Do not count yourself out yet. A trademark opposition is a specialized legal proceeding with just a single legal issue: “should your trademark be allowed to register?” Because the legal issue is so limited, the legal complexity is also limited. Accordingly, it should be possible for a small business to defend an opposition proceeding, even against a large or major corporation, with a relatively limited budget. The key is to make an informed business decision that carefully considers the costs and risks of defending against the costs and risks of giving up (and, presumably, changing your small business’s trademark).

Before going further, I will mention that trademark opposition proceedings are reasonably rare. Only about 1 in 1000 trademarks will ever be involved in any type of specialized trademark proceeding before the Trademark Trail and Appeal Board (TTAB). When faced with an trademark opposition, you must decide whether it makes more financial sense to put up a legal defense or to change your trademark. Part of this decision is based on the legal analysis of your trademark opposition, but, the more important part is based on your industry, your customers, and your use of the mark so far.

Step 1 — Determine the costs to change your trademark.

All business decisions tend to weight the costs and benefits of varying courses of actions. Trademark oppositions should be no different. You should be able to determine:

• How much money you have spent on advertising using the trademark.
• How long you have been using the trademark.
• How much you would need to spend to contact each of your customers to let them know about the name change (likely, this will be 3, 7 or more contacts to each customer, depending on your industry and your customers).
• How many non-customers know you by this name (who you would not be able to identify by direct contact) that you would need to reach by indirect advertisements.
• Make a list of the things that would need to change: websites, packaging, business cards, labels, displays, signs, letterheads, etc. In the aggregate, this can be a substantial cost.
• How much will you spend to clear your new trademark and file for new trademark applications.

Start by estimating or finding reports for each of these items. Remember, the costs you spend on changing your name may help to improve your business because all of these costs help you to interact with your customer more.

Step 2 — Know your Opposer.

In Trademark law, trademark holders have an affirmative duty to police their marks. Major companies police their marks by assigning an annual budget to trademark enforcement by their lawyers. One of their lawyers will be prioritizing this work and will be responsible for showing the results achevied. Their goal is to maximize results for their efforts. Your trademark may represent a major problem (because the major companies customers are so likely to become confused) or just a minor occurance (because the major company wants to be able to later prove broad and effective enforcement of their trademark). The major company rarely expects a real fight from a small business, therefore, starting oppositions against small businesses can be an effective way to obtain a good result (the major company can win this opposition proceeding for just the cost of the filing and an hour of attorney time) because small businesses are so likely to just give up without a fight. That is, if you give up with no fight at all, it expands their rights for very little use of their budget. It may be that your trademark is less of a concern to this company. If your trademark does not represent an area where actual confusion may occur, there may be a real possibility of settlement.

One way to research the activies of trademark holders is to look at their previous TTAB filings at the Trademark Office website:

http://ttabvue.uspto.gov/ttabvue/

This is the TTABVUE system. It shows all of the records of previous TTAB proceedings. You can learn about how and when your major company choose to file proceedings by reading through their past cases. You can search for their past cases by using searching their company name in the “PARTY” box. Cases will be in reverse chronological order, which is useful because trademark policies do change over time. By reviewing past cases, you can get a sense of who this major company is opposing, how often they are filing specialized trademark cases and if there are any patterns to
settlement.

Step 3 — Evaluate the Merits

Finally, you will need to asses the merits of the case. Undoubtedly, this will be easiest with the help of an experienced trademark lawyer. It may be possible to get initial advice from a lawyer for less than the cost of the original trademark filing fee. In particular, you are interested in the lawyers opinion regarding “likelihood of confusion” between your trademark and the major company’s trademark. Almost always, the issue in an opposition proceeding is whether the customer will likely confuse  your goods for the major companies goods if you labeled your good with your mark. To win the opposition and proceed with the registration, you will need to show that customers would not likely be confused. The most relevant case for this legal analysis is In Re DuPont In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). This case is worth reading to help you evaluate your own position.

Saving Costs by Accelerating the Process

Finally, another method to reduce legal complexity (and thereby, legal fees) would be if both sides agree that the case may be suitable for Accelerated Case Resolution (ACR). For most small businesses, the issues and evidence may be straightforward. In such cases, the TTAB may be able to give a final decision for about the same amount of effort as a motion for summary judgment in another legal proceeding. More information about Accelerated Case Resolution is available at the USPTO website:

http://www.uspto.gov/web/offices/com/sol/notices/acrognoticerule.pdf

Even major companies have budgets. It is likely they will be willing to agree to acceleration, if the issues and evidence in the case is straightforward.

Make a decision based on costs, risks and merits

If you go through this analysis, you may find that the cost of changing your mark (even for a small business) may be so high that at least some pursuit of the trademark opposition would be a good business decision. In some cases, you may wish to put up at least a little resistance initially, if only to test the mettle of the major corporation. In other cases, the costs of changing the mark may far exceed the costs of Accelerated Case Resolution, so a full defense may be possible, assuming the case is suitable for speedy resolution.

As always, be sure to double check the information that you find on the Internet against primary sources, such at your own attorney.

By reading this article, you may better understand the legal strategies and tactics used to respond to a file a trademark registration application. Yet, this article is not legal advice, and, you should not rely solely on this article. Please consult your own attorney or primary legal sources, such as the Trademark Manual of Examining Procedure.

Misspelling  the trademark could forfeit your trademark filing fee.

After filing, the trademark may NOT usually be amended or changed. It is essential to properly spell, space, punctuate, hyphenate, design, color, etc. Check, double check and triple check that the trademark is correct. The trademark examiner has some leniency to allow changes that don’t change the character of the mark, but, you cannot count on the examiner’s discretion. After paying the fee, you may be stuck with exactly what you entered on the application.

Your “Description of Goods and Services” legally defines the scope of your trademark protection.

When you write your “Description of Goods and Services” you legally define the scope of protection for your trademark. Since Trademarks protect consumers from becoming confused about who is providing them with stuff, the trademark is defined by what the “stuff” might be. When writing a goods and services description, you should know

1. the goods and services descriptions of our competitor’s registered trademarks;
2. the pre-approved good and services description from the trademark identification manual;
3. any unique commercial aspect of the goods you are selling; and
4. what words people use to search for your stuff.

Even attorneys will differ in their approach to writing a Goods and Services description. For small businesses that have just one or two trademarks, we recommend a Goods and Services description that includes the broadest possible commercial description, a narrower description including any unique aspect of your stuff, additional descriptions if other words might be used to find your stuff, any pre-approved goods and services from the trademark ID manual.

Larger business that have a portfolio of marks may wish to pursue different strategies depending on the number of marks, house brands, family marks and other factors.

Using the “TEAS Plus” form to spend $275 (and save $50) on your trademark application.

When you use the “TEAS Plus” form you save $50, but you lose the ability to properly define the scope of your Description of Goods and Services. See the previous paragraph for help on defining your Description of Goods and Services.

Failing to “USE” the mark in Interstate commerce.

In trademark law, the term “USE” means sales, specifically, sales across state lines. This is a constitutional requirement of trademark law that can not otherwise be waived. If you have not sold your product or service into another state or at least had a customer travel to you from another state, then you have not “USED” your trademark.

Placing labels on products and shipping them to another state is not trademark “use”. Putting up a website and having visitor from other states is not trademark “use” (unless the mark is purely for a free information based service). Sending catalogs across state lines that have the trademark is not trademark “use.”

Also, each and every product or service in your Description of Goods and Services must have been used as of the date you claim of first use.

When in doubt, file the application as an “Intent to Use” application. You can later file a Statement of Use after you are sure that you have sold each and every element of your Description of Goods and Services across state lines.

Submitting defective trademark samples

Trademark samples are required to show how the trademark has been sold across state lines. For example, a trademark sample could be a price tag with the trademark affixed to the tag. A trademark sample could be product packaging that encloses the goods. A trademark sample could be a business card or letterhead, but, only when the trademark is for a service (and not a tangible product).

A trademark sample cannot be advertising material, including a website, unless the website includes a “shopping cart” or other method for purchasing the goods or services. In general, you want to show the trademark being used as close to the point of purchase as possible.

Filing for a logo or design trademark when the trademark is primarily words or letters.

Trademarks registration application that consist only of words and letters, without any fonts, logos, capitalization, designs, scripts, styles, etc. may provide stronger protection. When a trademark is obtained “without any claim to a particular font, style, etc.” then the law assumes that the trademark can and will be used with any and every stylization.

If you will only file for one trademark, then consider filing for a trademark on the words only, without your design. If you want to claim your design as well, consider filing for a second trademark on the logo alone, or the words with the design.

Filing for a color trademark when a black and white version trademark is available.

When trademarks are filed in black and white, the law assumes that any colors may be used instead of black and white. Generally, it is preferable to for a trademark on the black and white version, which will include any and all color combinations.

Inadvertently perjuring oneself when signing the trademark registration application form.

The trademark registration form includes a statement made under penalty of criminal perjury. If you are filing a trademark you must swear that

1. if are claiming actual use, that you have sold the described goods or services across state lines;
2. if you are claiming intent to use, that you intend to sell the goods or services across state lines;
3. you believe you have a right to use the mark in commerce;
4. that no one else has the right to use the mark in commerce;
5. that the mark will not be used to deceive, cause confusion, mistake;
6. and that the rest of the application is truthful.

If you claim a description of goods or services that you have not actually sold across state lines, you may inadvertently perjure yourself and any trademark rights that you may obtain might be subject to cancellation or the registered trademark or other penalties.

Final Thoughts

Don’t let a simple form sway you to answer haphazardly. Understand how each question relates to the trademark rights that you are trying to create. When in doubt, consult with your attorney to ensure that you do not waste time or money.