You've got a great idea for a brand name and you want to secure it before someone else gets to it. But what you might not know is that there's a period when anyone can oppose your application. So how long is the opposition period for a trademark? How do you move forward with your application when there's still time for someone else to potentially oppose it? This article will help you get through this rough patch in trademarking.
1. What is the opposition period for a trademark?
The opposition period for a trademark is the time period provided by the USPTO for third parties to file an opposition to the trademark. If an opposition is filed during the opposition period, the trademark application is put on hold until the opposition is resolved. The opposition period for a trademark is between 30-60 days after the trademark application is published for opposition.
For example, if a mariner was planning to use the logo “United States Mariner” in its mariner service stations, a competing mariner would only have 30 days to file an opposition. The USPTO website has an explanation of the opposition process.
This is by no means an exhaustive list of steps in the trademark process reexamination, and your attorney should be able to advise you about your specific circumstances and prospects.
Patents
Lastly, and under the ‘other’ categories above, some trademarks require high standards of proof in order to be granted. For example, if I want to make my cat's collar "Flea collar," I have to prove “there are no generic words in the English language... which include ‘flea collar’ with the primary intent to identify and distinguish products for specific purposes as distinctive ‘cats’ or as descriptive… Accordingly the current registration should be refused."!?
Sometimes you show "a likelihood of confusion" and others require “irrelevance”. I recently found a particularly egregious example given to me by my favorite Brightcove SEO client, PageRank Tactics. PageRank Tactics had absolutely nothing to do with SEO products or SEO consulting at all and basically registered because they were exhausted. They got around the requirement for relevance by claiming that their name simply refers to "the practice of maximizing PageRank." Apparently Google doesn't think that's clever, but I guess it's nice to be able to register something that's not strictly a pitch for your products...
Intentional or Deceptive Trademark Infringement
Trademark violations are serious business, and they're probably harder to detect than civil infringement.
2. How do you respond to an opposition?
Don't get defensive. It's okay if you get criticized. It's okay if people get angry at you. It's okay if things don't go your way. It's okay if you're hated. It's okay if people talk behind your back. It's okay if you're hated. It’s okay if you pee your pants when you see emails that say something you don’t like. It’s okay if someone cancels your wedding. It’s okay if you get a deserved ass whooping’ at the start of your term in the angry man’s party. It’s okay if you experience some of the above. Hell, it’s okay if you have a kid steal your ideas and use them for their own profit and glory and hate and anger. It’s okay if you sell your idea, and your partner rhymes to your great old ideas, and you realize you can’t copyright hip-hop rhymes. The problem is, sometimes people feel like they must give you a polite ‘thanks but no thanks’ and ‘no thanks, we wouldn’t do that’ and then the next person who tries will think your threat must be true and this time you’ll do it all over again.
2. Your job as a trademark creator is not to stop people using your design as a trademark. A good trademark does not require stopping others from using it — it merely prevents others from doing things that are likely to infringe yours. If you can’t stop people from branding your unoriginal caffeine mug, nor from designing a coaster with your brand on it, nor from using your idea as the logo for a company that makes your coffee in a hilarious way, you don’t deserve to be called a trademark genius; your trademark does not exist.
Nikola Tesla invented the alternating current in 1856, but not the AC current we use in our houses today. He was also not the guy from the movie the play AC/DC.
3. What happens after the opposition period ends?
You may use the registered trademark in commerce in any way you want. Partnerships, associations, and joint ventures may use the registered trademark, but the registered trademark holder gets first priority and priority dates start on the date of registration. For example, Shenanigans Nightclub LLC registered "Shenanigans" in April 2014. So, the company that founded the business may use "Shenanigans" to indicate its goods and services in its marketing, branding, and advertisement. However, no one other than the company itself may use the trademark "Shenanigans."
4. Where can I find more information about registered trademarks?
The USPTO publishes a lot of information about registered trademarks. Tracey Tempe, Director of the USPTO's Office of Trademark Education and Research, provides this helpful resource website. Many registrars and websites also publish register information, including the following:
The Trans-National Recognition Database
The European Patent Information Database
Trademark Women’s Resource Page
The Directory of Trademark Holders
Filing a Trademark Case
What to expect in a trademark infringement claim
There are three phases to a trademark infringement case: discovery, summary judgment, and trial.
Conclusion: The opposition period for a trademark lasts 30 days, and you can respond with evidence to prove that your application should be approved anyway. A trademark opponent's case starts with the owner of the mark and his mark's competition. A mark's opposition period can vary between five and ninety days. The purpose of the opposition period is to protect the mark through discovery, so that the trademark holder can discover whether it has been infringed. In some states, the opposition must be filed within a specific time period to be effective. Also, the opposition must be filed in the proper forum for trademark litigation..