Orange County Trademark Opposition Lawyer
Trademarks are “deceptively simple.” The trademark application process looka easy…just fill in some blanks in an online form and submit your application. What many don’t realize is that what you put in those blanks may result in your application getting approved right away…or being opposed by a third party. Many won’t even realize there is a problem until six to ten months after they have filed their application.
Third parties can challenge your application on a number of grounds, including, earlier common law rights, mere descriptiveness, surname rights, and others. Once your application is challenged, you are in a quasi-litigation type of administrative proceeding before the Trademark Trial and Appeal Board. Oppossers often hope to use the high cost of litigation as a means of forcing you to abandon your application and trademark.
Fortunately, The Kinder Law Group has extensive experience handling trademark opposition proceedings. We have numerous form documents to fall back upon and can do in minutes what it would take others hours to accomplish. The Kinder Law Group can literally turn the tables on these opposing parties by efficiently handling the matter and denying them of their greatest weapon – the high cost of litigation. Once the high cost of litigation is taken away, they must resolve the matter on the merits. The following are just some of our representative matters:
Representative Cases
(Client Denoted in Blue)
Bauer Hockey, Inc. v. Bodyjar, Inc.
Proceeding No.: 91225213
Practice Area: Trademark Opposition
Outcome: Opposition dismissed.
Description: Third party attempted to oppose client’s application for SIDE MISSION based upon earlier registrations for MISSION. After conveying to third party the intent to defend the action, the third party voluntarily asked the Trademark Trial and Appeal Board to dismiss the opposition.
Diamond Baseball Company, Inc. v. Diamond Dreams Baseball, LLC
Proceeding No.: 91270890
Practice Area: Trademark Opposition
Outcome: Opposition sustained.
Description: Third party attempted to register a trademark with stylized elements that were nearly identical to client’s mark.
Zoomars, LLC v. Joe Fava
Proceeding No.: 91267391
Practice Area: Trademark Opposition
Outcome: Opposition sustained.
Description: Third party application that threatened to block client’s application to register their trademark was challenged based upon prior common law rights.
Citigroup, Inc. v. City Title Loan, LLC
Proceeding No.: 91219849
Practice Area: Trademark Opposition
Outcome: Opposition dismissed.
Description: Third party attempted to oppose client’s application for CITY LOAN based upon earlier registrations for CITI and CITIBANK, among others. After conveying to third party the intent to defend the action, the third party voluntarily asked the Trademark Trial and Appeal Board to dismiss the opposition.
Echo Design Group, Inc. v. Echo Park Surf Squad
Proceeding No.: 91217744
Practice Area: Trademark Opposition
Outcome: Opposition dismissed.
Description: Third party attempted to oppose client’s application for CITY LOAN based upon earlier registrations for CITI and CITIBANK, among others. After conveying to third party the intent to defend the action, the third party voluntarily asked the Trademark Trial and Appeal Board to dismiss the opposition.
Trademark Laws
15 U.S.C. § 1063. Opposition to registration. “(a) Any person who believes that he would be damaged by the registration of a mark upon the principal register, including as a result of dilution under section 43(c), may, upon payment of the prescribed fee, file an opposition in the Patent and Trademark Office, stating the grounds therefor, within thirty days after the publication under subsection (a) of section 12 of this Act of the mark sought to be registered. Upon written request prior to the expiration of the thirty-day period, the time for filing opposition shall be extended for an additional thirty days, and further extensions of time for filing opposition may be granted by the Director for good cause when requested prior to the expiration of an extension. The Director shall notify the applicant of each extension of the time for filing opposition. An opposition may be amended under such conditions as may be prescribed by the Director”.
