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Can I have a bad faith trademark registration reversed?

Posted by Giselle Ayala Mateus | Oct 28, 2020 | 0 Comments

Before a trademark is successfully registered, the trademark petition is subject to an examination process and published in the official gazette for opposition. According to section 1503.01 of the Trademark Manual of Examining Procedure (TMPE), anyone who believes that he or she would be damaged by the registration of a mark on the Principal Register may oppose registration by filing a notice of opposition within thirty days after the date of publication, or within any extension period granted by the Board for filing an opposition. 

The thirty-day period of publication is of fundamental importance. Once a trademark has been published and no opposition has been properly filed, the trademark is registered.  If an applicant needs more time to prepare the opposition the request for an extension of time to oppose must be also filed within thirty days of the date of publication. 

In a trademark opposition is filed on time, the party opposing registration must substantiate its opposition and explain why he or she believes the trademark registration is harmful or unlawful. The most common ground for opposition is likelihood of confusion. When a trademark to be registered is substantially similar to another already registered an opposition may be valid. Additionally, a party opposing the registration of a trademark can show that:

  • The mark is generic for the class of goods and/or services in the petition;

  • The mark is merely descriptive of its goods and services;

  • The mark is “scandalous”;

  • The mark is “disparaging”;

  • The mark falsely suggests a connection with the opposer;

  • The mark is functional for its goods and services (for example, the color neon-yellow cannot be trademarked for safety vests);

  • The applicant is not using the mark or lacks a bonafide intent to use the mark in commerce;

  • The mark has been abandoned;

  • The mark is geographically descriptive or geographically misdescriptive;

  • The mark would dilute the opposer's “famous” mark.

Will a trademark be registered if I fail to oppose the registration?

When one or more similar trademark applications are filed an examining attorney will probably analyze the registration to determine who has a stronger claim or whether the trademark can co-exist. This determination is often made when a trademark is being concurrently used. In this regard, section 1506 of TMEP states that: "A concurrent use registration proceeding is an inter partes proceeding in which the Board determines whether one or more applicants are entitled to concurrent registration.  A concurrent registration is one with conditions and limitations, fixed by the Board, as to the mode or place of use of the applicant's mark or the goods/services/collective membership organization on or in connection with which the mark is used.  The Board conducts these proceedings after the mark has been published, and the Board determines whether or not concurrent use registrations should issue."

Additionally, there may be extraordinary cases in which a party failed to oppose a trademark registration but still has arguments to request that the trademark registration be denied. As a final resource, a party may file a petition for "Interference". The Interference proceeding is also an inter partes proceeding. However, it is rarely granted. Under section 1507 of TMPE, an interference is a proceeding in which the Board determines which, if any, of the owners of conflicting applications is entitled to registration.  

To proceed with an interference proceeding a trademark owner must file a formal petition.  However, an interference is rarely granted considering the availability of an opposition or cancellation proceeding. In this case, the petitioner must be able to show extraordinary circumstances that would result in a party being unduly prejudiced in the absence of an interference.

The use of Letters of Protest

Apart from an opposition proceeding, third-parties may submit to the USPTO "Letters of Protest". This is part of an informal procedure that the USPTO may conduct in a discretionary fashion. In this scenario, third parties may bring to the attention of the USPTO evidence bearing on the registrability of a mark.  It is worth highlighting that the possibility of filing a letter of protest is open only to pending applications. Additionally, it is only intended to aid in the examination procedure without causing undue delay.

Finally, dealing with the element of bad faith

The existence of bad faith may be considered in any scenario where a party wants to challenge a trademark registration. However, bad faith must be proved and the fact that someone files for the registration of a trademark already in use in the market but yet registered is not enough evidence of bad faith. Additionally, the examining procedure and the possibility of opposing or requesting the cancellation of a trademark are procedures created by the law to allow trademark owners to defend their marks. This means, that if a trademark owner is not diligent in defending and enforcing its rights, the law by itself cannot do much. 

About the Author

Giselle Ayala Mateus

Giselle Ayala Mateus is a NY attorney with comprehensive experience in transactional law, creative agreements, business formation, and immigration law. She is also the founder of FOCUS a not-for-profit project focused on supporting entrepreneurs and artists.


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