Most people are aware that names and symbols can be used as trademarks by companies to differentiate their products from others (such as Pepsi and Coke) and many people also know that there is some formal application process to obtain a Federal trademark registration. However, most people do not know how the whole process works and, therefore, are surprised to find out that even after the United States Patent and Trademark Office (“USPTO”) has determined that it finds no bars to registration, that any third party that believes it may be harmed can oppose an application and seek to have registration denied.
Such instances are known as Opposition Proceedings. After the USPTO has reviewed an application, found it to be in order, and found no other applications or registrations that the USPTO deems confusingly similar; the USPTO will then publish the application for a thirty day period. It is during this publication period that any third party that believes it will be harmed by the registration of the applied-for-mark can file a Notice of Opposition stating the reasons why it believes it would be harmed.
The filing of a Notice of Opposition is the beginning of an abbreviated and condensed litigation proceeding where the parties can conduct discovery, take depositions, offer testimony, and eventually submit arguments for and against registration, all done via paper submissions.
It is important to be aware of the potential for Opposition Proceedings because, while they are abbreviated in comparison to traditional litigation, these proceedings take approximately fifteen (15) months to conclude (assuming no delays) and can potentially cost in excess of a hundred thousand dollars ($100,000.00).
It is impossible to predict whether a third party will file a Notice of Opposition and anyone who tells you that they can is lying. So, how does one plan for the possibility of an Opposition Proceeding? One major step that can be taken is having a comprehensive search done prior to filing a trademark application.
Many firms, including mine, offer comprehensive searches where they contract with a third party to scour the country for any names or symbols that are similar to the name or symbol you want to register. The searches are very thorough, searching not only the USPTO database but state trademark databases, phone books, the Internet, and other sources. Your attorney will then review the third party marks and symbols and provide you an opinion letter as to the registerability of your mark or symbol.
The search and opinion letter provide you with a good idea of what other trademarks are out there and identifies the owners of such marks who may oppose your application. Having this knowledge allows you to prepare for potential oppositions and even position yourself in the best possible manner to either avoid an opposition or increase your likelihood of success. In some cases it may even make sense to seek consent from a third party prior to or during the application process.
The search and opinion letter and positioning yourself or your company at the outset can save you thousands, tens of thousands, or even hundreds of thousands of dollars in the long run. Your trademark is the way in which consumers identify your goods and services and to have to change or abandon a trademark due to an opposition can harm the goodwill you have worked so hard to establish. Thus, it is prudent for any applicant to at least discuss the option of a search and opinion letter with their counsel prior to filing a trademark application.
Nicholas D. Myers, Esq.
