Responding to a Challenge from the Trademark Office
You filed your trademark application with the U.S. Patent and Trademark Office (USPTO) a few months ago. Good news: the USPTO trademark examiner gave clearance on the mark. But then comes the bad news: A company called “BigCo” files a challenge to your mark with the USPTO (or threatens to), claiming your mark will likely create confusion with their mark for similar goods or services. What now?
That depends. On the one hand, BigCo’s counsel may file a “Request for Extension” with the USPTO. The Request for Extension says in effect to the USPTO, “Don’t allow this mark to register yet. We may have an issue.” Counsel also says to you, “We have an issue with your application. We’d like to discuss this informally first.”
On the other hand, BigCo may go straight to seek an administrative hearing to deny your registration. This is started by its filing a Notice of Opposition with the USPTO.
Either way, BigCo will make certain demands under the threat of actual or potential administrative proceedings. Often, the demand is to completely abandon the application and stop using the mark, due to likely confusion.
Your options in the face of any such demand are several. You can fight or talk, or both. Maybe you can negotiate a solution, likely relying on the assistance of an experienced trademark attorney. Modest changes to your application at the trademark office may be enough, such as limiting the description of the goods to which the mark would apply. Or you may decide to fight the refusal.
If you fight, you can continue to negotiate, ostensibly from a position of strength. The less valuable the mark is to you, the more flexible you can afford to be, in any case.
Fighting the opposition goes something like this: You file a formal Answer to the Notice of Opposition, much as you would respond to a summons and complaint in court litigation. The trademark office will set a deadline for you and the opposing party to exchange basic information regarding discovery and settlement. Discovery will then proceed and may include requests for documents and written answers to questions provided under oath. (by written interrogatories or by deposition). Final motions will be filed close to the trial date set by the USPTO. Thereafter, if the case remains alive, the opposer will present its declarations and documents in phase I of the trial. You will file your declarations and documents in phase II. The opposing counsel gets to rebut your evidence in phase III. Briefs arguing each sides case are filed. Then the USPTO Board makes a decision.
Likelihood of confusion in these proceedings is determined by comparison of the marks and the stated goods in the application vs. the opposer’s use. On the two marks, differences of words or designs in the marks and the commercial impressions created to consumers are key. On the described goods, both the similarities in goods and channels of distribution are major factors.
Because many opposers demand that you not only abandon your registration application but also discontinue use of the mark, it is important to understand what the USPTO ruling can do, and what it can’t. The USPTO cannot order you to stop using the mark. It can only deny registration of that mark. You can continue to use the mark at – we say – “common law” as long as a federal court does not stop you.
To learn about federal court proceedings against or for your trademark rights, stay tuned for our next article, here at Home Business Magazine.
The author is founder of Payne IP Law, www.bobpayne.com, which has a national trademark prosecution and litigation practice. See also his article last month in Home Business Magazine on Non-Final Office Actions.
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