Whether you are doing business here in South Florida, or expanding your company worldwide, the benefits of registering and protecting your trademarks are well worth the time it takes to apply for them. A good trademark can identify and distinguish your product or service in the mind of consumers, give you a legal presumption of ownership nationwide, and provide you the exclusive right to use the mark on or in connection with the goods and/or services the mark applies to.
Unfortunately, securing your trademarks is not just a one and done process. It is up to you to enforce your trademark rights against infringement in the marketplace and at the U.S. Patent and Trademark Office (USPTO). While the USPTO attempts to ensure that all the trademarks it issues are unique, the Lomnitzer Law Firm is here to help our clients monetize, protect, and go after infringers of trademarks.
The Lomnitzer Law team regularly assists South Florida creators and business owners with the trademark application process, but we also lend a hand when one of our clients wants to oppose or challenge someone else’s trademark, or they face such opposition themselves.
Trademark oppositions and cancellations are adversarial proceedings before the Trademark Trial and Appeal Board (TTAB) of the USPTO. A trademark opposition seeks to block a mark from registering. A trademark cancellation seeks to cancel a registered mark.
Within the 30-day window after a trademark application has been approved by a USPTO Examiner, but before the USPTO issues an official trademark registration, any party that believes it would be harmed by the registration of the trademark can initiate an opposition.
An opposition is an adversarial proceeding where two parties with opposing viewpoints litigate at the TTAB and present evidence and make arguments. It is basically a mini lawsuit but all the action occurs on paper instead of in person. All the evidence and arguments are submitted in writing to the USPTO’s Trademark Trial and Appeal Board (TTAB) for its consideration. Oral arguments are optional.
At Lomnitzer Law, we represent both trademark applicants and those who oppose them. We are therefore very familiar with the various grounds on which an opposition can be based and various defenses that can be raised to fight off an opposition.
Some common claims in these disputes include:
- A dispute over true ownership of the mark
- Likelihood of Confusion
- The mark is too generic
- The mark is merely descriptive
- Lack of a bona fide intent to use the mark
- Timing of the mark’s use in commerce
- The mark is deceptive or disparaging
- The mark concerns immoral or scandalous matter
- The mark improperly uses the name, portrait, or signature of a person
These are just a few examples of common trademark issues that can arise in an opposition proceeding. If you are involved in a trademark dispute, the Lomnitzer Law team is ready to hear your side of the story and attempt to craft a fitting legal argument on your behalf.
If an official trademark registration has already been issued, a Petition to Cancel may be appropriate. A successful cancellation proceeding before the TTAB removes a trademark registration that should no longer be in force.
A Petition for Cancellation can be filed at any time after the USPTO registers a trademark, but once a trademark has been registered for five years it becomes slightly more difficult to cancel. Early petitions to cancel proceed much like oppositions, and most of the same arguments and defenses apply. Once a mark is five years old, it can only be canceled for a few specific reasons. An example of this would be a trademark that has been abandoned or become generic.
If you are dealing with a petition for cancellation, the Lomnitzer Law team can help you craft a strong argument based on the specific facts that apply in your situation. We can help you figure out if the mark has been registered for more than five years, and gather evidence that bolsters or defeats an effort to cancel.
Common Law Rights May Still Exist
Even if the effort to register a trademark is successfully opposed, or the mark is canceled, the mark user may continue to have “common law” rights in the mark. Someone with common law trademark rights may continue to use a trademark they do not own, but they risk having their usage challenged in court. It may, therefore, be necessary to follow up an opposition or cancellation proceeding with a lawsuit.
This happens because our federal trademark law is a formalized and expanded version of the common law rights that existed before the law was enacted. You can think of it like this: creators get a trademark from developing and using a mark. That creator can then ask the federal government to officially recognize the trademark. That gap between creation and official recognition means there are a bunch of marks out there that the government hasn’t recognized, which may or may not give a particular trademark user legal ownership of them depending on the circumstances.
The Lomnitzer Law team regularly assists creators who have questions about common law trademarks both before and after oppositions and cancellations.
We Are Problem Solvers
At Lomnitzer Law, we take a problem-solving approach to the law. That means we approach our clients’ matters by considering several potential solutions or even crafting new and unique strategies that may be necessary for their specific situation.
Oftentimes there is no one right answer when you are dealing with a trademark issue, and considering the appropriateness of an opposition, cancellation, or lawsuit. We will always let you know what options are open, and what the pros and cons of each option are. We value your insight as a business owner or creator, and will not stifle it by forcing you to take a legal action you are not comfortable with.
Contact Our Boca Raton USPTO Attorney Today!
The Lomnitzer Law Firm, P.A., is South Florida’s premier intellectual property legal practice, serving a diverse array of industries, businesses, inventors, and entrepreneurs. We fight for our clients by crafting solutions and taking aggressive legal action to secure and defend their trademarks, and by extension, their creations.
You can rely on our experienced team of attorneys to advise you, fight for you, and give you the space to keep creating or keep running your business while we take care of your legal issues. If you need help protecting your trademark, let’s talk.