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Marking Your Territory

A trademark is a word, phrase, symbol or design that sets your product(s) apart from the crowd and it distinguishes your product from your competitors’ products. Most importantly, when registered, a trademark buys you the presumption of commercial protection by giving you exclusive legal rights to its usage within certain boundaries. But what if someone “trespasses” into those boundaries?

There are two common scenarios:

First, someone files a trademark application for a name that might be confusingly similar to your registered trademark. But for reasons unknown, the United States Patent and Trademark Office (USPTO) is either willing to, or has allowed, that confusingly similar trademark to be registered. One might say: “I can’t let this happen – my customers will be confused and I’ll lose business.”

Second, what if you forgot to register your trademark? What if you’ve been using a brand name or emblem for years and then someone suddenly (or not so suddenly) comes along and claims the name belongs to them? Even worse, what if this person/entity actually registered something that looks confusingly similar to “your” trademark as their own mark? Do you have any recourse or will you have to reboot and start your business from the ground-up?

No cause for panic. The experienced attorneys at Nexio Law Firm are here to help. Thanks to legal processes known as “trademark opposition” and “trademark cancellation,” there are tools to solve both scenarios.

Without resorting to a full-fledged federal lawsuit, it is possible to stop the other offensive and confusingly similar trademark to advance further. It’s also possible to retroactively stake your territory and curb further usage of your trademark. It is a limited scope proceeding – without all the monetary risks of a formal lawsuit – that simply seeks to determine if someone else’s trademark that is entitled to registration.

Opposition or Cancellation Processes

Fortunately, the law gives you a right and means to protect your trademark [property] without all of the complexities of a federal district case. Specifically, 15 U.S.C § 1067 provides that “in every case of interference, opposition to registration, application to register as a lawful concurrent user, or application to cancel the registration of a mark, the [TTAB] Director shall give notice to all parties and shall direct a Trademark Trial and Appeal Board to determine and decide the respective rights of registration.” 

This legalese basically says congress has created a special board at the USPTO to allow trademark owners to stop the other offensive and confusingly similar trademark to advance further. This board is called the Trademark Trial and Appellate Board (TTAB) and they have the power to figure out whether to allow that competing trademark to register. It’s also important to note this process is usually faster and cheaper than a federal lawsuit, but it also limits your right to do anything other than stop the problematic trademark in that process.

Opposing a trademark occurs before registration. Cancelling a trademark occurs after registration. Both processes involve several intricate substantive trademark rules. They also bring into play a very technical procedure requiring a strong adherence to Trademark Trial and Appeal Board Manual of Procedure (TBMP) that devotes over 1100 pages to procedural rules alone.

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Fortunately, at Nexio, we’re accustomed to navigating TTAB proceedings and are highly familiar with many variables and factors required to reclaim your trademark rights.

We’re Here to Help

The attorneys at Nexio Law Firm are committed to helping our clients achieve their objectives. We can be reached at (949) 478-6830 or complete the contact form below and we’ll be in touch soon.