The United States is a jurisdiction that many of our clients are interested in when considering international trade marks protection. With the right advice and guidance, registering a trade mark in the USA can be quite a straightforward process.
However, as a brand owner, it is important to understand that the registration of a trade mark in the US, as with all jurisdictions, is actually only one step in the overall process of brand protection. A trade mark owner should also be aware of new applications that are being filed, to ensure that there are no new trade marks coming into the market which may infringe or damage the registered owner’s rights. There are ways of monitoring new applications such as setting up trade mark watches and searches.
Whilst some businesses are aggressive, most businesses tend to take a strategic approach to trade mark protection and enforcement, and only oppose applications where there is a clear and direct commercial conflict and consumer confusion is likely. Businesses with this less aggressive approach also tend to contact the trade mark applicant prior to filing an opposition, to request withdrawal or limitation of the conflicting mark to avoid having to start the opposition process.
If it becomes necessary to file an opposition in the US, it is important to note that the US procedure is different from the opposition process in Australia. This is because US opposition proceedings are similar to a court proceeding. The opposition is heard by the Trademark Trial and Appeal Board (TTAB), which is a neutral body that functions like a court and employs administrative trade mark judges, who are authorized to decide on opposition matters and general rights to register a trade mark in the US.
Accordingly, the US opposition process is akin to litigation, including depositions, discovery, and oral hearings. Discovery allows the parties to receive and request information and materials to evaluate the respective claims by written interrogations, request for production of documents, depositions and requests for admission. This is much more complex and time consuming than the opposition process in Australia, which has clear and relatively short timeframes for filling evidence in set stages, and it is all heard before the Australian Trade Marks Office.
In the US, an appeal against an opposition decision can be filed with the TTAB and further appeal after that can be made to the Court of Appeals for the Federal Circuit.
Obviously, settlement negotiations are strongly encouraged in the US, as the costs of an opposition for either party can run into hundreds of thousands of dollars.
The opposition process in the US can be used as a tool to hinder an applicant from registering their mark in the US. Many parties have no desire to be drawn into a lengthy and expensive dispute process, so the concept of seeing an opposition through to completion can be daunting.
The best steps to take in order to avoid finding yourself in a US opposition proceeding are:
1. To undertake comprehensive availability searches prior to filing your own mark in the US;
2. Monitoring the US Register regularly when you have obtained your registration, and;
3. If a similar mark has been accepted, to attempt to negotiate a swift resolution.
If you have questions about opposition proceeding in US or Australia, please contact our trade mark attorneys on 07 3369 2226 or email firstname.lastname@example.org.