If you become aware of another business using your trademarks and you discover that the business has applied for a trademark registration, the United States Patent and Trademark Office provides a way for you to contest the filing. You can contest the filing before and after the trademark registration issues as long as you comply with the USPTO’s deadlines and procedures.
If the trademark filing that an individual wishes to contest is still in the application phase and a registration for the mark has not yet been issued, an opposition proceeding can be filed. According to the Trademark Trial and Appeal Board Manual of Procedure, an opposition seeks to prevent a trademark examiner from issuing a trademark registration for the mark. If you believe you would be damaged if the USPTO were to register a mark, then you have standing to file an opposition proceeding. To oppose the application, you must file an opposition within 30 days after publication of the application for the contested mark. The Trademark Trial and Appeal Board will determine whether to grant your opposition and deny the application to register the mark.
If the trademark registration that you want to contest has already issued, you can file a cancellation proceeding within five years from the date of registration. There are several grounds for filing a cancellation proceeding. Any person who believes that the registration will damage him may file a petition to cancel the registration. The trademark registration at issue can also be cancelled if the mark becomes a generic name, if the mark is functional, if its owner has abandoned the mark or if the owner obtained the registration through fraudulent means.
If the trademark owner whose mark you wish to contest is infringing one of your trademarks, you may have legal standing to file a civil trademark infringement and unfair competition claim against the owner of the infringing mark in federal court. If you file a federal court lawsuit, one legal remedy you can seek is cancellation of the defendant's trademark registration. A judge can enter an order cancelling the mark, and the judge's order is binding on the Trademark Trial and Appeal Board and the USPTO.
The individual contesting a trademark filing can choose to file an action before the Trademark Trial and Appeal Board or bring a lawsuit in federal court. Generally, it costs more to bring a lawsuit than to bring an opposition or cancellation action. A significant difference between the two is that parties to an agency action submit written evidence to the Board instead of submitting live testimony at a trial. Submitting the record to the agency instead of making the record in open court results in fewer business disruptions and lower costs and attorney fees.
- United States Patent and Trademark Office: Trademark Trial and Appeal Board: Manual of Procedure
- Cornell University Law School: 15 USC 1063: Opposition to Registration
- Cornell University Law School: 15 USC 1064: Cancellation of Registration
- United States Patent and Trademark Office: Report to Congress: Trademark Litigation Tactics
Marilyn Lindblad practices law on the west coast of the United States. She has been a freelance writer since 2007. Her work has appeared on various websites. Lindblad received her Juris Doctor from Lewis and Clark Law School.