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Intro to TTAB Opposition Proceedings
Enforcing your trademark rights is critical to maintaining the strength and value of your brand. When someone uses a mark that is similar to yours, it can dilute the uniqueness and harm the reputation of your business. In such cases, you may have grounds to pursue legal action, including what are known as “opposition proceedings” before the Trademark Trial and Appeal Board (TTAB).
(The TTAB is a division of the United States Patent and Trademark Office (USPTO) that hears and decides disputes regarding trademarks. Specifically, the TTAB is responsible for determining the registrability of trademarks, including opposition proceedings. Read more about TTAB through the link above.)
An Opposition Proceeding is a legal action filed by you or a third party to prevent the registration of a trademark. Essentially, in your case you may encounter attempts by others seeking to register trademarks with names, slogans, graphics, etc., that are similar to your trademarks. Even though a trademark examiner might think that a third party’s proposed trademark is distinct from yours, you still have the ability to challenge registration directly through this procedure. Your basis for this opposition is typically that registration by the third party applicant would cause confusion among consumers:
Example: You own the trademark for DIET BLOKE for beverages, and someone wants to register a trademark for DIET JOKE, also for beverages. Registration and market entry for DIET JOKE could dilute your brand because of the direct or even indirect affront.
Example: You own the trademark for DIET BLOKE for beverages, and someone wants to register a trademark for BLOKE for cookies. You don’t want the public assuming there is a relationship between you and either cookies or this other company.
Example: You own the trademark for DIET BLOKE for beverages, and someone wants to register a trademark for SKINNY BLOAK for beverages. You don’t want confusion in the marketplace as to which of these drinks is the amazingness in a can that only your company produces.
Mechanics of TTAB Oppositions
To start an opposition proceeding, you must file a notice of opposition with the TTAB within 30 days of the *publication of the trademark application. The notice of opposition sets forth the grounds for opposition, which may include, among other things, the mark being too similar to your own mark or a likelihood of confusion between the two marks.
*Publication is an antiquated concept. These rules were made back when trademark applications were actually circulated in print, and the public generally couldn’t access applications prior to publication. Now, as soon as someone files a trademark application it is visible and accessible via the TESS search database, even before assignment to a trademark examiner for review.
Once the notice of opposition is filed, the applicant has a certain period of time to respond. The TTAB then sets a schedule for the parties to submit evidence and argument, and ultimately makes a decision on the merits of the opposition.
How do you win a TTAB Opposition?
In order to prevail in an opposition proceeding, you must demonstrate that you have standing to oppose the trademark and that the trademark is likely to cause confusion with your own mark. In other words, you must show that you have a protectable interest in the mark and that consumers are likely to be confused by the similar marks.
One effective strategy for enforcing your trademarks through TTAB opposition proceedings is to conduct a thorough search of existing trademarks before filing your notice of opposition. This can help you identify potentially conflicting marks and provide a basis for your opposition.
Another strategy is to gather strong evidence to support your opposition. This may include evidence of actual confusion among consumers, evidence of the applicant’s bad faith in applying for the mark, and evidence of the strength of your own mark and the degree of similarity between the marks.
It is also important to hire experienced counsel who can guide you through the opposition process and present your case effectively to the TTAB. An experienced trademark attorney can help you evaluate the strength of your opposition, develop a strong legal argument, and navigate the procedural rules and requirements of the TTAB.
One potential downside of opposition proceedings is that they can be time-consuming and expensive. However, if successful, an opposition proceeding can prevent the registration of a potentially infringing mark and help protect the strength and value of your own mark.
In conclusion, enforcing your trademark rights through TTAB opposition proceedings is an important tool for protecting your brand and preventing confusion among consumers. By conducting a thorough search, gathering strong evidence, and hiring experienced counsel, you can increase your chances of success and protect the strength and value of your brand.
About Kevin Christopher
Kevin is the founder and principal of Rockridge®, a 4x B Corp Best For The World and Real Leaders Top 150 global impact company. He is annually recognized as a SuperLawyer, and has received numerous professional awards ranging from Conscious Company Magazine’s Top Business Leader to the Federal Lab Consortium’s technology license Deal of the Year. He has been profiled in B the Change, Forbes, the Los Angeles Times, Sustainable Brands, and many other media outlets highlighting sustainability and technology leaders and is widely recognized for his thought leadership and initiatives at the nexus of impact and innovation.
An entrepreneur-attorney, Kevin’s recently founded Quantiscope, an MIT/Harvard launched AI company advancing ML enterprise models for drug discovery, as well as climate tech Calliope Bio, a computational synthetic biology company launched from the Nucleate Activator and advanced through the Berkeley Skydeck accelerator. Kevin’s entrepreneurship career began with Resolute Therapeutics, a CARB-X awardee developing a novel class of broad spectrum antibiotics.
As an ESG leader, Kevin is a 2050 Fellow at the Yale Center for Business and Environment (CBEY), and select member of the World Economic Forum’s Crypto Sustainability Coalition. Kevin founded Tennessee’s local B Corp network B Tennessee and served as sponsoring counsel to B Academics. With a background in public-private partnerships, Kevin is a National Science Foundation (NSF) program evaluator for the Center for Bioplastics and Biocomposites (CB2) as well as the Carnegie Mellon Center for Quantum Computing and Information Technologies (Q-CIT).
Kevin’s practice areas include:
- patent and trademark prosecution, licensing and litigation;
- corporate law, with an emphasis on benefit corporations, socially responsible businesses and high-growth emergent companies;
- government contracts, with an emphasis on innovation funding;
- corporate and investor financing; and,
- technology commercialization.
To meet with Kevin Christopher, schedule an appointment through Calendly or email him directly at firstname.lastname@example.org.