What does it mean when the office action says trademark application opposed? A trademark is defined as a recognizable design, logo, sign or phrase that identifies particular products and services. This means that a trademark will enable us to distinguish between products of different sources. A trademark owner may be a business entity, individual or a legal entity. Trademark law is a type of law which protects business’ brand mainly by deterring other businesses or individuals from adopting a logo, name or expression that resembles or same to existing trademarks. The main aim is to enable customers to quickly identify products and services belonging to different producers and avoid confusion.
In United States, a trademark is registered in two ways which includes a good faith intent to apply and actual usage in commerce. The first step of trademark application is filling a trademark application form then followed by an examination stage where examiners from trademark office ascertains the proposed nature of goods and services linked with the provided trademark and make a decision on whether to register or not. At this point, if the trademark infringes on another, an office action may be received stating “trademark application opposed”.
“Trademark opposition refers to an objection by any third party to a registration or application of a trademark in the manner in which it was published or advertised.”
Trademark Application Opposed in United States
Trademark opposition refers to an objection by any third party to a registration or application of a trademark in the manner in which it was published or advertised. When a trademark is approved for publication in the official gazette, any individual who has a past right or reason to believe that the application of the said trademark will damage him or her, is given 30 days to file an opposition. This period can be extended as of right meaning that extension is provided even without the applicant consenting to it. To be specific, opposition period it can be extended for 150 days of which the first 90 days does not require applicant’s consent but the remaining 60 days requires the applicant consent.
Basis for trademark opposition in United States
Basis for trademark opposition refers to the grounds that qualify an objection to the trademark. They should have statements which show how the registration of the trademark in question damages the petitioner. There are two grounds for trademark opposition namely, absolute and relative grounds. Absolute grounds can be based on non-descriptive or descriptive trademark’s character filed for registration and is found to conflict with the official designs, symbols or signs.
On the other hand, relative grounds arise where a trademark resembles an existing trademark to the extent that in confuses consumers. It can also arise whenever there is a conflict between a pending trademark and previous existing common law rights which was established. Any opposition on relative grounds is filed only by owner any previous relative rights.
Furthermore, Trademark law in United States is majorly regulated by Lanham Act. Trademark right is automatically acquired when an individual or a business uses a design, logo or name in commerce. In fact, this common law is enforceable in the state courts. The U.S. Patent and Trademark office (USPTO) is responsible for reviewing trademark applications to determine if they meet the requirements for registration. To be registered, a trademark must have the ability to distinguish goods or services to avoid existence of confusingly similar products. Otherwise, the trademark will not be considered for registration.