For most businesses, waiting on the approval of a trademark application is cumbersome.
From initial filing to ultimate approval, the process averages anywhere from 6 months to a year. That's not to say there aren't exceptions. Depending on jurisdiction, things can move lightening fast (e.g. Australia) or painstakingly slow (e.g. Brazil).
If you've invested significant time and money in choosing the right mark, the last thing you want is for some other business to come along, claim grounds for opposition, and prolong the process even further. In those rare instances where litigation ensues, "ultimate approval" can take from 3 to 5 years.
The Trademark Opposition Process
A trademark opposition is a specialized legal proceeding seeking to answer one question: Should your trademark be allowed to register? That's it.
Without realizing this, many smaller businesses mistakenly assume losing in opposition against larger corporations is inevitable. But it really isn't—the legal complexities of trademark opposition processes are limited. So, even if you are "the small fish in the big pond," you should carefully weigh your options.
It's important to mention that only about 1 in 1000 trademarks will ever be involved in any type of specialized proceeding before the Trademark Trial and Appeal Board (TTAB). When faced with an opposition, your business must determine which is more financially palatable: The potential of defending against potential legal proceedings (a rarity) or the risk of changing your business's trademark.
How It Works
Once an application enters pre-grant stage, it's officially published for all to see. If another brand is on top of things, they will be regularly monitoring potential threats. If your name or logo is similar to their own, they will likely file an opposition. Grounds for opposition fall into two categories.
Absolute Grounds: The opponent believes they can prove inappropriate usage due to overall genericness, geographically deceptive misdescriptiveness, and/or downright fraud.
Relative Grounds: The opponent believes they can prove inappropriate usage due to the likelihood of confusion, similarity to a trade name already in use, or similarity to an already famous mark.
Opponents have anywhere from one to three months to formally enter an opposition depending on local jurisdiction. In a minority of jurisdictions, the opposition period occurs after the issuance of a registration; this is known as post-grant opposition.
What Happens Next
The court will ultimately uphold or dismiss the opposition based on priority of use and likelihood of consumer confusion. Although defenses can also be argued based upon other grounds (equitable defenses, such as laches, estoppel and acquiescence, may be available in some jurisdictions), such grounds usually have limited value since the United States Patent and Trademark Office (USPTO) only has jurisdiction over the registrability of marks, NOT actual use.
Typically, the losing party in an opposition proceeding can appeal an adverse decision to a higher authority. But, in many cases, opponents will seek coexistence agreements with applicants (i.e. defining scope of usage for each party) in order to avoid costly legal proceedings. Should both parties reach an agreement, the opposition case will be withdrawn.
How to Avoid The Process
Have you ever heard the saying: The best offense is a strong defense?
Well, that sentiment couldn't be truer than when it comes to avoiding trademark oppositions. The best way to expedite the trademark opposition process is to avoid it in the first place. And that means thoroughly researching your desired marks before applying.
In the past, the process of researching candidates was cumbersome. Pursuing government journals and culling through multiple online databases to identify potential threats could take dozens of hours and cost thousands of dollars.