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-December 2008) that defines Zombie Trademarks as trademarks that are unquestionably legally and factually abandoned. For the purposes of this web site, we are going with DEAD trademarks that might have another life. There are lots of legal issues that Gilson and LaLonde cover in the article that you may want to study if you intend to bring a brand back to life and try to deceive consumers into believing the same brand is back. (The Windfall is the use of a good name, the Pitfall is that if you use deception to try to pass your product or service off as being the same as the former life and capture the goodwill, you may land in legal trouble.)

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) 500-7590, we can represent you and your zombie trademark and fight for its survival.

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     

Discovery Opens     

Initial Disclosures      

Expert Disclosures      

Discovery Closes     

Plaintiff's Pretrial Disclosures     

Plaintiff's 30-day Trial Period Ends     

Defendant's Pretrial Disclosures     

Defendant's 30-day Trial Period Ends     

Plaintiff's Rebuttal Disclosures     

Plaintiff's 15-day Rebuttal Period Ends     

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-oral hearings are rare but can be requested).  A court can decide registrability issues and other issues such as infringements while the TTAB can only decide registerability. Whether an Opposition or Court case is the best answer is something much more complex than an FAQ can answer!

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.

 Call NOT JUST PATENTS® Legal Services with questions at 1-651-500-7590.

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