Trademark Opposition Proceedings Can Lead to Unintended Benefits Through Coexistence Agreements
Trademark coexistence may become a necessary consideration for all trademark holders and opposers as the commercial market for trademarks continues to grow exponentially.
April 22, 2022 at 10:00 AM
6 minute read
TrademarksNo ordinary trademark applicant wants their application opposed. Trademark publication can be an anxious part of the application process, with fear of aggressive opposition and costly proceedings looming in the background for 30 days. Rightly so, as this is sometimes exactly what happens. But many oppositions, whether they are only threatened or actually filed, afford the applicant a discussion with the opposer that can ultimately be helpful in nonobvious ways.
In addition to the well-known benefits of opposition settlement through trademark coexistence, carefully negotiated coexistence agreements between and among less distinctive mark owners can help build a stronger network of protection and defense than might otherwise be accomplished.
Publication of a trademark by the U.S. Patent and Trademark Office (USPTO) during the mark's application process provides an opportunity to oppose the registration of that trademark to those with a reasonable objection to its registration. It is usually the first time parties of interest will learn of the trademark's application and they must act quickly—a notice of opposition or a request for an extension of time to oppose the mark must be filed within 30 days. TMEP §1503 Opposition. Otherwise, the trademark will proceed to registration.
NOT FOR REPRINT
© 2024 ALM Global, LLC, All Rights Reserved. Request academic re-use from www.copyright.com. All other uses, submit a request to [email protected]. For more information visit Asset & Logo Licensing.
You Might Like
View AllThe Long Road To Settling a Trademark Case: Proactive Steps for Success
7 minute readDow Jones, New York Post Sue Perplexity AI Over Alleged Misuse of Copyrighted Works
6 minute readRapper 50 Cent Sues NYC Jeweler for $5 Million Over Imitation Necklace, Use of Image
Trending Stories
Who Got The Work
Michael G. Bongiorno, Andrew Scott Dulberg and Elizabeth E. Driscoll from Wilmer Cutler Pickering Hale and Dorr have stepped in to represent Symbotic Inc., an A.I.-enabled technology platform that focuses on increasing supply chain efficiency, and other defendants in a pending shareholder derivative lawsuit. The case, filed Oct. 2 in Massachusetts District Court by the Brown Law Firm on behalf of Stephen Austen, accuses certain officers and directors of misleading investors in regard to Symbotic's potential for margin growth by failing to disclose that the company was not equipped to timely deploy its systems or manage expenses through project delays. The case, assigned to U.S. District Judge Nathaniel M. Gorton, is 1:24-cv-12522, Austen v. Cohen et al.
Who Got The Work
Edmund Polubinski and Marie Killmond of Davis Polk & Wardwell have entered appearances for data platform software development company MongoDB and other defendants in a pending shareholder derivative lawsuit. The action, filed Oct. 7 in New York Southern District Court by the Brown Law Firm, accuses the company's directors and/or officers of falsely expressing confidence in the company’s restructuring of its sales incentive plan and downplaying the severity of decreases in its upfront commitments. The case is 1:24-cv-07594, Roy v. Ittycheria et al.
Who Got The Work
Amy O. Bruchs and Kurt F. Ellison of Michael Best & Friedrich have entered appearances for Epic Systems Corp. in a pending employment discrimination lawsuit. The suit was filed Sept. 7 in Wisconsin Western District Court by Levine Eisberner LLC and Siri & Glimstad on behalf of a project manager who claims that he was wrongfully terminated after applying for a religious exemption to the defendant's COVID-19 vaccine mandate. The case, assigned to U.S. Magistrate Judge Anita Marie Boor, is 3:24-cv-00630, Secker, Nathan v. Epic Systems Corporation.
Who Got The Work
David X. Sullivan, Thomas J. Finn and Gregory A. Hall from McCarter & English have entered appearances for Sunrun Installation Services in a pending civil rights lawsuit. The complaint was filed Sept. 4 in Connecticut District Court by attorney Robert M. Berke on behalf of former employee George Edward Steins, who was arrested and charged with employing an unregistered home improvement salesperson. The complaint alleges that had Sunrun informed the Connecticut Department of Consumer Protection that the plaintiff's employment had ended in 2017 and that he no longer held Sunrun's home improvement contractor license, he would not have been hit with charges, which were dismissed in May 2024. The case, assigned to U.S. District Judge Jeffrey A. Meyer, is 3:24-cv-01423, Steins v. Sunrun, Inc. et al.
Who Got The Work
Greenberg Traurig shareholder Joshua L. Raskin has entered an appearance for boohoo.com UK Ltd. in a pending patent infringement lawsuit. The suit, filed Sept. 3 in Texas Eastern District Court by Rozier Hardt McDonough on behalf of Alto Dynamics, asserts five patents related to an online shopping platform. The case, assigned to U.S. District Judge Rodney Gilstrap, is 2:24-cv-00719, Alto Dynamics, LLC v. boohoo.com UK Limited.
Featured Firms
Law Offices of Gary Martin Hays & Associates, P.C.
(470) 294-1674
Law Offices of Mark E. Salomone
(857) 444-6468
Smith & Hassler
(713) 739-1250