Trademark Opposition Representation
During the trademark registration process, the United States Patent and Trademark Office (USPTO) provides the public an opportunity to oppose the registration of a trademark in an administrative proceeding. A trademark opposition proceeding is less expensive and much faster than a trademark infringement lawsuit, because the trial is by way of submitted testimony rather than in court testimony. However, similar to a trademark lawsuit in federal court, there is a settlement conference, a discovery phase (depositions), and the filing of motions and briefs. Unlike a trademark lawsuit, a trademark opposition proceeding cannot seek monetary damages.
Wagenknecht represents both opposers and trademark applicants in trademark opposition proceedings.
Trademark Opposition Proceedings
Filing an Opposition
Anyone that has a legitimate interest in stopping the registration of a trademark has standing to pursue an opposition proceeding. Most often the opposer owns a trademark (whether registered or not) considered confusingly similar to the mark to be registered. The Notice of Opposition is similar to a Complaint in federal or state court. Specifically, it contains a caption of the parties involved followed by numbered paragraphs which state the factual background, the grounds for opposition, and the request for relief.
Filing an Answer
The trademark applicant is provided the opportunity to respond to the Notice of Opposition. If no answer is filed, the opposer can seek a default judgement.
Like a lawsuit in federal court, a trademark opposition will include requests for information from each side and can include taking witness depositions . It will also include submitting legal briefs and can include an oral argument. If the opposer prevails, the applicant’s trademark applicant will be refused, resulting in the applicant being unable to obtain federal registration. If the applicant prevails, the applicant’s trademark will likely proceed to final registration.