You’re In My Business Again: Oppositions, Cancellations, and Suspensions
There are a few places on the trademark express that your application for registration could stop. These stops can be initiated by a 3rd party intervenor or the USPTO. Notice of each instance should be thoroughly reviewed to determine the best course of action.
Suspension
A trademark suspension notice is a formal notification that a trademark registration has been suspended by the US Patent and Trademark Office (USPTO). This can occur for a variety of reasons, so long as it is for a reasonable time and for a good and sufficient cause, but the most common reason is a pending application with a conflicting mark.
When there are conflicting marks in pending applications, action on the application with the later effective filing date will be suspended (if the application appears to be otherwise in condition for publication or issue or for a final action) until the mark in the conflicting application with the earlier effective filing date is either registered or abandoned. See 37 C.F.R. §2.83(c)
In this instance, the person on the receiving end of the suspension could file a notice of opposition on the cited marks, so long as they have good cause to do so.
It is important to note that a trademark suspension does not necessarily mean the trademark registration has been refused. Rather, it is a temporary hold on the registration process until the issue is resolved, which can take a significant amount of time.
Oppositions
Any person who believes that he or she would be damaged by the registration of a mark on the Principal Register may oppose registration by filing a notice of opposition with the Board, and paying the required fee, within thirty days after the date of publication, or within an extension period granted by the Board for filing an opposition. See 37 C.F.R. §2.101
Once a trademark application has been filed and reviewed by the examining attorney to ensure that it meets the minimum criteria for registration, the mark is then published for opposition for thirty days. This time period allows time for third parties to challenge the registration of a trademark. This process can be initiated by anyone who believes that a pending trademark registration may cause confusion with their own existing trademark.
During opposition proceedings, the parties involved present evidence and arguments to support their position, and a decision is ultimately made by the Trademark Trial and Appeal Board (TTAB). If the opposition is successful, the trademark registration will be refused.
It's important to note that opposition proceedings can be time-consuming and costly, because it can amount to an administrative trial, with the Trademark Trial and Appeal Board (TTAB), but they are often necessary to protect a brand owner’s trademark rights.
Cancellations
The cancellation process, like oppositions, can be complex. However, if successful, a cancellation can result in the removal of a trademark from the register and can prevent the owner from using it in commerce.
Trademark cancellation proceedings can be an effective way to protect your rights as a trademark owner or to challenge the validity of a trademark that may be causing confusion in the marketplace, has become diluted, generic, or isn’t even in use anymore. See 37 C.F.R. §2.111
If you are considering initiating an opposition or cancellation proceeding, or if one has been initiated against you, it is important to consult with a qualified attorney who can guide you through the process and help you achieve your goals. We’re happy to help. Give us a call at 1-888-752-2629 or get started with a consultation here.