Over 3,000 trademark oppositions are filed every year with the US Trademark Trial and Appeal Board. Many of these oppositions involve applications for health trademark products and services. Knowing how the trademark application process works can help healthcare providers determine how to best ensure that their selected trademark will be available for use and registration.
Trademark Examination Basics. All trademark applications filed with the United States Patent and Trademark Office (USPTO) are assigned to a Trademark Examining Attorney. The Examiner will review the application for procedural and substantive requirements. As part of the examination process, the Examiner will also conduct a search of the USPTO records to determine if there are any existing trademark registrations that may be deemed to be confusingly similar to the applicant’s mark. Assuming the application has met all filing criteria and there are no problematic registrations of record, the Examiner will approve the application for publication. Once published, any third-party who believes that it could be injured by issuance of the registration can oppose the trademark application.
Trademark Opposition Rules. Trademark Oppositions are heard before the US Trademark Trial and Appeal Board (TTAB) the adjudicative body of the USPTO. The various stages of a trademark opposition proceeding consist of the following:
- Notice of Opposition. An opposition proceeding is commenced by filing a Notice of Opposition that sets forth the grounds for the opposition. In cases where a likelihood of confusion is alleged, the Opposer must establish that it has standing and priority rights.
- Answer. Within 40 days of being served with the Notice of Opposition, the Applicant must file an answer. The answer generally denies all relevant allegations contained in the notice of opposition and often included affirmative defenses.
- Discovery. After the answer is filed, the discovery phase of the proceeding commences. This may include interrogatories, request for production of documents, and depositions. The goal of discovery is for the parties’ to gather information and documents that would support their claims and defenses. An effective discovery strategy can narrow the issues for trial and possibly lead to a motion for summary judgment should there be no genuine issues of material fact for the Trademark Board to consider.
- Trial. TTAB trials are conducted via written submissions, although either party has the right to request oral argument. Submissions include a Notice of Reliance, Testimony (by way of depositions or declarations), and trial briefs. The Board will thereafter render a written decision either granting the opposition or dismissing it. If an opposition is upheld, then the Applicant will be refused registration.
Health Marketer Tips: Trademark oppositions are very expensive and may present a high risk to your brand. To avoid the risk of a trademark opposition, it is highly advisable to have a trademark attorney conduct a full trademark search prior to launching a new healthcare product or service.