What Are My Options For Challenging A Trademark Application Or Registration?
As explained by the United States Patent and Trademark Office, trademark infringement is the “unauthorized use” of a trademark or service mark in a way “likely to cause confusion” in the mind of a reasonable consumer. You have the right to challenge another party’s trademark application or trademark registration. How exactly you should do so depends on the specific circumstances. Here, our Florida trademark & copyright infringement attorneys highlight your four main options for challenging a trademark application or trademark registration.
- File an Opposition to the Application with the TTAB
Did another party recently file a trademark application that is confusingly similar to your trademark? If so, you have a right to file a Notice of Opposition with the Trademark Trial and Appeal Board (TTAB). Any party can file an opposition as long as they have a “legitimate” interest in the case. An opposition to an application should be filed within 30 days of a trademark’s publishing to the Official Gazette.
- File a Petition with the TTAB to Cancel the Registration
If a trademark has already been registered, you can file a claim with the TTAB to cancel the registration. A petition to cancel a trademark registration may be filed at any point in time. There are several grounds to support the cancellation of a trademark registration, including:
- Pre-existing priority over the trademark;
- Abandonment (non-commercial use); and
Notably, recent reforms to federal IP law have made it easier to challenge a trademark for lack of commercial use. If you have any questions about filing a petition to cancel a trademark, contact an experienced Florida trademark infringement attorney for help.
- Seek a Declaratory Judgement in a Lawsuit
In some circumstances, it may be advisable to challenge a trademark directly in federal court. You have the right to seek a declaratory judgement. A potentially powerful tool in litigation, a declaratory judgement is an official statement by a court confirming your rights. You could seek a judgement asking the court to declare your right to use the trademark in question and/or to declare the other party’s lack of rights of the mark.
- Raise an Affirmative Defense (When Facing a Trademark Infringement Lawsuit)
If you or your company is currently facing a trademark infringement lawsuit, the best way to challenge a mark may be through an affirmative defense or a counterclaim. An affirmative defense is a proactive defense stating your right to use the mark in question. In a counterclaim, you could allege that you or your business is the actual victim of trademark infringement. A lawyer can help you determine the proper legal strategy for your case.
Schedule a Confidential Consultation with a Trademark Lawyer in South Florida
At Perkins Law, our Florida intellectual property attorneys have the skills and knowledge to handle the full spectrum of trademark law cases. If you have concerns about challenging a trademark application or trademark registration, we can help. Contact our firm today for confidential guidance and support. From our Boca Raton office, we handle trademark cases throughout Florida, including in Miami-Dade County, Broward County, and Palm Beach County.