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Today's episode covers:
- The trademark opposition process is governed by the Trademark Trial and Appeal Board (TTAB) and involves multiple stages.
- Reasons for opposition can include confusion with existing trademarks, dilution, or deceptiveness.
- To defend your application, you must immediately docket deadlines, hire a TTAB-experienced attorney, and file a timely answer.
Resources and links mentioned in this episode:
- Join the Genius Insider
- Leave a Review on Apple Here
- Schedule a Consultation With Attorney LaConya Murray
About the Own Your Genius Podcast
The Own Your Genius podcast is the perfect mix of business, law, and mindset to help black entrepreneurs succeed in business and life.
Join Attorney LaConya Murray each month as she and guest share their entrepreneurial journey, tricks of the trade, and their secrets to getting out of their own way to succeed.
Inspired by her grandmother, the community bootlegger Attorney Murray‘s passion for helping entrepreneurs started early. Today she helps entrepreneurs throughout the country protect their brand, content, and ideas through trademarks, copyrights, and business development.
Until next week, keep building your business, growing your brand, and owning your genius!
Episode Transcript
Welcome to episode 160 of the Own Your Genius Podcast, where we empower entrepreneurs to use their education and experiences to create dope businesses. I’m your host, Attorney LaConya Murray. There’s plenty of talk on trademark registration, and some on the application process, but what about when your application is opposed? Don’t know what that is? That changes today. But before we dive in, make sure you’re subscribed.
Welcome back to the Own Your Genius podcast, where we discuss building businesses, growing brands, and owning your genius. I’m Attorney LaConya Murray, owner of Off The Mark IP Solutions, a boutique intellectual property firm that helps innovative entrepreneurs protect their brand and grow their business with ongoing legal support and mentorship. We have a good one for you today, so let’s get started.
First, let’s talk about the trademark process. It’s non-adversarial, meaning it’s not like court where someone is trying to prevent your trademark. Even through the application process with the examining attorney, their role is not to find reasons to reject your application. They aren’t out to stop your trademark—they’re there to ensure your application qualifies for registration. However, this changes during the publication period when third parties can oppose your application.
The trademark opposition process is formal and governed by the Trademark Trial and Appeal Board, or TTAB. This process begins once someone believes your trademark could cause confusion, dilute the distinctiveness of their mark, or harm their brand. If this happens, they’ll file an opposition within 30 days, and the TTAB notifies both parties. They may also request an extension within those 30 days.
Now, why would someone want to oppose your application? Well, if it’s made it to this point, the examining attorney has already reviewed it and didn’t find any issues. But anyone with a legitimate interest can file an opposition. Common reasons include likelihood of confusion, dilution, descriptiveness, genericness, deceptiveness, and breach of prior rights. For example, someone might oppose if they think your trademark could confuse consumers with an existing brand, weaken a famous mark, or even mislead about the nature of the goods or services.
If your application is opposed, don’t panic. Take a breath, then immediately docket the matter. Record all deadlines, especially your answer due date, which will be 40 days from when you receive the notice. Use a digital calendar, project management tool, or physical planner—whatever works for you.
Next, hire an attorney with TTAB experience. If you’ve been handling this alone, or if your attorney specializes in applications but not TTAB, now’s the time to bring in someone with the right experience. Look for an attorney with trademark law knowledge, strong communication skills, and a strategic mindset.
Finally, respond to the opposition within the 40-day deadline. Missing it could result in a default judgment, where your application is automatically rejected. File on time and protect your brand’s identity and value. Trademark opposition is a common part of the process, and with the right steps, you can overcome it.
At Off The Mark IP Solutions, we perform comprehensive trademark clearance searches to minimize the risk of opposition. Sometimes big brands will oppose just to see if you’ll back down, but we’ve resolved oppositions by addressing concerns directly. By taking a strategic approach, you can safeguard your brand’s identity and trademark value.
Thanks for tuning in, Geniuses! What are your takeaways from this episode? If you found this insightful, share it with fellow entrepreneurs, and don’t forget to subscribe, rate, and leave a review.
Let’s continue the conversation over at the Markedlegal Community—share this episode with three people and have them join you there. And before you go, hit that subscribe button and rate the podcast. Until next week, keep building your business, growing your brand, and owning your genius.
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