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.

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.

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.

Protect your brand. Register My Trademark Now

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 Answer to a Trademark Opposition
 

References

Related articles

Overturning a Patent

A patent is a right to exclude others from making, using or selling an invention of yours. To be eligible for patent protection, the invention must incorporate original technology that has never been publicly released before. The U.S. Patent and Trademark Office, or USPTO, reserves the right to invalidate a patent even after it is granted, if it discovers that the patented technology is not original or that information about it was publicly released before the patent application was filed.

How to Use TESS for Trademark

A trademark is a unique symbol, phrase or word used to distinguish one brand of goods or services from another. Technically, a trademark is protected as soon as it is used to conduct business, although registering the mark with the United States Patent and Trademark Office provides additional advantages. In any case, a search of the agency’s Trademark Electronic Search System, or TESS, can help to ensure a duplicate mark does not already exist.

How to Challenge a Patent

The U.S. Patent and Trademark Office (USPTO) grants patents to allow inventors to enjoy legal monopolies on the beneficial uses of their inventions. Most patents are valid for 20 yeas after their initial filing date. If you believe that a patent was inappropriately or mistakenly granted, you may ask the USPTO to reexamine it. If the USPTO upholds the patent, you may appeal the decision to a U.S. federal court.

File a Trademark Online. LegalZoom. Learn More.

Related articles

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 ...

How to Trademark an Idea

If you have an idea for a trademark design that you want to use exclusively for your business, you should consider ...

How to File a Response to a Summons if I Have an S-Corporation

An S corporation responds to a summons in the same way as a regular corporation. A summons informs the corporation that ...

How Can a Corporation Bring a Suit?

A corporation is an organization formed under state law to carry on a business. A corporation is, in essence, a legally ...

Browse by category
Ready to Begin? GET STARTED