The trademark opposition/cancellation process

On Behalf of | Mar 10, 2022 | Trademark enforcement |

The U.S. Patent and Trademark Office has a set procedure for challenging a trademark application or seeking the cancellation of an already granted trademark. These are the avenues for a business or individual who believes another party is attempting to infringe on their trademark. Failing to follow the steps the patent office has laid out will derail the defense of your intellectual property.

The process starts with a proper pleading for a notice of opposition or petition for cancellation. This should be a “short and plain statement of the claim showing” that you are entitled to relief. The pleading should also show that you have standing to oppose registration or seek cancellation and that you have an available legal ground to do so. Finally, you must have a good faith belief that what you state in your pleading is true. You attach your pleading to your Electronic System for Trademark Trial and Appeals (ESTTA) form.

If you are petitioning based on prior trademark rights, you must have either a registration or application number or a .jpeg image of the mark if it is not depicted in an application. If the mark is not an image, such as a scent, sound or phrase, the mark or a description of it must be included in the ESTTA form.

Time limits

The patent office requires a notice of opposition to be filed within 30 days of the opposed application’s publication or within an extension of time for filing the opposition. There is no hard time limit for filing a petition for cancellation, but five years following the registration of the mark, the grounds for which you can seek cancellation become more limited.

Getting into the details of defending a trademark

The process is much more detailed than what we went over here. Your best bet for a fair hearing of your trademark infringement is to work with an experienced IP attorney.

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