Opposition to U.S. Trademark Application
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IF SOMEONE IS TRYING TO REGISTER IN THE U.S. YOUR TRADEMARK OR SOMETHING SIMILAR TO IT
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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.
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How a U.S. trademark opposition is commenced
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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.
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Typical steps in U.S. trademark opposition
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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;;
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The next step in the proceedings is for the Applicant to file an Answer to the opposition;;
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Subsequent to an answer having been filed by the Applicant, the proceedings would proceed to Discovery stage;;
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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;;
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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; ;
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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.
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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.
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In conclusion, the TTAB would render its decision at the end.
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