What is Trademark Opposition?

Trademark opposition is the formal process where a third party (an individual, organization, or business) challenges the registration of your trademark after it has been published in the Trademark Journal. This opposition occurs during the opposition period, which is typically a 4-month window after your trademark is published for public review.

The opposition is an attempt to prevent the registration of your trademark, and if successful, it can result in your application being refused or delayed. However, opposition does not mean your trademark is automatically rejected. You still have the opportunity to defend your application and address the concerns raised by the opposing party.

Why Do Trademark Oppositions Occur?

Trademark opposition can arise for several reasons, including:

1. Similarity to an Existing Trademark:
   • If the opposing party believes that your trademark is too similar to their registered trademark or pending application, they may file an opposition. The argument is that your trademark could cause confusion among consumers, leading them to associate your products or services with theirs.
2. Descriptiveness or Genericness:
   • If your trademark is deemed too descriptive or generic (i.e., it merely describes the goods or services it represents), another party may oppose it. Descriptive trademarks are not eligible for registration because they do not distinguish the source of goods or services.
3. Prior Use:
   • An opposing party may claim that they have been using a similar mark before your application and argue that granting you a trademark would infringe on their prior use and rights to the mark.
4. Likelihood of Confusion:
   • If the opposing party believes that your trademark is too similar to a well-known or famous mark, they may file an opposition based on the potential for confusion among consumers. The opposing party may argue that your trademark could tarnish the reputation of their well-known mark.
5. Bad Faith or Malicious Intent:
   • In some cases, a trademark opposition may be filed on the grounds that the applicant applied for the trademark in bad faith, such as attempting to take advantage of another brand's reputation or to create confusion intentionally.

How Does Trademark Opposition Work?

The trademark opposition process typically follows these steps:

Step 1: Publication in the Trademark Journal

Once your trademark application is approved after examination, it is published in the Trademark Journal. This is where the opposition period begins. The public, including any parties who believe your trademark may infringe on their rights, is given a chance to review your mark and file an opposition.

Step 2: Filing the Notice of Opposition

If a third party wishes to oppose your trademark, they must file a Notice of Opposition with the Trademark Office. This notice must be filed within the opposition period (usually 4 months). The Notice of Opposition will include:

• The grounds for opposition (why they believe your trademark should not be registered).
• Any supporting evidence of prior use or rights.

Step 3: Reply to the Opposition

Once the Notice of Opposition is filed, you, the trademark applicant, have an opportunity to respond to the opposition. You must submit a Counter-Statement addressing the claims made by the opposing party. In this statement, you can argue that your trademark does not conflict with the opposing party’s mark and explain why it should be registered.

Step 4: Evidence Submission

Both parties may be required to submit evidence to support their claims. This evidence can include documents, witness statements, or any other information that shows your trademark is either distinctive or infringes on the opponent’s trademark.

Step 5: Hearing (If Necessary)

If the opposition is not resolved through written submissions, the Trademark Office may schedule a hearing. Both parties will have the opportunity to present their arguments in person or through their legal representatives. The hearing will focus on the evidence provided and the arguments regarding the similarity, distinctiveness, and legal validity of the trademarks.

Step 6: Decision

After considering the arguments and evidence from both sides, the Trademark Office will make a decision. The decision could result in:

1. Dismissal of Opposition: If the Trademark Office finds that the opposition is without merit, your trademark will proceed to registration, and you will receive your Trademark Certificate.
2. Refusal of Application: If the opposition is upheld, your trademark application will be rejected, and you will not be able to register your mark.
3. Amendments or Modifications: In some cases, the Trademark Office may allow you to make amendments or modifications to your trademark to overcome the opposition, such as changing the design, wording, or scope of the mark.

Step 7: Appeal (If Necessary)

If the opposition decision is unfavorable, either party may appeal the decision to the Intellectual Property Appellate Board (IPAB). The appeal will be reviewed by a higher authority, and a final ruling will be issued.