Trademark Tips: Understanding the Objection Procedure

Trademark Tips: Understanding the Objection Procedure

It is important to note that trademark registration is only the first step in registering a brand, company, or product name for effective use. Besides monitoring new trademark applications to make sure that those potential trademarks don’t infringe on or damage existing rights, brand owners must also protect valuable trademarks. Read ahead to get the trademark objection procedure

Why monitor new applications?

In addition to being an integral part of any trademark protection strategy, early detection of potentially conflicting trademarks is essential in order to meet the deadlines associated with submitting objections (called oppositions) to third party registration attempts. These oppositions should be filed within a short period of time (perhaps as soon as two months after publication of the attempted registration). The process of challenging trademarks after registration is far more time-consuming and costly.

  • Registries such as U.S. Patent and Trademark Office and the Office of Foreign Trademarks play a key role in detecting trademark abuse early on.
  • There are a variety of styles of watching services, but they usually fall into one of the following categories:
  • This watch identifies marks or devices (such as logos) that are visually or phonically identical;
  • Watch for identical or confusingly similar trademarks.

You can ask for either an opinion or an unopinionated watch for either of the above types. An attorney’s opinion about the results of an identical or similar trademark watch based on prior rights is included in trademark watches with opinions.

What happens if a watching service identifies a conflict?

Upon acceptance of a trademark application, the registry will publish the new trademark, initiating a period in which third parties can raise objections, commonly through opposition. When a trademark application conflicts with the business and earlier rights of a trademark owner or other third party, they can challenge the application by filing a challenge.  Usually, trademark owners object to a new trademark if it’s identical to or confusingly similar to their own.

You will be notified of conflicting trademarks via your active watching service when they are published, allowing you to decide whether to oppose. Taking timely action is therefore very important as we mentioned earlier, as there is a very small window of opportunity for bringing such actions.

How to decide whether to raise an objection

In addition to considering your business/commercial strategy for IP, a case-by-case decision will need to be made.

Some businesses are aggressive about enforcement and will raise objections to any potential conflict, no matter how small. Some companies take a more strategic approach and raise objections only in cases of clear conflict.

Assessments should, however, take into account, among other things:

  • The scope of your previous rights;
  • How closely the new trademark resembles your earlier brand;
  • In terms of whether the common elements of the marks are descriptive or industry-specific;
  • In terms of the trademarks and those in use on the market, the products/services covered by the trademarks.
  • It is important to determine the identity of the applicant and the scope of their existing protection in the relevant country as well as elsewhere.
  • Whether the new trademark would impact your brand and business; and
  • The vulnerability of your earlier rights (e.g. subject to non-use cancellation and not used for all goods/services) and the risk of counter-attack.

As soon as you decide to take action, consider whether you should contact the third party to request withdrawal or limitation of the conflicting trademark. In each case, your business/commercial strategy will play a major role in the decision you make.

Trademark attorneys can evaluate each case and offer strategic advice.

How does the opposition process work?

Ultimately, if a settlement is not reached before the deadline for raising objections, formal action may be necessary. Depending on the jurisdiction and country, the opposition process may be different. Here are a few examples of processes trademark owners may encounter:

In Russia, there are no formal opposition proceedings. A trademark application can be contested by a third party during the application stage, but that third party will not be considered as part of the proceedings. In the event that the examiner still decides to allow trademark registration, third parties will have the option to file an action post-registration.  

The US – when an application is published, there is a 30-day opposition period in which parties may file an opposition or request an extension to file an opposition. There is no limit to the number of extensions allowed, however, once opposition is filed, it runs like a full litigation proceeding. The US opposition process involves depositions, discovery and oral hearings, and the costs can run into hundreds of thousands of dollars. The settlement of opposition actions is therefore encouraged and many do not proceed to a final decision.

In the EUIPO, the publication of an EUTM triggers a three-month non-extendable opposition period. As soon as the opposition is filed, there is an initial cooling-off period during which the parties can negotiate an amicable settlement.  Upon a failure to extend the cooling-off period, the opponent must provide further facts, arguments, and evidence. Thus, oppositions to the EUIPO place a heavy onus on the opponent. The applicant will then have a chance to respond, after which the opponent will have one more opportunity to respond. In the following step, the EUIPO will consider the papers submitted. Neither the EUIPO nor its predecessors conduct oral hearings.

A UK trademark’s publication triggers a two-month opposition period, which can be extended by one month by filing a Notice of Threatened Opposition with the UKIPO. We cannot grant any further extensions. The opponent can suffer significant costs if the applicant is not notified (directly or by filing the Notice of Threatened Opposition) prior to filing the formal opposition action. As soon as the opposition is filed, the applicant must respond with a defence and counterstatement. Parties can also request a cooling-off period to allow negotiation to take place. An application is considered abandoned if no defence is filed or a cooling-off request is filed. Following the filing of a defence, the proceedings generally move into the evidence rounds, following which the parties can file further written submissions, request an oral hearing or request a decision based on the papers they have filed.  

The ‘fast-track’ option

A fast-track opposition procedure is offered in some jurisdictions, such as the UK. This allows for a quicker and more cost-effective method of raising objections. There are some oppositions that can use the fast-track procedure, but it does place a higher evidential burden on the opponent at the time of filing the opposition (rather than during the evidence rounds). The fast-track system is clear and welcome for trademark owners who don’t require evidence of use for their registered trademark. In some cases, however, a standard opposition may be best. If you are unsure which procedure is right for your business, speak with your trademark attorney.

Read more

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