A Trademark Opposition May Be Your Only Choice

January 31st, 2011

Usually one who believes a pending trademark application or registered trademark infringes her trademark rights has the option to seek relief via either a United States Federal District Court or through the Trademark Trial and Appeal Board (TTAB).  In these scenarios, the TTAB may be more appealing because it generally is less costly, is less time intensive, allows for an easier dismissal by the plaintiff should negotiations resolve the issue.  On the other hand, a District Court can issue an order to enjoin any further use of the trademark, award financial relief including payment of costs and expenses, and allows a jury.

Unfortunately, trademark application that is filed based upon a bona fide intent to use it, commonly referred to as an intent to use trademark, is typically not subject to a lawsuit in a District Court.  This is true where no use in interstate commerce has occurred.  Therefore, your only course or relief at the time would likely be a trademark opposition proceeding in front of the TTAB.  This limited option also holds true in the event that a trademark applicant seeks to expand its previously established trademark rights in a foreign country via the USPTO, despite not having made a use in the United States.  Therefore, while a plaintiff seeking to protect her trademark rights typically has options as to how to redress the alleged infringement, a trademark opposition proceeding may be the only immediate option in the situations identified above.

You should contact a trademark opposition attorney and seek advice before deciding whether to pursue your claim in District Court or in the TTAB.