How to Upload Answer to Opposition Uspto

(This article has been updated for 2022).

How to answer a trademark opposition is an of import offset step in defending your trademark rights. This guide brings everything you lot need to know about answering a trademark opposition.

What is a Notice of Opposition?

Trademark opposition proceedings are contested matters before the U.South. Trademark Trial and Entreatment Board (TTAB).

The complaint, known as a Observe of Opposition , is filed by the Opposer, who may allege several grounds for refusal of a trademark application.

Once the Notice of Opposition has been served upon the Accused, the TTAB will result an Order setting along the relevant dates for each successive stage of the proceeding.

This includes the time to file an Answer, the initial conference, initial disclosures, discovery, and trial dates.

The failure to comply with the example management dates could irreversibly jeopardize a party's rights.

Hither are half dozen steps to consider when preparing and filing an Answer to a Observe of Opposition

How to Answer a U.s.a. Trademark Opposition? Six Steps to Consider

Review the Opposer's Complaint

The Observe of Opposition must contain :

(1) a short and obviously statement of the reason why the opposer believes it would exist damaged by the registration of the opposed marking (i.eastward., opposer'southward continuing to maintain the proceeding)

(2) the grounds for the opposition.

Standing generally requires that the Opposer take a real interest in the upshot of the proceeding and that the allegations of amercement take a reasonable basis in fact.

An Opposer may raise any bachelor statutory ground for the opposition that negates the defendant'south correct to registration, including the likelihood of confusion, mere descriptiveness, or that the Applicant lacked a bona fide intention to use the mark at the time of filing.

Analyze the Opposer's Claims

The party that files a notice of opposition is called the Opposer.

The party that filed the application that is being opposed is known as the Applicant.

If you are the Applicant, it is important to understand the basis for the Opposers' claims .

        a. Likelihood of defoliation.   For example, if the Opposer is claiming a likelihood of defoliation with one of its existing trademark registrations, consider the following:

• is your trademark similar in sight, sound, or meaning to the Opposer's trademark?
• are all of the appurtenances and services in the Opposer'southward registration being currently used in commerce?  (one way to determine this is to comport a search of the Opposer's website and commercial activities);
• are the Opposer's goods and services in the same grade as those in your trademark application?  If not, are the appurtenances or services considered related to your own?

       b.  Mere descriptiveness.  If the Opposer is claiming that your trademark is merely descriptive and should be refused registration, here are some factors to consider:

• does your trademark describe an ingredient, office, or feature of your appurtenances?  For example, the trademark BED AND BREAKFAST REGISTRY has been found to be merely descriptive of lodging reservation services.
• can your trademark be considered to accept more one significant such that information technology is not merely descriptive of your practical for goods and services?
• does your trademark contain a logo design or other words that are not descriptive of your goods or services?

      c.  Lack of bona fide intent.  If the Opposer is claiming that you did not have a bona fide intent to utilize your mark in commerce at the time of filing, verify that:

• you accept evidence of business plans going dorsum to your fourth dimension of filing related to efforts to develop or market goods to be offered for sale under the mark;
• if you did not have a written business organisation plan, that you lot have other prove that demonstrated your objective intent to use your trademark in commerce every bit of the filing date (for example, emails to tertiary-party website developers, manufacturers, or marketing agencies).

Review the U.S. Trademark Board Rules

Trademark opposition guidelines may be establish in the Trademark Board Transmission of Process.   The Manual sets forth the various statutes, rules, and example precedent applicable to trademark oppositions.  This includes all requirements and deadlines that must be adhered to in an inter partes proceedings before the Lath.  Practitioners should refer to it ofttimes, as it provides a solid foundation to ensuring that the case stays on track.

Typhoon the Reply

The requirements for a properly drafted Answer may be found in TBMP Section 311.   While in that location is no standard format for an Reply, it is generally best to answer each numbered paragraph of the complaint by providing a short statement either admitting or denying the alleged facts.  If you cannot exercise so, then state that y'all have insufficient facts to either acknowledge or deny the claims.  The Answer is not the place to respond to the claim of the Discover of Opposition.  In conjunction with the Answer, a listing of  possible affirmative defenses and potential counterclaims should too be considered.

Consider affirmative defenses

An answer to a trademark opposition may include affirmative defenses.Examples of affirmative defenses are Opposer's unclean hands or fraud in bringing the opposition.  Such defenses include that the Bidder should be entitled to registration discipline to certain restrictions to its identification of goods or services.

Consider any possible counterclaims

A counterclaim is where the Defendant/Applicant seeks to attack the pleaded registrations of the Opposer.  The about mutual grounds are a petition to cancel ane or more of the Opposer'south pleaded registrations based on abandonment.  This can include abandonment of utilize of some of the appurtenances contained in the Opposer's registration, or all of the appurtenances.  To found a prima facie case of abandonment, the complaining party must criminate at to the lowest degree three years of consecutive non-employ of the mark with an intention not to resume use.

Conclusion

As a defendant in a trademark opposition proceeding, information technology is important to accept a well-crafted respond, affirmative defenses, and counterclaims, where appropriate.

Depending on the facts of the case and relative strengths of the parties' positions, doing so could provide needed leverage at the discovery conference and later settlement discussions.

If yous need advice on how to answer a U.Due south. trademark opposition, don't hesitate to contact usa now and we'll become back to you soon!

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Source: https://www.trademarklitigationguide.com/how-to-answer-a-trademark-opposition/

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