One way to protect your trademark rights at an early stage is to institute a trademark opposition proceeding with the Trademark Trial and Appeal Board (TTAB).

This action gives you an opportunity to object to a trademark application that you feel could harm your business or confuse consumers about the true source of the goods or services involved.

It’s important to keep in mind that you have a very limited window in which to file such an opposition.

Once a proposed trademark is published, opposers only have 30 days in which to start an opposition proceeding.

Opposers can also file a request for an extension of time to oppose, but this extension request must still be filed within the 30 days. If you’re even considering opposing a rival mark, this buys you some time to decide.

(This opposition process only applies to applications on the Principal Register. Oppositions to marks on the Supplemental Register may be filed after the mark is registered.)

You can oppose a proposed mark on the following grounds:

• The proposed mark is likely to cause confusion with one or more of your own trademarks.
• The proposed mark is merely descriptive – for example, “Apple” brand apple juice.
• In the case of a design mark, the design is functional rather than aesthetic.

A “functionality” challenge can be used offensively as well as defensively, as shown by a recent trade dress decision involving Apple iPhones.

As reported by Fortune,

Apple claimed Samsung’s smartphones looked so much like Apple’s that customers were confused and that the iPhone’s reputation was thereby tarnished. The jury agreed.

However, the Federal Circuit disagreed, finding that the iPhone’s rounded corners were functional – they help you get the phone out of your pocket without snagging it.

Thus, if you’re concerned that a trade dress registration by a competitor could foreclose your use of functional features in your own products, you may want to consider an opposition proceeding.

Takeaway

Many companies have their trademark lawyers regularly monitor trademark applications in order to submit timely oppositions. Please contact us if you’re interested in this service.