Trademark Trouble? How to Navigate the Opposition Minefield and Protect Your Brand

For many business owners, filing a trademark application is an exciting step toward building brand recognition and protecting their intellectual property. But what happens when, after you file your trademark application, you receive notice that another party has opposed it? A trademark opposition can feel like an unexpected roadblock, but it doesn’t have to derail your efforts. As a trademark attorney with 15 years of experience, I have guided clients through these challenges and know how to approach trademark oppositions strategically.

In this blog, we’ll cover what a trademark opposition is, the common reasons it occurs, and, most importantly, how to respond effectively to protect your brand.

What is a Trademark Opposition?

A trademark opposition occurs during the application process, after the United States Patent and Trademark Office (USPTO) has reviewed and approved a trademark for publication. Once the mark is published in the Official Gazette, third parties have 30 days to file an opposition if they believe your trademark will conflict with their existing rights. The opposition essentially stops the registration process until the issue is resolved.

Common reasons for a trademark opposition include:

• Likelihood of Confusion: The most common reason for opposition is that the opponent believes your trademark is too similar to theirs, which could confuse consumers about the source of goods or services.
• Dilution: This occurs when a famous mark argues that your mark, even if not confusingly similar, could dilute the strength of their well-known brand.
• Descriptiveness or Lack of Distinctiveness: A party may argue that your trademark is merely descriptive or lacks the distinctiveness needed for registration.
• Fraud or Bad Faith: The opposing party may claim that your application was filed with false information or an intent to mislead the USPTO.

Responding to a Trademark Opposition: Steps to Take

Evaluate the Opposition Carefully

The first step when you receive a notice of opposition is to carefully evaluate the grounds on which the opposition is based. This is where legal expertise is crucial. You’ll need to determine whether the opposition is valid and assess the strength of your own mark.

For example, in the case of Monster Energy Co. v. Thunder Beast LLC (2020), Monster opposed Thunder Beast’s attempt to register a logo featuring the word “Beast” for soft drinks, claiming a likelihood of confusion with its own energy drinks. Thunder Beast had to carefully evaluate whether their logo truly posed a risk of confusion and decide if it was worth continuing the fight.

File an Answer

If you decide to contest the opposition, you must file an answer within 40 days of receiving the notice. In your answer, you’ll need to deny the allegations made by the opposer and present any affirmative defenses. For example, you might argue that:

• The marks aren’t confusingly similar.
• Your mark is used in a completely different industry or context.
• The opposer’s trademark is weak or descriptive and doesn’t warrant broad protection.

In the Juul Labs Inc. v. Cool Clouds Distribution (2022) case, Juul, known for its vape products, opposed Cool Clouds’ trademark application for the mark “Cool Clouds” on the grounds of confusion. Cool Clouds successfully argued that its mark was distinguishable due to differences in design and market focus. Their well-prepared answer played a significant role in their defense.

Consider Negotiation or Settlement

Often, an opposition can be resolved through negotiation or settlement without escalating to a full hearing. In many cases, parties are open to compromise to avoid costly litigation. This may involve:

• Coexistence Agreements: These agreements allow both parties to use their respective marks under certain conditions. For example, you may agree to limit the geographic scope of your mark or clarify the industries in which you’ll use it.
• Amending Your Application: Sometimes, adjusting your mark’s description or narrowing its goods and services can resolve the opposition without needing to abandon the application.

One famous example of settlement involved the case between Apple Corps (The Beatles’ record label) v. Apple Inc. (2007). After years of litigation over the use of the “Apple” mark in connection with music, the companies eventually reached a settlement, allowing both brands to co-exist with certain limitations on their trademark use.

Prepare for Discovery

If settlement negotiations fail and the opposition proceeds, the next stage is discovery. Discovery is the process where both sides exchange information and evidence to build their respective cases. You may need to produce documents related to the use of your mark, consumer surveys, and other evidence to show that your trademark is valid and unlikely to cause confusion.

The discovery process can be lengthy and costly, which is why many businesses prefer to settle before this stage. However, if you have strong evidence supporting your case, it may be worth continuing.

Present Your Case at Trial

If the case moves forward to trial, it will be heard by the Trademark Trial and Appeal Board (TTAB). Both parties will present their evidence and arguments, and the TTAB will make a decision based on the facts of the case. It’s essential to have experienced legal representation to present your case effectively.

A famous example of a TTAB trial is Stone Brewing Co. v. MillerCoors (2018), where Stone Brewing opposed MillerCoors’ use of the word “Stone” in connection with its “Keystone” brand. The TTAB ultimately ruled in favor of Stone Brewing, highlighting the importance of clear and compelling evidence in trademark opposition cases.

Appealing a TTAB Decision

If the TTAB rules against you, you still have the option to appeal the decision to the Federal Circuit or file a civil action in federal court. However, appeals can be expensive and time-consuming, so it’s important to weigh the costs and benefits before proceeding.

Key Lessons for Business Owners

• Do Your Homework Before Filing: Conduct thorough trademark searches before filing your application to identify potential conflicts. This can help you avoid oppositions down the road.
• Trademark Watch Services: Once your mark is published, consider using a trademark watch service to monitor any potential oppositions. This allows you to respond promptly and strategically.
• Seek Legal Advice Early: If you receive an opposition, consult with a trademark attorney as soon as possible. Having experienced counsel can help you assess the strength of the opposition and explore options for resolving the dispute efficiently.
• Be Open to Negotiation: While it may be tempting to dig in your heels and fight, many trademark oppositions can be resolved through negotiation. Consider the long-term value of your trademark and whether a coexistence agreement or settlement could work in your favor.

Conclusion

Facing a trademark opposition can be daunting, but it doesn’t have to be the end of your brand’s journey. By understanding the process, responding strategically, and seeking the right legal advice, you can protect your trademark and move forward with confidence.

At Hebert-Thomas Law, PLLC, we assist clients throughout diverse industries in navigating trademark oppositions and helping businesses protect their brands. If you’ve received a notice of opposition or are concerned about potential trademark conflicts, contact us today to discuss your options.