All Questions in Trademark Disputes >> Opposition based on common law (no registration)

Opposition based on common law (no registration)

Posted by . updated on 11/11/2009
I am considering initiating my first opposition proceeding.  Here's the situation.  An ITU application for the confusingly similar mark whose registration I opppose was actually filed before mine.  Hence, we don't have a registration yet.  However, our use clearly predates use of the other mark (considering it is an ITU app).  So far from my initial research I have gleaned that most oppositions are initiated by one who has an existing registration...but that common law rights can also serve as the basis for opposition.  Before I invest too much time, is there anything I need to know about pursuing an opposition without an actual registration in hand?  Any particular resource that addresses this (I haven't found this scenario addressed in TMEP)?
Answers (7)
 
c.hugan
Likelihood of confusion and prior use is the grounds for the opposition.  If you file for registration, the examining attorney will probably suspend your application pending the outcome of the opposition.

You'll probably need to reference the TBMP regularly--it's posted in .pdf on the USPTO website.

http://nashvegaslawyer.wordpress.com/
 
 
Lyza
I think you mean the "TMEP", the Trademark Manual of Examining Procedures.

I am not an attorney but suspension after a 2(d) office action refusal is not a foregone conclusion.  It often must be requested by the Applicant or Applicant's attorney.
 
 
c.hugan
Quote from: Lyza on 10-19-08 at 11:34 am
I think you mean the "TMEP", the Trademark Manual of Examining Procedures.

No--I meant Section 303 of the TBMP ["Who May Oppose"].

Chris

http://nashvegaslawyer.wordpress.com/
 
 
c.hugan
Quote from: Lyza on 10-19-08 at 11:34 am

I am not an attorney but suspension after a 2(d) office action refusal is not a foregone conclusion.  It often must be requested by the Applicant or Applicant's attorney.

My experience is that the examining attorney suspends sua sponte--but, both times I filed the application and the opposition (to the prior application) simultaneously.

http://nashvegaslawyer.wordpress.com/
 
 
Lyza
Thanks, Chris.  I've always just referred to it as the TTAB manual.  I'd forgotten that it has an anagram as well.

As I've always said, people using this Forum should always consider who is participating and the source of the statements.  I offer only experience, but that still does not make whatever I offer correct nor should it be construed as legal advice.

If I may offer, however, that in my experience, the type of scenario mentioned in IPLoya initial statement would not necessarily cause a prosecution examiner of IPLoya's application to automatically suspend unless the examiner was asked to suspend.  He indicated that his application already exists as does the infringers.  A prosecution examiner is not always aware of a TTAB proceeding unless told about it.  Again, if IPLoya is at all unsure as to how to proceed, he should see the counsel of a TM-qualified attorney, such as yourself or the other attorneys participating on this list.  Thanks.
 
 
bcapehart
Quote from: IPLoya on 10-17-08 at 05:58 pm
I am considering initiating my first opposition proceeding.  Here's the situation.  An ITU application for the confusingly similar mark whose registration I opppose was actually filed before mine.  Hence, we don't have a registration yet.  However, our use clearly predates use of the other mark (considering it is an ITU app).  So far from my initial research I have gleaned that most oppositions are initiated by one who has an existing registration...but that common law rights can also serve as the basis for opposition.  Before I invest too much time, is there anything I need to know about pursuing an opposition without an actual registration in hand?

IPL - Yes, I have had situations where we file an opposition against an ITU when my client does not have a registration but relies upon common law rights.  Typically, the examiner cites the ITU and suspends my application.  At that point, I file an extension of time to oppose and see if the other side would like to resolve the issue without an opposition, and if not, I file the opposition based on prior common law rights.

If the examiner cites the ITU against your application, it will probably be suspended pending the resolution of the ITU.

Best of luck.
Brent

Best of luck.
Brent
 
 
IPLoya
Thanks, Brent,

Someone else beat us to the opposition the other day, so we are going to wait and see what happens.  Smiley
 

Related Questions

nominative use/fair use

nominative use/fair use

In Trademark Disputes    -  updated on 11/11/2009
I have a question....if I manufacture and market a product that by its very nature has to be used in conjunction with another company's product and I show my product attached to the other product in pictures and the written words below (this is a product that adds value and different uses) on my web site and sales brochures am I guilty of infringement of their trademark? Example I make a tool chest that bolts into a Ford pickup, Chevy pickup, Dodeg pick up and so on and I show the variou...
[Trademark] Infringement allegation help please

[Trademark] Infringement allegation help please

In Trademark Disputes    -  updated on 11/11/2009
Hi

I am totally new to this whole deal so please bear with me.

I am the owner of a fishing related business here in the US, called  XXXXXXXXXX  I sell fishing baits for catfish and carp fishing here in the US.

I recently received an email from a company in the UK called XXXXXXXXX, stating I was infringing on their copyright by calling my company anything that had XXXXXXX in the title.

They also said that as my corporate colors were similar...
Organization Internal Quality Newsletter - Any voilation of trademark?

Organization Internal Quality Newsletter - Any voilation of trademark?

In Trademark Disputes    -  updated on 11/11/2009
    I do happen to work for an global enterprise,  one of the software subsidary ceter happens to have brought out an quality news letter for internal ciruclation named as 'Qualcomm' does it infringe or voilate any trademark with regard to the technology organization 'Qualcomm' poineers in CDMA technology.  Any response would be greatly appreciated.

Thanks,
Sam

   
Trademark collision

Trademark collision

In Trademark Disputes    -  updated on 11/11/2009
Hi,

We have been doing business over the Internet since we were incorporated in 2001.  We never applied for a trademark, but recently went to do it.

In 2004 another company introduced a product by the same name as our company.  They have absolutely nothing to do with our industry, and are not competitive in any way.

Are we at risk? or are they?  We have a tremendous amount of public records and tax filings showing our corporate name and marketi...
Infringement Insurance??

Infringement Insurance??

In Trademark Disputes    -  updated on 11/11/2009
I am in the process of licensing my trademark to a large apparel manufacturer.  We are very close to finalizing the agreement but their attorney is asking us to "obtain and provide evidence of Commercial General Liability (?CGL?) insurance in the amount of $1,000,00 Per Occurrence and $3,000,000 Annual Aggregate.  The CGL insurance policy shall cover ?advertising injury,? including but not limited to payment for the defense against a claim of copyright infringement, trademark i...