The United States Patent and Trademark Office (USPTO) is not perfect. Because of imperfection and the subjectiveness of confusing similarity some similar marks make it through the examination process. You as a trademark owner should protect your interest by pursuing available avenues to prevent those confusingly similar marks from maturing to registration. Trademark opposition filings can prevent the registration of a similar mark and save your brand from consumer confusion.
What is a Trademark Opposition?
An opposition is a legal proceeding whereby one party seeks to prevent the registration of a pending trademark. Any person who believes that he will be damaged by the registration of a mark may file an opposition. This does not limit opposition filings to registration or application owners, but extends to those with common law rights as well.
The Time Frame
Opposition filings are due after the marks are approved for registration. Specifically, the filing is due within 30 days of the publication of the trademark in the USPTO’s online magazine, Trademark Official Gazette.
Additional 30 Days
You can extend the ability to file a trademark opposition by 30 days from the end of the opposition period by filing an extension request. This request must be requested within the opposition period and is granted simply from the request (i.e. no other evidence/declarations need to be presented).
60 More Days
You can also receive a further 60 day extension by showing “good cause”. Good cause can be shown by stating you need additional time to investigate the claim, you need to confer with counsel, or time to seek counsel, among others.
Another 60 Days Please (180 total)
Lastly, you can extend it an additional 60 days beyond the 120 days already requested (30 day initial period + the 90 day extension), 180 days total, by a showing of “extraordinary circumstances”. Extraordinary circumstances are typically shown by a consent from the applicant you plan to oppose (tough to get, unless you’re in negotiations with the other party).
What is the Point?
Simply stated, you want to prevent marks from obtaining registration that could harm your mark. For example, you own the registration for QWERTY SAMPLE for clothing and a mark for QWERTY POPULAR gets approved for clothing. The two names are not exactly identical in their entireties, however, they are similar enough, because of the shared term QWERTY, whereby your consumers would be confused. If you don’t oppose QWERTY POPULAR the mark will eventually become a registered mark. This could pave the way for other marks to use the term QWERTY along with another term to obtain registration. An opposition filed against QWERTY POPULAR would most likely prevent its registration and protect your mark from consumer confusion, thus, preventing other third-parties from piggy backing and using the QWERTY name in relation to clothing.
The moral of the story is an opposition may be as simple as filing the opposition, whereby the applicant fails to respond, and you get the conflicting application withdrawn. Thus, saving you from consumer confusion and protecting your mark.