Drafting and Filing Trademark Oppositions – Prosecution and Defence USPTO

In USA Opposition Proceedings are conducted before the United States Patent & Trademark Office Trademark Trial and Appeal Board (“Board” or “TTAB”). The Board decides ex parte appeals from Examining Attorneys’ final refusals to register marks and inter partes cases relating to opposition and cancellation proceedings.

Opposition means to oppose the application after it has been published in the Official Gazette of the U. S. Patent and Trademark Office (OG). Opposition can only be filed for the trademarks applied for registration on Principle Register within 30 days after publication of a mark on the Principal Register. This time can be extended upto 90 days by the board on request. Marks on the Supplemental Register are not published for opposition. If a party wishes to take action against a mark on the Supplemental Register, it must petition to cancel the registration. A decision of the TTAB may be appealed to the Court of Appeals for the Federal Circuit (“Fed. Cir.”).

The following may be taken as grounds for opposition.

  • Likelihood of confusion  (most common ground)
  • Descriptive, generic, surname, deceptively misdescriptive or de jure functional
  • Lack of bona fide intent to use the mark
  • Dilution

Intellectual Property Logium assists in filing oppositions and defending the oppositions with US TTAB.

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