When a business becomes aware that a third party is seeking or has obtained a federal trademark registration that conflicts with the business’s senior rights, prompt action is essential. In such cases, the Intellectual Property Practice Group is well-equipped to assist in initiating an ex parte challenge to a pending application or, if the registration has already been issued, to pursue an adversarial contest. Time is of the essence, and swift intervention can often make a difference in preserving the business’s intellectual property rights.
The Practice Group can also file a protest in response to a newly filed, unexamined application that conflicts with the business’s own registered marks. This type of proactive monitoring, typically conducted as part of a broader trademark search, is critical to identifying potentially problematic applications before they proceed further through the examination process.
If an application survives the internal review by the United States Patent and Trademark Office (USPTO) and moves forward to publication, a 30-day window opens during which third parties may file an opposition to the application. This opposition may be based on grounds such as likelihood of confusion, or an extension of time may be requested. The opposition process closely mirrors the pretrial procedures of conventional civil litigation, with the trial itself handled through written briefs supported by evidence gathered throughout the proceeding. Our team is committed to thoroughly investigating and collecting the necessary evidence, whether through depositions or written discovery.
Moreover, if a problematic application is granted registration, there are avenues for challenging the scope of that registration, particularly depending on the registration’s filing date. Cancellation proceedings, like opposition proceedings, involve pretrial stages consistent with federal civil litigation, with the trial itself conducted on the basis of briefs and supporting evidence. Again, our team works diligently to identify and compile the necessary evidence, whether through depositions, written discovery, or other investigative means, to ensure the integrity of the business’s intellectual property rights is maintained.
Areas of Focus
- AI Protection
- Appeal of Judgments Regarding Intellectual Property
- Copyright Litigation
- Cybersquatting Litigation
- False Advertising Litigation
- Foreign Patent Prosecution
- Foreign Trademark Prosecution
- Intellectual Property Assets in Family Hands
- Intellectual Property in Corporate Agreements
- Intellectual Property in Mergers & Acquisitions
- Intellectual Property Ownership from Employees & Independent Contractors
- Litigation With Intellectual Property
- Patent Administrative Challenges
- Patent Litigation
- State Trademark Prosecution
- Trade Secret Litigation
- Trade Secret Protection
- Trademark Administrative Challenges
- Trademark Litigation
- U.S. Copyright Protection
- U.S. Patent Prosecution
- U.S. Trademark Prosecution
