As a wise trademark owner, you are always watching. Watching for “problem” trademarks that would harm your brand. And one thing you may be watching closely is the U.S. Patent and Trademark Office (USPTO) database of trademark applications and registrations.
But when you find a troublesome USPTO trademark, what can you do about it? Here are three basic USPTO procedures that may be useful to you:
To combat an irksome trademark application in its early stages, you may submit what is known as a “Letter of Protest.” This letter is an informal way to show the USPTO why an applied-for mark is not entitled to registration. For example, if the mark is generic or confusingly similar to an existing registered mark, you could point this out to the USPTO in your Letter of Protest.
However, if the irritating application has moved on in the application process, it may be too late to submit a Letter of Protest. In that case, to challenge the application you would file a “Notice of Opposition” with the Trademark Trial and Appeal Board (TTAB). An opposition proceeding is similar to a trial–there are deadlines, answers, pleadings, briefs, motions, and potential settlement. It’s more involved than a Letter of Protest.
And if the maddening mark is already registered, you may file a “Petition to Cancel” to start a cancellation proceeding with TTAB. A cancellation proceeding is also like a trial except (and the same goes for an opposition proceeding) you make no claim for monetary relief. Instead, if you prevail, your remedy is cancellation of the registered mark.
There are certain rules associated with each of these procedures, and certain windows of time in which you can use them, so speak with your attorney if you find a vexatious trademark on the USPTO database.Benjamin L. Mitchell