We advise our clients on asserting and defending their trademark(s) before the USPTO’s Trademark Trial and Appeal Board (TTAB). If another company or business has trademarked or is attempting to trademark a word, phrase, or logo that is generic, filed fraudulently, or would likely cause consumers to confuse your good or service with theirs then you should look into filing for a trademark opposition or cancelation proceeding.
Trademark oppositions are intended to prevent another party’s applied-for mark from receiving a registered federal trademark. Trademark oppositions are to be filed when a trademark application is still pending approval from an examining trademark attorney and before the mark is registered. If the mark has already been registered then one would have to file for a cancelation proceedings.
Trademark cancellation proceedings are intended to invalidate a registered trademark because it should not have been allowed.
Some common arguments presented in a trademark opposition and cancellation proceeding are the following:
3. Bad faith or fraud;
4. Likelihood of confusion; and
Please note that if a trademark properly gains incontestability status after 5 years of continuous use, then arguing descriptiveness is not allowed. It is important to remember that it is often better to handle these matters sooner rather than later.
Call or email us today if you have any questions with regard to filing for a trademark opposition and/or cancellation proceeding. We provide free initial consultations and fixed pricing if requested.