Trademark Objections
A trademark may be objectionable if it resembles a well-known or famous trademark. Consider the overall commercial impression of the trademark. If it is likely to be confused with or dilute a famous mark, it will be objectionable. A trademark cannot falsely suggest connection with organizations or institutions, contain immoral or offensive matter, or be deceptively misdescriptive. Assess if your trademark resembles others used for similar goods and/or services. Even an inconsequential difference may overcome an objection.
Opposition Process
LegalVision’s Elodie Somerville explains the opposition process. It can be lengthy and costly. Know which trademarks to oppose. Grounds include confusion with or dilution of a famous mark.
You can challenge a USPTO registration by filing a petition to cancel with the Trademark Trial and Appeal Board. Oppositions must be filed within 30 days of publication in the Official Gazette.
Trademark Defense
The opposing party often files oppositions to deter holders from defending trademarks. Not defending may automatically cause refusal. But defending may be worth it if the trademark is important to the business. Arguments relate to why the filed trademark does not confuse the marketplace or why the applicant has legitimate rights.
Trademark Examination and Registration
The symbols TM and ® indicate trademarks. The latter denotes federal registration. Trademarks legally differentiate products and recognize company ownership. They may or may not be registered.
Examiners search earlier, identical or similar marks. Findings compile into an examination report. Incorrect forms draw objections to correct applications. Descriptive marks cannot register. Respond in 30 days asserting no objection or confusion. Publication allows third party opposition. Failure to respond can mean refusal. Oppositions typically come within four months of publication. They allege identical or similar marks. Other grounds depend on specific circumstances.
Fees are $4500 for individuals or startups. $9000 for large entities per class. Types include product, service, collective, and certification marks. Registered marks offer more protection than unregistered. Registration is with the USPTO database. Even unregistered marks should check the database for infringement risks. A later registration trumps an earlier unregistered mark.