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reply to trademark opposition format

To establish a prima facie case of abandonment, the complaining party must allege at least three years of consecutive non-use of the mark with an intention not to resume use. This brief summary explains the procedures for opposing trade mark applications in the EU and for defending an opposition. Fundamentally, the objective of the conference is to facilitate an open discussion about the “nature and basis of the involved claims and defenses, the possibility of settlement of the case or modification of the pleadings, and plans for disclosures and discovery…” TTAB 408.01(a). The Manual sets forth the various statutes, rules, and case precedent applicable to trademark oppositions. Trademark Trial and Appeal Board (TTAB). Within one month of receiving the Affidavit and evidence under Rule 46 or of the letter intimating the waiver of right to file such Affidavit and evidence from the applicant, the opponent again has the option to adduce further evidence in support of the opposition in the form of an affidavit in reply, including exhibits, if any. The complaint, known as a Notice of Opposition, is filed by the Opposer, who may allege several grounds for refusal of a trademark application. By continuing to use this website, you agree to the use of cookies. Well, in this case, the Opposer must actually demonstrate that his mark and its usage in commerce precedes the newly applied for mark. Abe is committed to his client's success. can your trademark be considered to have more than one meaning such that it is not merely descriptive of your applied for goods and services? has 40 days to file a formal answer with the TTAB. In conjunction with the Answer, a list of  possible affirmative defenses and potential counterclaims should also be considered. Abe is managing partner of Cohn Legal, PLLC, Head of the firm’s Intellectual Property and Transactional Group, and works in the New York office in Midtown Manhattan. If the trademark holder does not file an Answer, he risks losing his rights to the trademark and the application going Abandoned, Discovery: The Discovery Process is designed to allow each party to elicit relevant information and favorable facts from the opposing party and is kicked off with the requisite discovery conference whereby each side confers and discusses their respective plans for discovery. If not, are the goods or services considered related to your own? Remember, one of the most common grounds for a Trademark Opposition is the claim that the newly published trademark would create a likelihood of consumer confusion with the Opposer’s existing trademark (under Section 2(d) of the Trademark Act). Step #6. You may file a petition to cancel, after the trademark registers. While there is no standard format for an Answer, it is generally best to answer each numbered paragraph of the complaint by providing a short statement either admitting or denying the alleged facts. you have evidence of business plans going back to your time of filing related to efforts to develop or market goods to be offered for sale under the mark; if you did not have a written business plan, that you have other evidence that demonstrated your objective intent to use your trademark in commerce as of the filing date (for example, emails to third-party website developers, manufacturers, or marketing agencies). The legal costs of opposition. Even for counter statements, the fee incurred shall be with respect to each class to which the counter is being filed. Of course, none but the most prophetic among us can guarantee an outcome but there are at least enough markers and guideposts to look to in order to evaluate one’s chances of success or failure. Remember, this is litigation so there are formal and meaningful rules which must be followed. The Applicant’s mark is not sufficiently distinct, given the goods/services sold under the trademark and is consequently either generic or, Registration of the trademark will lead to dilution by blurring or dilution by tarnishment of the Opposer’s trademark, Registration of the trademark would inappropriately suggest a false connection, origin, or sponsorship. The response can also be made by an agent authorized by the trademark applicant. Step #4. Possible grounds for oppositi… Consider any possible counterclaims. When filing the answer to the opposition, there are several fundamental things to keep in mind. Pleadings are fairly straightforward with the Opposer making an initial claim as to why the mark should be denied followed by the applicant’s response to the motion. Very often, trademark holders will hire a trademark monitoring service to periodically check the Official Gazette and flag any pending trademarks that might infringe on the senior holder’s mark so that the senior has the chance to oppose the mark. Trademark Application, Trademark Opposition of ICAR Mark Dismissed, Recent TTAB Cases - No Likelihood of Confusion, Follow the Rules in Trademark Opposition Proceedings, The impact of COVID-19 on TTAB activities, U.S. trademark opposition statistics during COVID-19, COVID-19 impact on TTAB filing statistics. Likelihood of confusion. The trial phase of the proceeding is where both sides will make their respective cases in full substantive strength. Below is a list of the most commonly cited grounds for filing a trademark opposition: Critically, it is incumbent on the trademark Opposer to prove any of the above-mentioned claims by a preponderance of the evidence, which reinforces the idea that it is ultimately incumbent on the Opposer, rather than the USPTO, to stop trademark infringement. Remember, Trademark Opposition proceedings along with all of the other proceedings (trademark cancellations etc.) So, now that we know who may file the opposition, on what grounds can the trademark opposition be filed? The bar to be a qualified party to file the Trademark opposition is admittedly fairly low: “15 U.S.C. In the event that the main charge of trademark opposition case is that the newly filed trademark is merely descriptive (Section 2(e) of the Act), the Opposer will need to generate an explanation as to why the mark is merely descriptive. If you are the Applicant, it is important to understand the basis for the Opposers’ claims. The main difference between Trademark Objection and Opposition is that Objection is raised at a preliminary stage of the trademark registration process. An opposition must be filed within three months of the date of publication of the EUTM Bulletin in which the application to be opposed is published. Less common but still notable grounds for opposing a trademark include claiming that the mark is descriptive, scandalous, disparaging, primarily a surname, is functional, or the applicant is either not presently using the mark in commerce or lacks the intent to use it in commerce. Failure to do so will move the mark to abandoned state and anyone will be free to apply for its registration. The Trademark objection reply letter provides the opportunity to present the ground as to why the applicant is entitled to get his/her mark registered. Oral Arguments: Oral arguments are not necessarily part of every Trademark Opposition proceeding however both sides reserve the right to request oral arguments, which can provide a more compelling medium to support the arguments made in trial briefs. It’s important that a professional response be drafted as a reply to the objection raised by a Trademark Examiner. Trademark opposition proceedings are contested matters before the U.S. It needs to be submitted to the same registration office where the applicant has applied for the trademark. on failure of filing the counter-statement the application for registration deemed to … The following is a high-level summation of the process involved in a Trademark Opposition Proceeding: Notice of Opposition is Officially Filed: Within 30 days of the trademark’s publication to the Official Gazette, an Opposer submits a Notice of Opposition, Respondent’s Answer is Filed: Once the trademark applicant decides that he/she wants to fight the trademark opposition proceeding, he must submit an Answer to the Complaint within 40 days of the Notice of Opposition. This response is called “Reply to Examination Report”. § 1052(e)(1). In order to oppose a trademark, one must file a Notice of Opposition with the TTAB. Published 16 September 2013 Last updated 9 November 2020 + show all updates. Mere descriptiveness. In order to demonstrate prior use, the Opposer may illustrate either earlier trademark use or actual prior registration date. Initially, the TTAB will send a Notice of Default containing an order allowing the respondent 30 days to show cause why judgment by default should not be … The party that filed the application that is being opposed is known as the Applicant. Here, the Opposer will argue that the proposed trademark is excessively similar to his trademark and the registration of the trademark will adversely affect his own stake in the mark. Once your notice of opposition is filed, the applicant has thirty days to respond with an answer. Step #2:  Analyze the Opposer’s claims. Apart from a Trademark Registration, EbizFiling.com also helps you with Trademark Objection filing, draft Trademark objection reply letter, Trademark Renewals, Trademark Assignment, Trademark withdrawal, Trademark opposition and Trademark rectification services. The Trademark Act provides a series of Causes of Action, or reasons, for which an individual/company may bring a trademark opposition case. Oftentimes, during the trademark registration process, the Trademark Registrar raises objections on the intended trademark if it violates rules and laws of trademark registration. Critically, the facts and arguments contained within the brief must have already been presented (in some form) at the trial and may not involve new information. The response to an objection in a trademark examination report can be submitted by the trademark applicant. Is the substantive argument weak (Likelihood of confusion would be a preposterous outcome of the mark’s registration)? Contact Ebizfiling for Trademark Objection and Trademark Objection Reply. Read More, How to Oppose a U.S. This can include abandonment of use of some of the goods contained in the Opposer’s registration, or all of the goods. When the applied trademark is published in the Journal of Trademarks, anyone can oppose the published trademark within 3 months from the date of journal publication. Opposition proceedings are like mini-trials. Of course, there are certain instances under which the TTAB will grant an extension of time to answer if the defendant can show good cause. Trial Briefs: Trial briefs allow for each respective side to present a coherent argument and summation of their positions in alternating fashion. If a person objects to the registration of a trademark that has been applied for, they can start an opposition as long as it properly raises at least one ground of opposition set out in sufficient detail to enable the other party (the applicant) to reply to it. All Rights Reserved. The application is then open for others to oppose its registration. Thus, the TTAB does not have jurisdiction to consider any associated damages that may arise from trademark infringement but rather only establishes the merits and legitimacy of granting or denying a federal trademark registration. §2.64 (b). Trademark is a unique mark, symbol or label that distinguishes your product from those of your competitors helping in its easy identification. An Opposer may raise any available statutory ground for opposition that negates the defendant’s right to registration, including likelihood of confusion, mere descriptiveness, or that the Applicant lacked a bona fide intention to use the mark at the time of fling. Draft the Answer. does your trademark describe an ingredient, function, or feature of your goods? ii) The opposition must indicate the grounds on which it is based. A trademark is a logo, symbol, tagline, or a combination of these that represents a brand’s identity. The purpose of publishing the mark to the Official Gazette, which occurs every two weeks, is to provide a 30 day trademark opposition period where third-parties can review published trademarks and if they have a real and bona fide interest in the matter, can oppose the registration of the trademark. After filing a trademark application with the USPTO, the applicant starts the long and arduous waiting period during which the mark undergoes an examination from a trademark examining attorney to establish that the trademark is both sufficiently distinct and does not infringe on the existing trademark rights of a prior applicant. 37 C.F.R. Principally, the testimony period allows for alternating periods in which each respective side can present the evidence that they have gathered. does your trademark contain a logo design or other words that are not descriptive of your goods or services? If the Opposer is claiming that your trademark is merely descriptive and should be refused registration, here are some factors to consider: c.  Lack of bona fide intent. The trademark in question, when used in conjunction with the applied for goods/services may lead to consumer confusion with the Opposer’s trademark (whether the Opposer’s trademark is registered or merely used in commerce). Each respective party must include an affirmative defense (if appropriate) in its brief or waive the right to the affirmative defense. A trademark is a source identifier – when an individual sees a trademark attached to a good/service, the viewer immediately understands the source of that good/service, or the company, which produced it. Such a registration is raised by the trademarks examiner. Using a trade mark attorney, you can be sure that your opposition will be made in time and in the correct manner and avoid unnecessary costs. The Applicant, contrary to the required trademark registration provisions, never had a bona fide intention to actually use the mark in commerce when the trademark application was submitted. Trademark Law FundamentalsLearn Trademarks, Trademark Oppositions and Cancellations are very serious matters indeed whose procedural dictates must be followed to the letter. A counter statement or reply to the notice of opposition must be filed by the applicant within two months of receipt of the notice of opposition by way of Form TM-O along with the prescribe fee of INR 2700. It’s important you are aware of the cost implications when you file an opposition against a trade mark. Submit an Answer to the complaint which both satisfies the procedural rules of the TTAB, which can be found in the TBMP, and addresses the substantive arguments set forth in the complaint. The opposition notice shall be made only on that grounds which are mention in section 9 and 11 of the Trademark Act, 1999. Each paragraph in the complaint must be addressed separately and will typically entail either denying or admitting (or claiming a lack of sufficient knowledge) to the facts contained in each respective paragraph of the complaint. It is incumbent on the plaintiff in the Notice of Opposition to provide an explanation as to why he has standing (how the registration of the trademark will be adverse to his own interests) along with a more detailed substantive argument which calls into question the defendant’s (that’s you!). Practitioners should refer to it often, as it provides a solid foundation to ensuring that the case stays on track. See the Trademark Trial and Appeal Board forms. This default judgment is very serious indeed and is binding against future trademark applications. To consult with one of our TTAB attorneys about your case, contact: James Hastings is a member of the U.S. Assuming that a trademark is sufficiently distinct and does not infringe upon an existing trademark already registered in the USPTO (by being too similar to an existing mark or representing goods/services which are too similar to those of an existing mark), the trademark will be eligible for registration in the USPTO. £200: Opposition based on, or including, any other grounds. Trademark Objection - An Overview. Reasons for responding to a Trademark objection The current trademark will be rescued from being abandoned or denied and will be regarded for any further processing. Here are six steps to consider when preparing and filing an Answer to a Notice of Opposition: Step #1.  Review the Opposer’s complaint. A trademark opposition is raised by any person who has an issue with your Trademark after it has been advertised in the Trademarks Journal For example, if the Opposer is claiming a likelihood of confusion with one of its existing trademark registrations, consider the following: b. © ​​2020 Cohn Legal, PLLC. Receipt of a notice. The notice of opposition may only be filed in one of these languages and the language must also coincide with one of the two languages chosen by the applicant for the European Union trade mark, as indicated upon publication of the application in the EU Trade Marks … Free consultation on counter statements for trademark opposition. Do Nothing.Let your trademark protection lapse and likely lose any legal protection for your brand. If the losing party is not satisfied with the decision, he/she may appeal to the United States Court of Appeals of the Federal Circuit. In response to the trademark opposition, the trademark owner has to give a suitable reply to such Trademark Opposition. are all of the goods and services in the Opposer’s registration being currently used in commerce? Step #5. (This article has been updated for 2021). 1051) mean that trademark litigation is quite simply, very complicated. Such defenses include that the Applicant should be entitled to registration subject to certain restrictions to its identification of goods or services. The USPTO is concerned with balancing the competing interests of protecting the trademark holder from unnecessary harassment while still providing a legitimately concerned party with the opportunity to oppose the trademark. The plaintiff (Opposer) submits all evidence through a 30 day period and the Respondent has 30 days to submit its own evidence. (one way to determine this is to conduct a search of the Opposer’s website and commercial activities); are the Opposer’s goods and services in the same class as those in your trademark application? The most common grounds are a petition to cancel one or more of the Opposer’s pleaded registrations based on abandonment. Fight Back On Your Own.To do this effectively, you will need to learn how to navigate the Federal Rules of Civil Procedure properly. The report sets out the grounds for opposition to a trademark, such as the existence of a conflicting mark; or that the trademark is non-distinctive, etc. The USPTO recognizes that just because an examining attorney determines based on a preliminary review that a trademark is suitable for registration, that doesn’t necessarily mean that relevant third parties with an interest in the trademark should not have the right to oppose the mark’s registration. You basically have three options: 1. Here is a recent example of an office action filed with the USPTO that succeeded in overcoming both a likelihood of confusion refusal with a registration under Trademark Act Section 2(d), 15 U.S.C. A counterclaim is where the Defendant/Applicant seeks to attack the pleaded registrations of the Opposer. If the applicant fails to answer the notice of opposition, the trademark application will ultimately be abandoned. Trademark Trial and Appeal Board Practice Group of Collen, where he is Of Counsel. § 1063(a) [Trademark Act § 13(a), TRADEMARK OPPOSITION PROCEEDINGS: PRE-TRIAL CONSIDERATIONS, CEASE AND DESIST LETTER COPYRIGHT INFRINGEMENT, Trademark Opposition Process: A Complete Procedural Guide to the TTAB. An answer to a trademark opposition may include affirmative defenses.Examples of affirmative defenses are Opposer’s unclean hands or fraud in bringing the opposition. The Trademark Trial & Appeal Board will set a trial calendar with the deadlines for each stage of the opposition proceeding. Depending on the facts of the case and relative strengths of the parties’ positions, doing so could provide needed leverage at the discovery conference and later settlement discussions. Only based on … trademark Objection and trademark Objection and opposition is a logo design or other that... James Hastings is a step-by-step Procedure which can be raised by the virtue of Form TM48 under the trade Act. Contested matters before the U.S, one is expected to respond to the Board! Needs to be merely descriptive of lodging reservation services drafted as a reply to the of. It needs to be a qualified party to file a notice of opposition, the registrar takes 3-5... Are contested matters before the U.S ) in its brief or waive the right the. 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