It Sounds so Slap-You-With-My-Glove British.
Bad news. An Opposition Proceeding means that someone doesn’t want you to register your mark . . . and they’ve brought their case to oppose your trademark application before the Trademark Trial and Appeal board (TTAB). Opposition Proceedings involve evidence, arguments, testimonies, and (most likely) lawyers. So, essentially a pseudo-lawsuit. Yikes!
Yep, it’s a big deal alright. So let’s put on a spot of tea and chat, shall we?
How to survive an Opposition.
First things first. If you recently received Notice of an Opposition, circle the deadline for filing an Answer on your calendar ASAP. An Answer is basically your glove slap back to the other side expressing in legal terms the absurdity of the Opposition. (Failing to file an Answer could hurt your case pretty badly, as in, you’ll get a “Notice of Default” from TTAB meaning they had no choice but to rule in favor of the other bloke.)
After submitting an Answer, you’ll move on to a Discovery Conference. This is a mandatory meeting designed to encourage settlement and develop collegial discovery plans, but often results in a battle of the loudest attorneys. Fabulous, right?
Moving forward, everything works pretty much the same as a civil action in court. Lots of scheduling. Discovery. Disclosures. Hearings. Arguments. Kind of like a day in Parliament. Then someone wins. Playing this game out in full can take around two years. And with filing fees, attorneys’ fees, witness fees, deposition costs, and expert surveys, this thing could cost set you back a few Christmases.
Fortunately, there are some ways to avoid turning your kids into Tiny Tim. Unlike a Cancellation Proceeding, an Opposition Proceeding concerns a live application. That means you can still potentially amend your application to get out of hot water. For example, you could make a narrowing amendment to the identification of goods/services by deleting the offensive claims or adding in exclusionary language.
Also, the vast majority of Oppositions result in settlement – you just need to be clear on what your strongest legal positions and negotiating points are before entertaining settlement.
Why file an Opposition?
This British glove slap thing sounds awful, right? It also sounds kinda awesome to be the slapper. (Hmm, searching for an Americanized phrase capturing “British slap,” just can’t put my finger on it.) If you want to B*slap a competitor who is trading on your name/logo/packaging, you’ll want to regularly monitor the Trademark Gazette for potentially infringing published marks. Once you’ve identified a good slappee, you’ll have 30 days from publication to file your own Opposition Proceeding. Go get your B*slap and drank on. (Tea only – never mix legal proceedings with alcohol.)
And that’s all the free advice we’re giving away today, folks. Also, THIS IS NOT LEGAL ADVICE. WE ARE NOT YOUR ATTORNEYS. NOTHING IN THIS ARTICLE SHOULD BE CONSTRUED AS LEGAL ADVICE. HIRE A LAWYER. (Like those cool Opposition experts at Southtown Moxie. 10/10 recommend).