united-states intellectual-property trademark
Opposing trademark registration
<h1>Context</h1>

<p>Three years ago, my small team and I created a product that we've been selling ever since. To clarify that I meant to use the name as a trademark, I added the trademark symbol (™) after the product name anywhere we used it.</p>

<p>The product is in French only (for now), but sold worldwide (it teaches English.) Even though we're small, the name is fairly specific and we're the #1 result on Google for the name, in various languages.</p>

<p>I didn't bother with registering a trademark earlier, because creating and supporting a product is enough work as it is and, at the time, it was a lot of money that we needed to use elsewhere.</p>

<h1>Issue</h1>

<p>Today, I found out someone is trying to register our name as a trademark in the U.S. It's unclear to me whether that person is acting in good faith (or acting as a <a href="https://en.wikipedia.org/wiki/Trademark_troll" rel="noreferrer">trademark troll</a>.)</p>

<p>At the least, they were too lazy to check whether the name was in use or, if they did, just didn't care that we did use it.</p>

<p>The registrant is not using the name anywhere online. The <em>Intent to Use</em> in their application is Section 1(b): "<em>The applicant has a bona fide intention, and is entitled, to use the mark in commerce on or in connection with the identified goods/services</em>". They're filing for standard characters, in the same identification category that could describe our product.</p>

<h1>Questions</h1>

<p>The USPTO has a <a href="https://www.uspto.gov/trademarks-getting-started/trademark-process" rel="noreferrer">description of the trademark registration process</a> and <a href="https://www.uspto.gov/trademark/trademark-timelines/trademark-application-and-post-registration-process-timelines" rel="noreferrer">nice flow chart timelines</a>.
They also have a page on <a href="https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-1500d1e181.html" rel="noreferrer">how to oppose trademark registration</a>.</p>

<p>…but this did not answer all of my questions.</p>

<ul>
<li>The docs say I have 30 days to oppose after the date of the publication in the <em><a href="https://www.uspto.gov/learning-and-resources/official-gazette" rel="noreferrer">Official Gazette (OG)</a></em>. Given it takes roughly three month between filing and publication, this would mean another two months to wait:

<ul>
<li>Can I oppose <em>before</em> publication in the OG?</li>
<li>Is there anything I can do before that?</li>
<li>Should I try to file for registration in the U.S. simultaneously? Their <a href="https://www.uspto.gov/trademarks-application-process/basis#1" rel="noreferrer">"filing basis"</a> is Section 1(b) (<em>intent</em>) while I can file for Section 1(a) (<em>current use</em>).</li>
</ul></li>
<li>Once we oppose, do we have good chance of winning? How can I improve our odds?</li>
<li>If my opposition is rejected and their trademark registration is successful, has the registrant any chance to enforce the trademark in court against us?</li>
</ul>

<p>You'll have to wait until publication but you can submit a letter of protest to the USPTO if you already have a registered mark to notify the examining attorney of the issue. This will help them make a decision during their examination whether or not to refuse the application on likelihood of confusion basis. Conversely, you can send them a cease and desist letter demanding they withdraw the application or if the mark registers, file a petition to cancel on grounds of seniority, misleading the uspto and more. You have a few options at your disposal to combat trademark trolls. </p>

<p>Here is a link with more info on letters of protest:
<a href="https://www.uspto.gov/trademark/trademark-updates-and-announcements/letter-protest-practice-tip" rel="nofollow noreferrer">https://www.uspto.gov/trademark/trademark-updates-and-announcements/letter-protest-practice-tip</a></p>

<blockquote>
  <p>Can I oppose before publication in the OG?</p>
</blockquote>

<p>According to a <a href="https://www.gerbenlaw.com/blog/filing-a-notice-of-opposition-how-to-oppose-a-trademark-application/" rel="nofollow noreferrer">law firm blog</a>, "Trademark oppositions can only be filed during the opposition period and not before."</p>

<p>If you're looking for something to do in that time, hiring an attorney may be an option, since you don't have a ton of time after it's published.</p>
