The attorneys at StrongMarks are litigation experts, and are experienced in handling all forms of trademark opposition. Opposition may occur once a trademark is approved for registration. It is published for 30 days in the Official Trademark Gazette . Any party who believes that it may be damaged by registration of the mark may file an opposition proceeding.
An opposition proceeding is a challenge to the right to register that particular trademark. Trademark applications are generally challenged by someone who owns what it believes is a mark similar to the mark at issue. Trademark opposition proceedings are serious and complex litigation matters.
The Trademark Trial and Appeal Board (TTAB), the body that hears trademark opposition proceedings, generally follows the Federal Rules of Civil Procedure during discovery of the opposition proceeding. The TTAB has specific rules on how the TTAB hearings are conducted and how and what evidence is submitted to the TTAB.
A trademark owner may sue other parties using a mark that creates a likelihood of confusion among consumers as to the source of goods or services covered by the registered trademark. Trademark infringement lawsuits also typically include unfair competition claims, such as that the defendant is passing its products off as those of the plaintiff.
There are many defenses to trademark infringement and unfair completion suits. Those defenses may range from the mark being invalid, that the mark is merely descriptive and has not obtained secondary meaning, or that the use was not infringing because it constitutes ‘fair use’ of a mark.
Successful plaintiffs in trademark infringement actions are entitled to a wide range of remedies under federal law. A plaintiff may be entitled to an injunction against further infringing use of a mark. A successful plaintiff may also obtain damages in the amount of (1) defendant’s profits, (2) damages sustained by the plaintiff, and (3) the costs of the action. Damages may be trebled upon a showing of bad faith.