To oppose or not?

10 October, 2018

Understand the strategies available for protecting your trademark rights so you’re ready when you encounter a problematically similar mark.

Policing trademarks in the internet age is no easy task. With new brands constantly introduced to the global, digital marketplace, staying aware of copycats, knock-offs and imposters takes constant effort. The chance of trademark conflict – intended or otherwise – is naturally increasing as a result.

Trademark monitoring helps put suspicious competitive activity on the radar, but trademark owners still have to pick their battles and decide how to act: which threats to pursue, where, and in what way. While you should consult an attorney to determine the right course of action for your particular scenario, we’ve put together the following guide to help you understand several possible options you have when you encounter a trademark copycat.

1. Be proactive

Enforcing trademark rights starts with proactively monitoring your mark, so you’re aware of any potential conflict before it even reaches the marketplace. Once an application for a new trademark is published by the Trademark Office, there is a finite window of time to file an opposition—just 30 days in the U.S. (though deadline extensions are possible under certain conditions). It’s critical to set time aside to review your Trademark Alerts Reports on a regular weekly basis so you can take action in time.

2. Act early

If you catch the issue very early, one option is to send a Cease and Desist Letter, or a Demand Letter, to the correspondent listed on the application before the mark is even published for opposition. While the U.S. Patent and Trademark Office will screen the mark against pending and already registered trademarks as part of processing the application, your attorney may also send a letter of protest right away to alert them to your pre-existing rights. If the issue escalates to litigation, having taken a proactive approach can work in your favor. In assessing the strength of your rights, courts frequently consider how you have attempted to enforce your trademark so far. Demonstrating preemptive activities, such as trademark monitoring and sending demand letters, can support your case.

3. File for opposition

If the problematically similar mark is still in the application stage, you may want to consider filing an opposition notice with the USPTO. In the U.S., before a mark is successfully registered, there is a 30 day “opposition period,” during which trademark owners who believe their trademark rights would be harmed by registration of the new mark have 30 days from the publication date to oppose the application, or to obtain an extension to file an opposition. Oppositions are generally much less expensive than federal litigation and can often result in the other party giving up on the mark.

4. Agree to co-exist

Sometimes, a filed opposition doesn’t need to be decided by the USPTO’s Trademark Trial and Appeal Board (TTAB) if an amicable settlement can be reached between both parties. In certain situations, filing an opposition can be an efficient opportunity to negotiate changes to the application that allow the marks to coexist without causing confusion in the market.

Remember, you should always consult an attorney to determine the right course of action for your particular scenario.