Navigating Trademark Objections and Oppositions

What are trademark objections and oppositions?

When a trademark is filed, the registration office will examine the application to make sure that the trademark complies with all the registration requirements.

If one or more requirements are not met, the trademark will be refused. This initial refusal can bear different names depending on the jurisdiction. The most common names are objection, office action, examiner’s report or initial refusal of a trademark.

The refusal grounds may be based on formal matters, such as an unclear description of goods and/or services, which can be easily overcome. However, trademarks may also be initially refused if the examiner finds previously filed or registered trademarks to be identical or confusingly similar, or if the trademark does not comply with the distinctiveness requirements (the trademark is found to be generic, descriptive, indicative, etc.).

What can I do if my trademark application has received an objection, office action, examiners report or initial refusal?

Once a refusal has been received, depending on the grounds for refusal, the applicant may be able to overturn the examiner’s initial findings by submitting arguments of why the trademark should be accepted, or amend and/or clarify any points of the application that have caused the examiner’s initial findings.

The time frames to respond vary between jurisdictions and if no response in presented, the trademark will be declared abandoned, lapsed or definitively refused.

How can I prevent future conflicts with a similar trademark?

If you believe that a similar trademark may conflict with yours and that its existence may constitute an obstacle to the registration of your trademark, a coexistence agreement may be negotiated between both parties.

A coexistence agreement can be beneficial for the following reasons:

• It can prevent an examiner’s initial refusal based on the existence of the trademark with whose owner a coexistence agreement has been reached.

• It can prevent the success of opposition actions between the parties as long as both comply with the negotiated agreement.

• It can prevent possible law suits from being presented based on trademark infringement.

Bear in mind that not all coexistence agreements will be valid or taken into account by trademark offices or authorities. If the examiner believes that the existence of both trademarks will confuse consumers, or be contrary to public interest, the coexistence agreements may be ignored by trademark offices. Coexistence agreements may not be used to control certain sectors of markets, promote actions of unfair competition or create monopolies.

What is a coexistence agreement?

A coexistence agreement is a contract between two trademarks holders in which they formally state that neither of the trademarks affect each other’s interests when used or registered in certain territories and for certain goods and/or services, as long as certain standards of behavior or commitments are met. Such contracts also declare that neither party will oppose the registration or use of the counterpart’s trademarks as long as the undertaken commitments are held.

At the very least a coexistence agreement should include:

• Clear identification of both parties.

• Clear identification of the trademarks that both owners wish to allow to coexist.

• Clear identification of classes, products and services each trademark is limited to and is to be registered and used in commerce for.

• Clear identification of the countries or territories in which the coexistence agreement is to have effect between both parties.

What is a third-party opposition to a trademark?

A trademark opposition is an action brought on by any third party who wishes to prevent a filed trademark from being registered, if they feel that the trademark may harm their business or legitimate interest. The great majority of jurisdictions have a determined time-frame or window of opportunity called the publication period during a trademark’s registration process when oppositions can be filed.

Some of the factors that may compel a third party to oppose a trademark are:

• The third party is the owner of identical or similar trademarks.

• The third party believes the published trademark may be confused in the marketplace with theirs.

• The third party thinks the trademark is being registered in bad faith.

• The third party believes the trademark does not comply with the necessary requirements to be granted protection.

The period of time for oppositions to be presented varies in each jurisdiction.

What can I do if my trademark application has received an opposition from a third party?

Whether or not an opposition can be overcome will depend on the merits of each case. In most cases, opposition proceedings end up being more expensive than the price of an application. Knowing this, the opposing party often files oppositions in order to deter holders from defending their trademarks. In some jurisdictions, not defending a trademark from an opposition will automatically cause it to be refused. Nevertheless, if a trademark is a pivotal element of a business, defending a filed trademark from an opposition may be worth the time and money.

Although the arguments used to defend one's trademark application will depend on each individual circumstance, they are usually related to the reasons why the filed trademark does not cause confusion in the marketplace with the opposing party's trademark, or why the applicant has legitimate rights over the trademark (e.g. the trademark has been effectively used for a considerable period of time and has gained recognition in the marketplace).

Can a registered trademark be canceled, invalidated, annulled, or revoked?

Yes. Legal proceedings and actions aiming at cancelling a trademark’s registration are possible in the vast majority of jurisdictions. The grounds on which such actions may be based vary from jurisdiction to jurisdiction. However, whatever the basis for cancellation, the existence of the trademark must in some way affect the legitimate rights of the party who is presenting the cancellation action.

Some grounds for which a cancellation action may be evoked are:

• If a registered trademark may cause confusion with another previously registered trademark;

• If the trademark is or has become generic since its registration. This is the case with trademarks that no longer serve to differentiate a trader’s or provider’s goods or services from others, and are now the widely used expression in the market place to refer to a determined product or service, regardless of its source;

• If the trademark was registered in bad faith;

• If the registered trademark is a well-known or famous trademark, and the registrant is not the real owner or does not have the real owner’s authorization.

• If the trademark has not been used in a real and effective way for a determined number or years.

What grounds are acceptable, if any, will depend on the jurisdiction of interest.