WEB & TECH / NOV. 24, 2014
version 3, draft 3

Your Guide to Objecting a Trademark Application

In my previous article "How to design your own app", we covered the importance of creating an authentic, easily recognisable and well received name for your app. In this article, I will take a look at what happens when someone wants to register a trademark for their app despite it being the same or very similar yours!

This is very important information to be aware of in such a rapidly growing industry. With so many apps being created each and every day, you need to be aware of the consequences of using a similar trademark as another, and you should be aware of how to oppose a trademark application if you believe it will cause your app’s brand irreparable harm.

What exactly does ’opposing a trademark application’ mean?

The process of opposing a trademark application occurs when one trademark owner believes their mark/brand will be damaged by the registration of another similar mark in the same geographical region. If you believe a pending trademark application is any of the following, you have grounds to oppose its application for registration:

  • Descriptive of geographical location
  • Descriptive of product
  • Generic name
  • Bad faith
  • Fraud
  • Likelihood of confusion
  • Famous mark
  • Similar to trade/domain name of another

Essentially, you have between 1-3 months to lodge an application for opposing a trademark registration. So you need to be fully aware of what changes or new and up-coming app creators are in the marketplace. This is why most individuals undertake the services of a reputable trademark attorney to keep on top of any new applications being processed in their area of interest.

How can I oppose a trademark application?

All procedures will vary depending on the country you are located in and the trademark registration office. In the U.S for example, you would file a complaint with the USPTO (United States Patent and Trademark Office) TTAB (Trademark Trial and Appeal Board), while for a UK based trademark application complaints (depending on whether they are applicable throughout Europe) can be made through OHIM (The Office for Harmonization in the Internal Market).

The first stage is to lodge the official complaint to the relevant office. At this stage you will not usually be required to provide evidence to support your case that the pending trademark will cause your own trademark irreparable harm, however, you will be expected to define on what grounds you believe the mark should be refused registration.

Essentially, if a counter-statement is not issued by the trademark owner filing the registration within an average period of 2 months, then the trademark will be rejected. If the owner does counter the complaint claim however, the case will go through a ‘cooling off’ period by which both you and the trademark owner can attempt to come to an amicable agreement. If this is not possible, the case will go to court and evidence will be required from you to prove the pending trademark is in breach of specific restrictions.

Oppositions to trademarks are lengthy processes and can take anywhere from 4 months to 2 years, so be ready for a long winded fight. You should also note that if the decision to reject the trademark application is not granted in your favour, you can still appeal the decision.

Your aim is to protect your app’s brand name

Essentially, your sole aim is to protect your app’s name and brand, and this is most effective when you have your own trademark in place. Once you have your own registered trademark, you are in a better position to prevent similar marks from gaining protection. All credible apps in the marketplace seek to trademark their name, not solely for protection purposes, but because it can also give your brand more credibility with your users.

Have you ever had to oppose a trademark application to protect your company brand? Let us know about it in the comments section below. What were your experiences?

 

 

Image source: appoftheweek

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