Your Trademark Application Was Opposed? What Now? James Klobucar Explains What to Do.

James Klobucar explains the trademark application process and what a trademark opposition is. Contact James at 9082730700 or [email protected]. The beginning of the video is transcribed here; you can find the rest of the transcription on our website at https://www.GearhartLaw.com.

Hi! I'm Elizabeth Gearhart and I'm sitting here with James Klobucar, Senior Associate at Gearhart Law, and also very good at doing trademarks.

Thank You.

Q James filed a trademark application for me, then he came back to me later and said there's an opposition to your trademark and I'm like what? How did that happen? What does that mean? So James, what happens after you file the trademark application?

A So after you file an application there's two main hurdles or two main thresholds that you have to overcome in order to get the trademark. One is, you have to take care of all the technical requirements before the eyes of the Patent and Trademark Office, and once they've deemed that you've met all of those qualifications, they then publish the application for 30 days in a publication period. And that publication period gives any member of the public, that is any third party, 30 days to comment publicly and try to oppose your mark if they think it would harm their business. They could also, if they so choose within that 30 days, let's say they need additional time to make a decision, they can file for an extension of time to file that opposition as well. So if you've gotten an opposition on a trademark what that means is there's some third party out there that believes that your mark will somehow materially harm their business or a mark that's used in conjunction with some sort of good or service that they offer.

Q So then what happens? Do you fight for me and say ‘no these people are wrong she deserves a mark’, I mean what happens next?

A You have to take every case on a case by case basis and determine the merits. Opposition is essentially a court case; it follows Federal Rules of Civil Procedure. There's discovery, you can take depositions, and all of this happens throughout a prolonged time period. The opposition overall can go for easily a couple years. Obviously you want to get out of it as soon as you can. Most of them settle before a final decision by the trademark trial and appeal board but that's in a nutshell what you're going to be looking at.

Q From the time I filed the application to the time that the opposition could be filed, how long is that? Is that a month, two months?

A Usually you're going to be looking at around, I'm going to say, maybe five months give or take. There's going to be some variance in there, but what happens is, about three months after you file a trademark application it's going to be assigned to an exam and an attorney who has to review it. If they send out an office action they give you six months to respond to that office action, so if you take that six months obviously that's going to change the timeframe. But going off the assumption that you respond in an expeditious manner or that you don't receive any office action at all, then they schedule it for publication. Once you have that publication date it's for 30 days and you normally take a few weeks once all the issues have been taken care of, so right around five months give or take.

Q So can I use it during this time?

A – Yes, I mean you can still use it. You should always review the merits of the opposition closely and determine if there is any infringement potentially by any party or what's really being alleged. You may decide that the risk is too great, you may want to put use of the mark on hold to limit damages and that sort of thing, but unless counsel instructs you otherwise generally both parties will continue to use the mark during that time frame.

Find the rest of the script at https://www.GearhartLaw.com in the blog section on the home page.