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Opposition to U.S. Trademark Application
Sep 2018
If someone is trying to register in the U.S. your trademark or something similar to it?
There are statutory steps to be taken to oppose that trademark application. Timing is important! The best time to oppose a trademark is during the period when it is published for opposition. Once the registration is granted, the trademark can only be canceled.
How a U.S. trademark opposition is commenced
Upon approval of the USPTO, trademark applications are published for opposition in the weekly USPTO Trademark Gazette. Once the USPTO publishes an application for opposition, a potential Opponent would initially have thirty (30) days within which to file a Notice of Opposition, or a request to extend the time to file a Notice of Opposition. A potential Opponent may file additional extension requests, and up to the maximum of 180 days of the date the mark was published in the Official Gazette for filing an opposition.
Typical steps in U.S. trademark opposition

  • A notice of opposition must be filed to the Trademark Trial and Appeal Board (“TTAB”) within (30) days, or the extension of time granted, of the publication
  • The next step in the proceedings is for the Applicant to file an Answer to the opposition
  • Subsequent to an answer having been filed by the Applicant, the proceedings would proceed to Discovery stage
  • Discovery Stage refers to the U.S. opposition procedure whereby the parties disclose and exchange to each other the evidence that the parties intend to rely on in the opposition proceeding
  • After the close of the Discovery Stage, the proceedings would enter the Hearing Stage, whereas the Opponent has to prepare and file its main trial brief
  • Thereafter, the Applicant then has to prepare and file its trial brief and the Opponent then has to prepare and file its reply trial brief afterwards
  • Subsequent to filing of Opponent’s reply trial brief, if either party files a request for an oral argument, the TTAB will schedule a hearing. If neither party requests a hearing, the opposition is decided on the evidence and testimony made of record during the trial phase in the absence of a physical hearing
  • In conclusion, the TTAB would render its decision at the end.
Sep 2021 Appeal against the decision of Trademarks Registry Jun 2021 Michelin Sues Hong Kong Company for Trademark Infringement May 2021 Oppositions Against European Trademarks Apr 2021 Procedure and Evidence Requirements for Trademark Cancellation in Non-Use Areas Mar 2021 Amendment of Trademark applications and Registrations in Hong Kong Feb 2021 Registered trademarks-use of ® symbol in Hong Kong Jan 2021 Do you need to register your trademark？
Dec 2020 Supremacy of Well-Known Trademark in Hong Kong Nov 2020 The Benefits of Strong Trademarks Oct 2020 Likelihood of Trademark Confusion in Hong Kong Sep 2020 TWeak trademarks are normally rejected registration due to its non-distinctive nature. Aug 2020 Trademarking in other countries Jul 2020 Restoration of Removed Trademark Registrations in Hong Kong Jun 2020 Validity and renewal of trademark registrations in Hong Kong May 2020 Filing Basis-Statement of Use in Hong Kong Apr 2020 Certificate of Hong Kong Trademark Registration Mar 2020 Amendment of Trademark applications and Registrations in Hong Kong Feb 2020 Opposition to Hong Kong Trademark Application Jan 2020 Color Marks
Dec 2019 Color Marks Nov 2019 SKECHERS succeed trademark infringement in China Oct 2019 Alfred Dunhill Win Huge Lawsuit in China Sep 2019 Second Bite Of Toymaker Lego In Infringing Battles In China Jun 2019 Is IPR protection sufficiently strong in China? The recent development of IPR protection in China. May 2019 Three-dimensional Trademarks Apr 2019 Intellectual Property Licensing Mar 2019 Opposition to Macau Trademark Application Feb 2019 PRC Trademark Opposition Procedures Jan 2019 Opposition to PRC Trademark Application
Dec 2018 Intellectual Property Licensing Nov 2018 Macau Trademark Opposition Procedures Oct 2018 Grounds of Opposition against U.S. Trademark Application Sep 2018 Opposition to U.S. Trademark Application Aug 2018 The Advantages of Filing Hong Kong Trademark Opposition in the First Place: Jul 2018 Hong Kong Trademark Opposition Procedures Jun 2018 Opposition to Hong Kong Trademark Application May 2018 Absolute Grounds’ for Refusal of a EUTM Application Apr 2018 Documentation requirements for filing appeal to People’s Court for trademark cases Mar 2018 Update of the Madrid System in Hong Kong Feb 2018 Invalidation of Trademark Registration in Bad Faith
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