Discover how trademark, patent, and software law can help small business, entrepreneurs, and inventors. Check my blog for questions and answers.

How to Defend a Trademark Opposition brought by a Major Corporation

##What do I do if a big company is opposing my trademark? I do not have the money to hire very expensive lawyers. So they win right?

Do not count yourself out yet. A trademark opposition is a specialized legal proceeding with just a single legal issue: "should your trademark be allowed to register?" Because the legal issue is so limited, the legal complexity is also limited. Accordingly, it should be possible for a small business to defend an opposition proceeding, even against a large or major corporation, with a relatively limited budget. The key is to make an informed business decision that carefully considers the costs and risks of defending against the costs and risks of giving up (and, presumably, changing your small business's trademark).

Before going further, I will mention that trademark opposition proceedings are reasonably rare. Only about 1 in 1000 trademarks will ever be involved in any type of specialized trademark proceeding before the Trademark Trail and Appeal Board (TTAB). When faced with an trademark opposition, you must decide whether it makes more financial sense to put up a legal defense or to change your trademark. Part of this decision is based on the legal analysis of your trademark opposition, but, the more important part is based on your industry, your customers, and your use of the mark so far.

Step 1 -- Determine costs to change your trademark

All business decisions tend to weight the costs and benefits of varying courses of actions. Trademark oppositions should be no different. You should be able to determine:

  • How much money you have spent on advertising using the trademark.
  • How long you have been using the trademark.
  • How much you would need to spend to contact each of your customers to let them know about the name change (likely, this will be 3, 7 or more contacts to each customer, depending on your industry and your customers).
  • How many non-customers know you by this name (who you would not be able to identify by direct contact) that you would need to reach by indirect advertisements.
  • Make a list of the things that would need to change: websites, packaging, business cards, labels, displays, signs, letterheads, etc. In the aggregate, this can be a substantial cost.
  • How much will you spend to clear your new trademark and file for new trademark applications.

Start by estimating or finding reports for each of these items. Remember, the costs you spend on changing your name may help to improve your business because all of these costs help you to interact with your customer more.

Step 2 -- Know your Opposer

In Trademark law, trademark holders have an affirmative duty to police their marks. Major companies police their marks by assigning an annual budget to trademark enforcement by their lawyers. One of their lawyers will be prioritizing this work and will be responsible for showing the results achevied. Their goal is to maximize results for their efforts. Your trademark may represent a major problem (because the major companies customers are so likely to become confused) or just a minor occurance (because the major company wants to be able to later prove broad and effective enforcement of their trademark). The major company rarely expects a real fight from a small business, therefore, starting oppositions against small businesses can be an effective way to obtain a good result (the major company can win this opposition proceeding for just the cost of the filing and an hour of attorney time) because small businesses are so likely to just give up without a fight. That is, if you give up with no fight at all, it expands their rights for very little use of their budget. It may be that your trademark is less of a concern to this company. If your trademark does not represent an area where actual confusion may occur, there may be a real possibility of settlement.

One way to research the activies of trademark holders is to look at their previous TTAB filings at the Trademark Office website:

This is the TTABVUE system. It shows all of the records of previous TTAB proceedings. You can learn about how and when your major company choose to file proceedings by reading through their past cases. You can search for their past cases by using searching their company name in the "PARTY" box. Cases will be in reverse chronological order, which is useful because trademark policies do change over time. By reviewing past cases, you can get a sense of who this major company is opposing, how often they are filing specialized trademark cases and if there are any patterns to settlement.

Step 3 -- Evaluate the Merits

Finally, you will need to assess the merits of the case. Undoubtedly, this will be easiest with the help of an experienced trademark lawyer. It may be possible to get initial advice from a lawyer for less than the cost of the original trademark filing fee. In particular, you are interested in the lawyers opinion regarding "likelihood of confusion" between your trademark and the major company's trademark. Almost always, the issue in an opposition proceeding is whether the customer will likely confuse your goods for the major companies goods if you labeled your good with your mark. To win the opposition and proceed with the registration, you will need to show that customers would not likely be confused. The most relevant case for this legal analysis is In Re DuPont In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). This case is worth reading to help you evaluate your own position.

###Saving Costs by Accelerating

Finally, another method to reduce legal complexity (and thereby, legal fees) would be if both sides agree that the case may be suitable for Accelerated Case Resolution (ACR). For most small businesses, the issues and evidence may be straightforward. In such cases, the TTAB may be able to give a final decision for about the same amount of effort as a motion for summary judgment in another legal proceeding. More information about Accelerated Case Resolution is available at the USPTO website:

Even major companies have budgets. It is likely they will be willing to agree to acceleration, if the issues and evidence in the case is straightforward.

Evaluate costs, risks and merits

If you go through this analysis, you may find that the cost of changing your mark (even for a small business) may be so high that at least some pursuit of the trademark opposition would be a good business decision. In some cases, you may wish to put up at least a little resistance initially, if only to test the mettle of the major corporation. In other cases, the costs of changing the mark may far exceed the costs of Accelerated Case Resolution, so a full defense may be possible, assuming the case is suitable for speedy resolution.

As always, be sure to double check the information that you find on the Internet against primary sources, such at your own attorney.

How to avoid mistakes when filing your US trademark