What If My Zombie Trademark Gets Opposed By The Former Owner?
Remember back on the home page where we talked about “The Zombie Trademark: A Windfall and a Pitfall” by Jerome Gilson and Anne Gilson LaLonde in INTA’s law journal The Trademark Reporter (R) Vol. 98 No. 6 (November-
In trademark law, no deception is a good thing. If the zombie trademark that you are trying to register is not likely to be confused with its former life and was factually and legally abandoned by the former owner in its former life, you can use these facts to fight the trademark opposition. Abandonment is an Affirmative Defense that may be available.
A thorough search of more than just TESS is a way to decrease the risk of a trademark opposition. Here’s the statute on abandonment: 15 USC §1127: Abandonment of mark. A mark shall be deemed to be “abandoned” if either of the following occurs: (1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. “Use” of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark. (2) When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark. Purchaser motivation shall not be a test for determining abandonment under this paragraph.
The party claiming abandonment has a big burden to meet. A trademark opposition defense requires knowledge of trademark law & TTAB procedure. Call us at (651) 500-
What is in an Answer to a Notice of Opposition?
In its answer the applicant is required to admit or deny the allegations in the Notice of Opposition. The applicant can also assert affirmative defenses. Affirmative defenses may include unclean hands, laches, estoppel, acquiescence, fraud, mistake, prior registration defense, prior judgment, or any other matter constituting an avoidance or affirmative defense.
What happens after the pleadings? After pleadings:
Deadline for Discovery Conference
Plaintiff's Pretrial Disclosures
Defendant's Pretrial Disclosures
Plaintiff's Rebuttal Disclosures
Can I just tell the examiner who refused my application because of a likelihood of confusion with an already pending or registered mark that I was using the trademark before they were? A trademark examiner take into account information that is outside of the realm of their duties and decide to exert the rights of someone new applying for a trademark over someone who is already registered or whose application was already pending. At the USPTO, only the Trademark Trial and Appeal Board can do this and only in an Opposition or Cancellation Proceeding at the proper stage of one of these proceedings. If you believe that there is no likelihood of confusion, you can argue this position in your answers to the office action and file an appeal to the TTAB within six months of the mailing date of the final refusal to register. The trademark examiner can suspend your application pending the outcome of an Opposition or Cancellation proceeding only if your application is still LIVE and not abandoned so the timing of the filing of the Notice of Opposition or Petition to Cancel may be very important. (The filing of the Notice of Opposition is always important as it can only take place during the Opposition Period or during an extension of time to file by the same party.)
Opposition or Court? An opposition proceeding is similar to a court proceeding in many respects except that it is filed with the Trademark Trial and Appeal Board (TTAB), an administrative tribunal of the USPTO. An Opposition with the TTAB is less expensive than a court proceeding. An opposition is based on a written record only (in most cases-
What does ttabvue stand for? TTABVUE refers to the "Trademark Trial and Appeal Board Inquiry System," which is the electronic record of proceedings before the Board.
What does ESTTA stand for? ESTTA is an acronym for "Electronic System for Trademark Trials and Appeals." ESTTA is the system for filing papers electronically with the Board.
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