Not Just Patents® Often Represents the Underdog
Most of our clients are small businesses trying to protect their trademarks, often from someone bigger who is claiming that the smaller businesses trademark is likely to be confused with the mark of the bigger company. When big companies try to enforce their trademark rights beyond what is reasonable and legal, it can be called “trademark bullying.” Many trademark oppositions or cancellations are preceded with a cease and desist letter from the potential opposer. Many cease and desist letters that we see contain what may be material misrepresentations of fact where trademark registrants claim that their trademarks are famous and deserve wide protection under the law when in fact ‘famous’ in trademark law is a very high bar and few trademarks except the biggest achieve that height.
A smaller business may be able to protect their trademark rights against an opposer or protect their trademark as an opposer but even if the underdog is completely right in theory, it still must be proven following the proper legal procedures for an opposition or cancellation proceeding (if the proceeding is before the USPTO).
The steps to successfully completing or defending from an opposition are difficult and involve understanding not just trademark law but also federal court procedures for admitting evidence, understanding discovery and how it works and other knowledge. Not Just Patents® Legal Services works with small business to protect trademark rights and works to defend these rights within small budgets. Corporate giants have the budgets to oppose and cancel but do not always have the facts on their side. Let us take a look at the facts and see if your business has to just give in or if your business has a right to defend what you have worked for.
Oppose or Cancel?
Can you do both--an Opposition Proceeding and then a Cancellation Proceeding if the first (Opposition) does not succeed? Not unless there are significant facts that change. An applicant who survives an opposition is entitled to move forward with use and development of its mark, without fear that the Opposer could obtain a second bite at the apple based on immaterially changed transactional facts. Orouba Agrifoods Processing v. United Food Import (TTAB 2010).
The question of an Opposition or Cancellation Proceeding is often a matter of timing. There is a small window of opportunity to oppose a trademark application, during the 30 days after it has been published for opposition or the 30-90 days after publishing if an extension of time to oppose is filed by the party that is bringing the opposition (you cannot take advantage of someone else’s extension of time). (See TrademarkOppositionProcess.com for information on how to search for trademarks published for opposition.)
A Cancellation to contest a registered trademark can only be filed after a trademark application has issued into a trademark registration. If a Principal Registration is less than 5 years old, a longer list of grounds are available than after a Principal Registration is more than five years old and has become incontestable. A Supplemental Registration does not have this time limit and can be cancelled at any time. Note however that waiting a long time to try to cancel a mark may run into more issues of affirmative defenses. The current USPTO filing fee for a Petition to Cancel has the same $300 filing fee per class as a Notice of Opposition. A Petition to Cancel can also be brought as a Counterclaim (used as a defensive tool) by a defendant in an Opposition or Cancellation proceeding.
How Often Are Trademarks Opposed?
Oppositions and Cancellations are Uncommonly Instituted But Are Real Threat Once Instituted
As reported in The USPTO Trademark Case Files Dataset: Descriptions, Lessons, and Insights, January 2013
The vast majority of published applications proceed directly to registration without any opposition. An opposition proceeding instituted for only 2.8 percent of 4.0 million published applications with prosecution event-data coverage in a recent USPTO study. For those applications no longer pending, the data indicate that the opposition was sustained [the trademark did not issue] in about 44.8 percent of observations in which an opposition was instituted.
A cancellation proceeding is instituted for only about 1.1 percent of the 3.4 million registrations with prosecution event-data coverage. For those registrations with proceedings no longer pending, the data indicate that a cancellation was granted in about 44.9 percent of observations in which a cancellation proceeding was instituted.
How to Get Started on Claiming Your Trademark Rights: Apply-Register
If you have found a competitor using your trademark or a mark that you believe conflicts with your trademark has been applied for or has been published for opposition, you need to act quickly. Waiting too long can have bad unintended results. Opposing a trademark before it registers is easier than trying to cancel the mark after it registers. A registered mark remains registered with full rights during a cancellation proceeding while the same mark being opposed earlier remains a pending application with fewer rights. Missing the opposition for an intent-to-use application can potentially mean waiting for years for the mark to register so that it can be subject to cancellation.
If you are just starting the process of obtaining a federal registration, we suggest our service, our methods and strategies. A Not Just Patents Five-Step Verification as part of a Plan for A Successful Trademark uses these steps plus more:
To Verify a potential trademark is strong, available to use, and ready to register, the process should be more than a direct hit federal search. To maximize the commercial strength and minimize the weaknesses of a trademark, a potential trademark user should:
5) Verify the Goods and Services ID is both the correct and the maximum claim that are user can make and verify that the Goods and Services ID meets USPTO requirements before filing.
(*We don’t stop here but this is a good start. Call us if you want to plan for a strong mark.)
Call us at 1-651-500-7590. We can help you go from wanting to protect your name to having a strong, legally protectable, successful trademark. If you have started to think of names or slogans that you would like to use, the timing is perfect to take all the right steps to file and protect your trademark. If you intend to use a name in the next year or so, the timing is perfect to plan the best way to protect that name and to reserve the name for future use.