Challenging Trademark Registrations

Obtaining a trademark registration is an important part of intellectual property protection. In the U.S., a registration may be granted to the owner of a unique and distinctive mark that does not appear to infringe on the trademark rights of any other owner.

Trademark Examination

Each trademark application that is filed with the U.S. Patent and Trademark Office is examined by an attorney. The attorney ensures that the application complies with all formalities and meets the minimum requirements for being a trademark. Additionally, the attorney performs a search of existing trademarks to determine whether or not consumers are likely to confuse the proposed mark with an existing mark.

Publication for Opposition

If the application clears all of these hurdles, then it is published. Publication marks the beginning of a 30-day period in which anyone may oppose registration of the mark. When an opposition is made, it most frequently comes from a competitor who feels that their mark is confusingly similar and that the goods and services on which the mark will be used travel in the same trade channels.

The opposition process provides an opportunity for the two sides to negotiate and perhaps arrive at an amicable resolution. For instance, the applicant may agree to eliminate a particular good or service from their description. However, if the two parties cannot arrive at an agreement, then a period for collecting discovery and evidence will ensue. Occasionally, these matters go to trial, with both sides arguing for their right to use the mark.

Petition for Cancellation

Opposing a trademark application after publication is a relatively common occurrence. Less commonly, a trademark registration may be challenged after it has already been established.

The Lanham Act enables parties to challenge a registration under certain circumstances. Any party that believes it may be damaged by the mark is empowered to challenge it. In this case, the challenging party will have to file a petition with the USPTO for cancellation of the mark from the Principal Register. Such a petition must comply with certain time periods such as:

  • The petition is made no more than five years from the publication date of the application
  • Whenever the mark in question becomes generic, is abandoned or is determined to be fraudulent
  • Whenever a certification mark is not being used within the limits of its certification

The Trademark Trial and Appeal Board, or TTAB, is the department that is responsible for deciding whether or not an application can proceed to registration after an opposition or if an existing registration can remain on the Principal Register once it has been challenged.

In the case of an application, the TTAB may elect not to allow the mark in question to proceed to registration. An existing registration may be cancelled or the TTAB may place restrictions on the use of the mark. On the other hand, the TTAB may choose to proceed with registration or maintain the registration of an existing mark.

Who Can Challenge a Trademark Registration?

Many people assume that only the owner of a similar trademark may oppose or petition to cancel someone else’s trademark. The reality is that even consumers who do not own a trademark may participate in this process.

TTAB reinforced this concept with their decision regarding United Trademark Holdings, Inc.’s application to register the mark RAPUNZEL. A law professor opposed the registration of the mark, arguing that the registration would “constrain the marketplace” and raise prices for dolls manufactured by other companies and sold under the name Rapunzel. The applicant for the mark argued that the opposer lacked standing, but TTAB disagreed. Their conclusion was that “In no case has this court ever held that one must have a specific commercial interest, not shared by the general public, in order to have standing as an opposer.” Going on, they stated that the consumer has a “real interest” in keeping generic terms off of the Principal Register.

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Author: Jeff Williams

Jeff Williams is an experienced mechanical engineer and lawyer that consults closely with clients in a strait forward and clear manner. He brings a particular set of strengths and unique perspectives to the firm.

Jeff received a B.S. in Mechanical Engineering from Arizona State University in 2005. He was an engineer for a number of years at a number of large corporations before pursuing his law degree. He graduated from Texas A&M University School of Law (formerly Texas Wesleyan University School of Law) with a J.D. in 2010. By combining his education and prior work experience into the field of intellectual property law, Jeff has developed key skills to fully assist clients.