Trademarks are “deceptively simple.”  The trademark application process may look easy…just submit your application by filling in some blanks in an online form.  What many don’t realize, however, 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 essentially involved in a quasi-litigation type of administrative proceeding before the Trademark Trial and Appeal Board.  Due to the high cost of attorneys, the opposer hopes to use the cost of litigation as a means of forcing you to abandon your application and trademark. 

Fortunately, the attorneys at The Kinder Law Group have a tremendous amount of experience handling trademark opposition proceedings.  Having handled so many oppositions, 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.  We have done this many times, including, in some of the following 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.

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.

And many others…..

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”.