How to Contest a Trademark Filing

By Marilyn Lindblad

If you become aware of another business using your trademarks and you discover that the business has applied for a trademark registration, the United States Patent and Trademark Office provides a way for you to contest the filing. You can contest the filing before and after the trademark registration issues as long as you comply with the USPTO’s deadlines and procedures.

If you become aware of another business using your trademarks and you discover that the business has applied for a trademark registration, the United States Patent and Trademark Office provides a way for you to contest the filing. You can contest the filing before and after the trademark registration issues as long as you comply with the USPTO’s deadlines and procedures.

Opposition

If the trademark filing that an individual wishes to contest is still in the application phase and a registration for the mark has not yet been issued, an opposition proceeding can be filed. According to the Trademark Trial and Appeal Board Manual of Procedure, an opposition seeks to prevent a trademark examiner from issuing a trademark registration for the mark. If you believe you would be damaged if the USPTO were to register a mark, then you have standing to file an opposition proceeding. To oppose the application, you must file an opposition within 30 days after publication of the application for the contested mark. The Trademark Trial and Appeal Board will determine whether to grant your opposition and deny the application to register the mark.

Protect your brand. Register My Trademark Now

Cancellation

If the trademark registration that you want to contest has already issued, you can file a cancellation proceeding within five years from the date of registration. There are several grounds for filing a cancellation proceeding. Any person who believes that the registration will damage him may file a petition to cancel the registration. The trademark registration at issue can also be cancelled if the mark becomes a generic name, if the mark is functional, if its owner has abandoned the mark or if the owner obtained the registration through fraudulent means.

Litigation

If the trademark owner whose mark you wish to contest is infringing one of your trademarks, you may have legal standing to file a civil trademark infringement and unfair competition claim against the owner of the infringing mark in federal court. If you file a federal court lawsuit, one legal remedy you can seek is cancellation of the defendant's trademark registration. A judge can enter an order cancelling the mark, and the judge's order is binding on the Trademark Trial and Appeal Board and the USPTO.

Litigation Expense

The individual contesting a trademark filing can choose to file an action before the Trademark Trial and Appeal Board or bring a lawsuit in federal court. Generally, it costs more to bring a lawsuit than to bring an opposition or cancellation action. A significant difference between the two is that parties to an agency action submit written evidence to the Board instead of submitting live testimony at a trial. Submitting the record to the agency instead of making the record in open court results in fewer business disruptions and lower costs and attorney fees.

Protect your brand. Register My Trademark Now
How to Disclaim Part of a Trademark

References

Related articles

Explanation of a Trademark Application for a Corporation

A trademark is a word, name, symbol or device that identifies a brand. When a company uses a mark to identify its goods in commerce, it acquires a right to use the mark on an ongoing basis. A company need not register a mark to acquire trademark rights, but registration does alert others to the existence of the trademark and can yield other important benefits.

What Is the Consequence of Not Policing Your Trademark?

Trademark is any design, word or phrase that uniquely identifies your company's goods or services. Trademark rights attach when you are the first to use the mark in commerce, or when you register a mark with your state or federal trademark office. Registration bolsters trademark protection and allows the holder to sue infringers in federal court. Actively policing a trademark is necessary to ensure it is not deemed invalid.

Logo & Trademark Rules in the US

The U.S. Patent and Trademark Office defines a trademark as "a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others." A logo is a distinctive graphic design element that may be included in a trademark. Trademarks are governed by both state and federal law.

File a Trademark Online. LegalZoom. Learn More.

Related articles

How to Answer to a Trademark Opposition

If a third party is opposing your trademark application and has served you with a notice of opposition, you will be ...

Why Have a State Trademark?

Business owners have the ability to register for state trademark protection instead of, or in addition to, federal ...

When Does a Trademark Need to Be Defended?

You created your trademark, and you used it in commerce. Consumers became familiar with you and your mark and your ...

What Is the Penalty for Violating a Trademark?

A trademark is a symbol, word or phrase that identifies the source of a product or service. Trademarks are valuable ...

Browse by category