Trademark Oppositions & Cancellations

At times it may be necessary to protect your trademark rights by contesting the pending registration (Opposition) or existing trademark registration (Cancellation) for a mark.

Opposition

An Opposition proceeding may be commenced by any party who believes they may be harmed if the pending trademark application is registered. Various grounds for opposing a trademark application include: fraud by the trademark applicant; dilution of the opposer’s trademark; the likelihood that applicant’s trademark would be confused with opposer’s trademark; or the trademark applicant’s mark is deceptive or simply descriptive of the goods or services offered.

An opposition is sometimes considered an attractive “alternative” to litigation. A trademark infringement lawsuit goes after allegedly infringing use of a mark, while an opposition seeks to prevent registration of the mark from the start. And while a trademark infringement suit can produce monetary damages or an injunction preventing the defendant from using their mark, a trademark opposition attempts to block the applicant from ever getting federal rights in the mark.

Cancellation

Cancellation proceedings are reserved for trademarks that have been registered by the USPTO, and accordingly carry a larger burden of proof for success.  In addition, it should be noted that if an registered trademark has attained “incontestability” status, the bases for challenging the registration are lost. (Incontestability may be achieved after 5 years of registration)