A trademark application may seem simple, but as I frequently say, trademark law is deceptively simple. It can get very complex, very fast.
An example of where that can happen is when a trademark is opposed in a trademark opposition proceeding. A trademark opposition involves an Opposer challenging an Applicant’s trademark. The Opposer is the party in the position of a plaintiff were it a civil lawsuit, and the Applicant is the party in the position of the defendant.
This article is written for the Applicant, although this information is essential for an Opposer to know.
Trademarks are published before registration
The high-level procedure for trademarks at the U.S. Patent and Trademark Office is simple. A trademark application is submitted. It is examined at some point between 6 to 9 months from when it is filed. If the trademark clears examination, it is published.
If a trademark application clears publication, it can proceed to finalization.
What is the 30-day trademark publication period?
Routine publication during the application process gives 30-day window for others to oppose registration of your trademark. This is a systemic safeguard against confusing, damaging, or fraudulent registrations.
What can happen during the 30-day trademark publication period?
A member of the public who would be injured by registration of your mark can oppose registration of your trademark during this window. This is done by filing a Notice of Opposition.
If 30 days is not enough time, they can file an extension of time to oppose your mark, but that extension does need to be filed within that window.
What is a Notice of Opposition?
A Notice of Opposition is similar to a complaint in a civil lawsuit. It must even comply with many of the same rules as a complaint in federal court. It contains all of the averments (sometimes called “allegations”) made by the Opposer against the registration of your trademark.
A Notice of Opposition acts also as a request for the Trademark Office’s Trademark Trial and Appeal Board (TTAB) to institute an opposition against your trademark application. The Opposition’s institution order will include a deadline for an Answer, which is typically 40 days.
There are many procedural requirements that a Notice of Opposition must comply with. This compliance can be challenged via a Motion to Dismiss.
How to respond to a Notice of Opposition
There are a few ways to respond to a Notice of Opposition, but whether and which ones to use depend on your case strategy. These response options include, generally:
- An Answer
- A Motion to Dismiss
- A Motion for an Extension of Time
Note that an extension of time merely delays the Answer deadline.
Which tactics you employ depends on your case strategy. Your case strategy will take into account a variety of factors, such as:
- The similarities or dissimilarities of any trademarks relied upon
- How much you want to or need to fight for your trademark
- The bargaining positions of the parties
- The relative power of the parties
- The size of the parties
- Your budget
Why file an Answer?
An Answer is the default response to a Notice of Opposition. The Answer contains your responses to the particular averments made in the Notice of Opposition. There are a variety of ways these responses may be worded. There are three main ways to respond to an averment:
- Admit it
- Deny it
- Claim no knowledge of information sufficient to form a belief (this is treated as a denial by the TTAB)
The Answer may also include counterclaims and affirmative defenses. Some counterclaims are “use it or lose it” and can’t be brought up later if they’re not made in time in the Answer.
What happens once the Answer is filed?
Usually, once the answer is filed, the pleadings stage closes. This means that the opposition can proceed to discovery.
What can be filed instead of an Answer?
In many oppositions, an Answer is not the first paper the Applicant would file. Remember, a trademark opposition functions similar to a civil lawsuit. You may find it desirable to challenge the validity of the Notice of Opposition or try to settle the matter with the Opposer.
Can a Motion to Dismiss be filed in a Trademark Opposition?
Trademark oppositions follow generally the Federal Rules of Civil Procedure and the Federal Rules of Evidence, in addition to specific statutes and rules applicable to TTAB proceedings. One of those rules is called Rule 12(b), which permits you to file a Motion to Dismiss against a Notice of Opposition.
The Opposer is obligated in the Notice of Opposition to plead facts and claims in a particular and sufficient way to support their case.
A Motion to Dismiss can include a key defense: that the Opposer has failed to state a claim upon which relief may be granted. This defense argues that the Notice of Opposition is legally deficient and should be dismissed. If the Notice of Opposition is deficient, the TTAB should dismiss the case or allow the Opposer to amend the Notice of Opposition.
A successful Motion to Dismiss can result in a dismissal of all or part of the Notice of Opposition. Any parts that are dismissed no longer need to be answered. If the entire Notice of Opposition is dismissed, and if the Opposer is not given leave to amend their Notice of Opposition, the Opposition is terminated.
Can a Trademark Opposition be settled?
Yes. Strange as it may seem, a Trademark Opposition can be settled by the parties involved. This is because the Trademark Office is not a party to the dispute. The dispute is between two non-Trademark Office parties and facilitated by the Trademark Office. As such, the parties can negotiate and effect a settlement.
Usually, there are a few key milestones at which settlement is possible:
- Before an Answer is filed by the Applicant
- At the Discovery conference
- During or after discovery
- After the Plaintiff’s first Trial period ends
Settlement is, of course, possible at other times, but these times are the most likely times a settlement could be negotiated given the positions and work performed by the parties.
When the parties are engaged in settlement discussions, the parties can agree to extend the TTAB deadlines. One of the parties would then file a consent motion to extend the time. Consent motions are straightforward to file and are granted nearly automatically by the TTAB, usually the same day they’re filed.
When negotiating before filing an Answer, a consent motion like this is very helpful to delay the need to prepare and file the Answer.
How to decide how to respond to a Notice of Opposition?
You may use only one of the above tactics in official filings with the TTAB. You may be able to negotiate settlement without ever needing to file an Answer or file a Motion to Dismiss. You may decide that your case is such that filing an Answer right away is optimal. This can be helpful when the budget for a fight is low and you desire a quick resolution.
You may be dealing with an Opposer who, realistically, has much more bargaining power than you and will not come to the table to negotiate settlement. In this kind of case, so long as you have legitimate grounds to allege for dismissal, a Motion to Dismiss can be helpful to get them to the table.
Your tactics come back to your case strategy.
While a TTAB opposition may seem like a frenetic exercise at some points in the case, your experience can be calmed and smoothed quite a bit by doing some thinking up front and deciding on a case strategy. In addition to the factors above, your case strategy should account for the following:
- Your ultimate goals in the case
- Your settlement conditions
- What you are willing to spend—and when—to defend the trademark
By having a good understanding of your case strategy, you can make prudent decisions throughout the phases of your trademark opposition, including right at the start. And, keep in mind, your case strategy should, of course, line up with your IP strategy and fit your business. If you need help responding to a Notice of Opposition or planning out a TTAB opposition case strategy, book a discovery call with us at https://discover.stake.law.
