Step one: Hire a trademark attorney. Step two: Relax and let them do the work for you. Most people don’t even know the TTAB exists. That’s the abbreviation for the Trademark Trial and Appeal Board, by the way.
All kidding aside, a trademark opposition is a big deal if you’re trying to register a trademark for a brand you’ve spent a lot of time building up into something great. Unfortunately, all it takes is one company, one person even, to oppose your trademark—leaving you feeling like you have no chance at getting that registration you’ve spent so much time (and money) on. And, to make matters worse, there are a lot of companies out there (I’m not going to name names, but they know who they are), who believe it is in their best interests (it’s not) to oppose every single mark that uses even the tiniest smidgen of their branding, regardless of the products or services that mark is being registered for. Regardless, the important thing to keep in mind with a trademark opposition, is that it all comes down to one simple question: Should the USPTO allow your trademark to register? The answer to that hinges on a variety of other questions, such as whether there is priority of use or likelihood of confusion, but that is the big question that needs to be answered.
But enough about how terrible you feel now that someone has decided to oppose your mark’s registration. It’s time to move on to what you actually need to do. And if we’re being perfectly honest here, you really do need to hire a trademark attorney to defend against the opposition if you want to continue with the registration process. After all, they’ve done this before and they’re going to know how to best go about beating even the biggest multinational company who is threatening the registration of your trademark. However, before you go out and hire trademark counsel, you need to consider whether it is worth your while given your budget and how much you’ve invested in your mark.
Consider the Costs
For starters, you’re going to want to consider the following costs:
- How much money have you spent on advertising where you’ve used the mark, and how long have you been using the mark? If you’ve spent a lot—certainly enough to establish your brand as a leader in your chosen market—or you have been using the mark for many years to the same effect, an opposition will probably be the right course of action, regardless of the price. If you’ve spent very little and you’ve been using the mark for a couple of years, have a talk with your trademark attorney (many offer free consultations) to discuss what the costs are going to be and what the likelihood of success is. If you haven’t begun using the mark yet, you should still talk to a trademark attorney, but most will probably tell you the same thing: just change the mark to something else and abandon your filing.
- How much you have to spend to rebrand? Again, if you have a huge following for your brand, this may be expensive, and the cost of hiring trademark counsel to defend against an opposition may be less than having to inform your customers of the rebranding. Even more significantly, consider the non-customers who know your brand as it currently is, and how much confusion it may cause to change branding in their minds.
- How broad will your rebranding have to be? If you just have to change one product and its associated website, the cost may be fairly insignificant. However, if you have to change your entire corporate identity, including your company’s websites, business cards, and letterhead, as well as your products’ packaging, labels, signs, and displays, you’re looking at a substantial cost.
- How much will you have to spend on new trademark applications? Shameless self-promotion time: if you’re applying for trademark registration with Norton Law Corporation, our fees are only $395 per mark plus government fees. And we offer deals if you’re registering more than three marks at once.
- And last but not least, how much will your attorney cost? There’s still a lot of attorneys out there who bill by the hour for trademark opposition work. However, I (and many other trademark attorneys) offer flat fees depending on the scope of our representation. You should also ask your attorney about whether they think accelerating the case is a possibility, as the TTAB provides what’s known as Accelerated Case Resolution (ACR) which greatly truncates the timetable for relatively straightforward cases while providing excellent cost savings. All parties have to agree to ACR, however, so keep in mind that what you and your attorney may hope happens may not necessarily be what the opposing party will agree to.
May the Odds be Ever in Your Favor
Once you’ve determined the cost of defending outweighs the cost of rebranding, your attorney will evaluate your case on the merits. Essentially, this means the attorney will review whether your mark should register and how to best structure the arguments necessary to win against your opposer. Of particular importance here, as I mentioned earlier in this post, is the likelihood of confusion aspect. After all, that’s generally the most common reason for oppositions—the opposer believes that your mark, were it to register, is too similar to their mark so as to confuse the public as to where the goods or services actually originated from.
Who is Your Opposer?
If you have a strong legal standing on the merits, it really doesn’t matter who your opposer is. Big company or small business, if the merits are in your favor, you stand a very good chance at winning. However, a good trademark attorney evaluates exactly who the opposer is, what seems to motivate them, and how best to solve the problem without forcing their client to spend huge amounts of money on the opposition. Major corporations dedicate a portion of their budgets to trademark monitoring and policing, and they’re primarily a results-driven group, hoping that your company will just kind of roll over and die on them so they can get an easy win. Of course, this also means that even though they have very large budgets to spend on trademark opposition and trademark policing in general, they’re really only going to want to tap into their resources if someone is directly in competition and obviously using a mark that will fairly obviously confuse the public or rides on the coattails of the brand they’ve worked hard to establish. So regardless of the opposing company’s size, settlement may be a possibility that could work in your benefit, allowing you to continue using your mark as you and been (and being able to register it for your chosen classes).
Ultimately, the biggest question is whether the costs of defending against the trademark opposition are outweighed by the benefits of seeing that mark registered. It’s a case-by-case evaluation, and worth a chat with a friendly trademark attorney.
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