What Are Oppositions?

What happens after the Trademarks Office approves your trademark application?

Before it gets allowed and registered, there is a short period when anyone can ask the Trademarks Office not to register your trademark.

It's called "opposition period."

Watch this video and find out more about it.

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TRANSCRIPT

So after you filed your trademark, after it was approved by the Trademarks Office, they’re going to publish it in a journal or in a gazette. And the purpose of that is to start a short period—it is called opposition period—when anybody can request that your trademark NOT be registered. So basically it’s kind of like a wedding: Does anybody have anything against that?

So it’s a short period: 2 months in Canada, 1 month in the U.S.; and what’s going to happen is, if somebody files a statement of opposition basically saying, Don’t register this trademark because of this this and that!—and usually they will be listing reasons why they think registration of your trademark will hurt their rights or legitimate interests. And if such a statement of opposition is filed, then it's up to you to respond to that and prove to the Trademarks Office that your reasons for registering your trademark overweight the reasons of the opponent why your trademark should be not be registered. And sometimes you would get into a really long fight. That's almost like litigation but it’s all within the Trademarks Office system where you throw arguments back and forth, trying to convince the Trademarks Office to either register your trademark or not.

And if they succeed in proving to the Trademarks Office that your trademark should not be registered and you can’t successfully overcome those objections, you can’t convince Trademarks Office that actually your trademark should be registered, then you trademark will be deemed abandoned even after the Trademark Office initially allowed it.

Oppositions happen very rarely. They happen in less than 1% of the cases in Canada and U.S.; it's kind of a catastrophe scenario.

It happens a bit more often in Europe because their Trademarks Office doesn't look to compare your trademark applications with other previously filed or registered trademarks. So there it's the job of those trademark owners to police who files what trademark applications. So there a lot more trademarks go through the initial stage of the trademark application process but then a lot more get opposed. In Canada and the U.S., most of those confusingly similar applications get caught by the trademark examiner and those that sneak through then there is less than 1% of those that ever get opposed.

But here is that we came up with. Trademark Factory is the only firm that has a package that covers you not just for what the Trademarks Office is going to say about your trademark application but also covers you for oppositions. And this is the package that we call Ultimate; and it covers you for everything that happens within the Trademarks Office system plus it covers you against unexpected oppositions.

And what I mean by unexpected oppositions is that we are not going to cover you if you knowingly ripped somebody off and file a trademark knowing that they were there first and it's reasonable to expect that they would go after you and oppose your trademark application.

So the purpose of the Ultimate package is to protect you against somebody that you don’t know about that hey might have some prior rights. You didn’t see them because they never filed for a trademark and they are not your direct competition whose brand you trying to trademark.

So, the Ultimate package will cover you against those brands that you didn’t know existed.


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Disclaimer: Please note that this post and this video are not and are not intended as legal advice. Your situation may be different from the facts assumed in this post or video. Your reading this post or watching this video does not create a lawyer-client relationship between you and Trademark Factory International Inc., and you should not rely on this post or this video as the only source of information to make important decisions about your intellectual property.

See our answers to other frequently asked questions about trademarks or leave your comments below!


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