Wednesday, December 26, 2012

Wants to Oppose TM Application

Dear Rich: I own a registered trademark with the USPTO. There is a new application with the USPTO which is very close to my registered trademark and can potentially cause confusion with consumers. In doing a Google search, I came across your article. I am not clear however, what form I would file with the USPTO to oppose this new application before it is too late. Can you please point me to it? You can only oppose a trademark after it has been approved for registration and has been published in the Official Gazette. It's possible -- if this is a new application as you say -- that the name has not yet been approved, or alternatively, it's possible that the application will be rejected if the examiner's research turns up your trademark and finds it confusingly similar.
Status Report. You can find the status of an application at the USPTO website. Choose "Search Trademarks" from the Trademark drop down. Choose the "Basic Word Mark Search" and enter the mark (or Serial Number if you know it). Once you get to the main page for the mark, click the "TSDR" button ("Trademark Status and Document Retrieval"). There you'll find a timeline of activity and the documents filed in the case.
The form. If the mark is approved for publication, you can file a "Notice of Opposition to Registration." Click "File a New Proceeding" on this USPTO page (see screenshot above). Choose "Notice of Opposition to Registration" from the drop down and enter the Serial Number of the trademark that you're opposing. Be aware that you're triggering an activity at the Trademark Trial and Appeals Board (TTAB). You may want to confer with an attorney before filing and get a professional opinion as to whether you have a chance at terminating the application (and also because TTAB actions are the kinds of tasks requiring an attorney's assistance).