WILL DENHAM

Of Counsel, Drucker | Hopkins, LLP

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713-352-8888

Trademark Litigation

Will Denham and his team focuses on protecting clients' trademarks - their brands. We know that your brand may be the most valuable asset you own, and represents the hard work you put into establishing a reputable, high-quality product or service.

 

We also know that this protection often must come through litigation. Our trademark litigation work includes:

  • trademark opposition cases, before the Trademark Trial and Appeal Board, where someone "opposes" registration of the applicant's proposed mark with the USPTO;
  • trademark cancellation cases, before the Trademark Trial and Appeal Board, where someone asks the Board to "cancel" a registered mark with the USPTO;
  • "cease-and-desist" letters, where (before a case is ever filed) a trademark owner (usually) demands that a person stop using a mark; and
  • trademark infringement cases, in state and federal courts, where (usually) two trademark owners dispute whether their marks are confusingly similar.

 

Frequently Asked Questions

 

What is a trademark opposition proceeding?

A trademark opposition proceeding is a case. It's similar to other civil litigation: Two (or more) parties are in a dispute, before a court (here, a "board").

One party (the defendant) is attempting to register a trademark with the USPTO. The other party (the plaintiff) seeks to prevent the registration of defendant's trademark.

 

Who can file a trademark opposition proceedings - and on what grounds?

A notice of opposition may be filed by any "person who believes that he would be damaged by the registration of" the trademark.

The grounds for a notice of opposition, as noted in Rule 309.03(c) of the Trademark Trial and Appeal Board manual include:

• the trademark is likely to cause confusion with an existing trademark,

• the trademark is generic,

• the trademark is geographically deceptive, or disparaging,

• the trademark comprises matter that, taken as a whole, is simply functional,

• the trademark comprises the flag of the United States, and

• the trademark is the name of a living individual without the individual's consent.

 

How long does a trademark opposition proceeding take?

A trademark opposition proceeding in front of the Trademark Trial and Appeal Board generally takes - at least - several months before it is finally decided. At or near the beginning of the case, the Trademark Trial and Appeal Board will issue a calendar setting out a series of deadlines in the case. These deadlines deal with discovery, pleadings, and trial procedures. Of course, the parties can (and usually do) negotiate while the case is pending to see if they can resolve the case beforehand. (In other words, settle.)

 

How do I handle a trademark opposition case?

Proceedings in front of the Trademark Trial and Appeal Board can be dizzyingly complex. (Just see their full manual of procedures.)

As such, for most trademark owners, applicants, and interested parties, it may be wisest to follow the advice of the USPTO: "Hiring an attorney experienced in Board matters is strongly recommended."

 

 

Further Reading

Trademark Cancellation

Trademark Infringement

Trademark Opposition

Trademark FAQ

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WILL DENHAM

Of Counsel, Drucker | Hopkins, LLP

 

1401 Richmond Avenue Suite 250 | Houston, TX 77006

Phone: 713-352-8888 | Fax: 713-454-7773 | Map & Directions

 

Learn How Our Team Can Help You. Call 713-352-8888 For a Consultation.

Will Denham - Of Counsel, Drucker | Hopkins, LLP serves the Houston, Texas, metro area, Harris County and the surrounding areas.

 

© 2017 by WillDenham.com All rights reserved. Disclaimer

Site by Sara Yonker Creative Services

 

WILL DENHAM

Of Counsel, Drucker | Hopkins, LLP

Call us today 713-352-8888

Learn if we're the lawyers for you during a free consultation

Let's fix this.

Submitting Form...

The server encountered an error.

Message received.

WILL DENHAM

Of Counsel, Drucker | Hopkins, LLP

Will Denham Of Counsel, Drucker | Hopkins, LLP

1401 Richmond Avenue Suite 250 | Houston, TX 77006

Phone: 713-352-8888 | Fax: 713-454-7773 | Map & Directions

 

Learn How Our Team Can Help You. Call 713-352-8888 For A Consultation.

Will Denham of Counsel, Drucker Hopkins, LLP serves the Houston, Texas, metro area, Harris County and the surrounding areas.

 

© 2017 by WillDenham.com. All rights reserved. Disclaimer

Site by Sara Yonker Creative Services