registration and appeal application rejections. At Cohen IP, our experienced Los Angeles trademark attorneys are dedicated to helping our clients protect their intellectual property throughout the trademark and patent processes. To learn more, contact Cohen IP by calling 310-288-4500. You can also connect with us through our online contact form, and one of our lawyers will get in touch with you soon.