When you apply to register a trademark with the U.S. Patent & Trademark Office (USPTO), your application is published in the Official Gazette. This weekly digital publication alerts the public to all applications that have met the USPTO’s initial requirements. During this period, third parties have the chance to object to your application or request additional time to file a Notice of Opposition.
If a third party files a Notice of Opposition or a Petition to Cancel, you have three main options:
- Do Nothing:Ignoring the opposition will lead to a default judgment, and your application will be considered “abandoned.”
- Respond with an Answer:You can submit an Answer to address the opposition directly. However, be aware that answering the opposition waives your right to file an immediate Motion to Dismiss and acknowledges the validity of the action. This starts the clock on litigation and can lead to additional costs.
- Challenge with a Motion to Dismiss:Alternatively, you can file a Motion to Dismiss to challenge the validity of the opposition. But remember, once you file an Answer, you cannot simultaneously seek dismissal.
A common misconception is that the Trademark Trial and Appeal Board (TTAB), the judicial arm of the USPTO, reviews the merits of your case immediately upon receiving an Answer. In reality, the TTAB will not consider the case until a formal motion is filed requesting their review.
Treat TTAB proceedings as serious litigation, akin to a court case. The TTAB expects adherence to strict procedural rules, and the process can be time-consuming and resource-intensive. Engaging an experienced trademark litigator is crucial for developing a sound strategy and navigating the complexities of the process.
If you receive a Notice of Opposition or Petition to Cancel, contact a trademark litigator immediately. Timely action is essential to protect your rights and respond effectively.