The process of securing a trademark does not conclude with the filing of an application. Once an application is examined and accepted by the Trademark Registry, it is published in the Trademark Journal to invite objections from the public. During this stage, any third party who believes that the applied trademark conflicts with their existing rights may file a notice of opposition.
It is important for applicants to understand that an opposition is not a rejection by default. Rather, it is a legal proceeding that allows the applicant to defend the validity of their claim over the mark.
Understanding Trademark Opposition
A trademark opposition is typically filed by an individual, business, or entity that feels the registration of a proposed mark would infringe on their rights. Common grounds for opposition include:
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The mark is identical or deceptively similar to an existing registered trademark.
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The mark may cause confusion among consumers.
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The mark is descriptive or lacks distinctiveness.
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The application was filed in bad faith.
Steps to Take When Your Trademark is Opposed
1. Review the Opposition Notice
The applicant receives a formal notice from the Trademark Registry when an opposition is filed. It is essential to carefully review the grounds on which the opposition is based in order to prepare an appropriate response.
2. File a Counter-Statement
The applicant must submit a counter-statement (Form TM-O) within two months of receiving the notice of opposition. Failure to respond within this prescribed period results in the application being deemed abandoned. The counter-statement should directly address the claims made by the opponent and provide justification for the applicant’s right to register the mark.
3. Evidence Submission
Both parties are required to submit evidence supporting their respective claims. The applicant should provide materials such as:
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Proof of prior and continuous use of the mark.
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Invoices, promotional materials, and advertisements showing market presence.
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Documentation establishing goodwill and reputation associated with the mark.
4. Hearing Before the Registrar
Once evidence has been filed, the Registrar may call for a hearing. During this stage, both parties are given the opportunity to argue their case. Legal representation is strongly recommended, as professional assistance can significantly influence the outcome.
5. Decision of the Registrar
After reviewing the evidence and hearing arguments, the Registrar issues a decision. The possible outcomes include:
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Acceptance of the opposition, resulting in the rejection of the trademark application.
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Dismissal of the opposition, allowing the trademark to proceed to registration.
Strategic Considerations for Applicants
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Timely Response: Strict adherence to deadlines is critical to avoid losing rights by default.
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Professional Assistance: Engaging an intellectual property lawyer ensures that responses are drafted with precision and supported by relevant legal arguments.
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Settlement Options: In certain cases, disputes may be resolved through negotiation, modification of the mark, or coexistence agreements.
Conclusion
A trademark opposition should not be viewed as an insurmountable obstacle but as part of the registration process. With a well-prepared counter-statement, strong supporting evidence, and effective legal representation, applicants can successfully defend their rights and secure trademark registration. Prompt action and a strategic approach are the keys to overcoming opposition proceedings.