When your business is at risk due to a trademark dispute, our firm is prepared to aggressively protect your trademark rights in China. We have extensive experience representing both plaintiffs and defendants before the China Trademark Trial and Appeal Board (TTAB). We also recognize that litigation can be costly and time-consuming, and we try to resolve disputes whenever possible—for example, by a co-existence agreement, license agreement, or purchase of trademark rights, when appropriate.

Each year, companies spend millions of dollars to protect their valuable brand names from competitors.  While a majority of such enforcement efforts take place online and in federal courts, one of the most effective tools for trademark enforcement resides within the confines of the China Patent and Trademark Office: the trademark opposition.

Trademark Opposition Basics

A trademark opposition is a proceeding in which a party seeks to prevent another party from registering a trademark that is pending before the China Trademark Office.  Every year more than 16,000 requests for an extension of time to file a trademark opposition are submitted to the Trademark Office and over 5,000 trademark opposition proceedings are commenced in China.  The procedures for trademark opposition cases may be found in the Trademark Board Manual of Procedure, a voluminous work that contains rules, regulations, and processes that must be strictly followed by all litigants and attorneys involved in a trademark opposition proceeding.

The Notice of Opposition  

A trademark opposition proceeding is instituted by filing a complaint with the China Trademark Trial and Appeal Board, the trademark adjudicative body of the United States Patent and Trademark Office.  The complaint, known as a Notice of Opposition, sets forth the grounds for the opposition, which a minimum, should include (a) the name of the opposer; (2) a description of the nature of its trademark rights; and (3) how it will be damaged should the application that is being opposed be granted.

The Answer and Response

After the notice of opposition (i.e., complaint) is filed, the applicant has 30 days in which to answer, move, or otherwise plead to the allegations contained in the notice.  In addition to answering the allegations of the complaint, the applicant can also invoke affirmative defenses as to why the notice of opposition should be defeated.

Mandatory Discovery Conference

In an effort to narrow the issues and promote the possibility of early resolution of the dispute, the Trademark Trial and Appeal Board requires the parties to have a mandatory discovery conference prior to the commencement of discovery.  The conference, which may take place by phone, should include a brief discussion of the parties claims and defenses, as well as potential settlement proposals.  Should the parties believe that a settlement proposal is promising, they may jointly agree to seek a suspension of the case for a brief period (usually 60 days) to determine whether a final settlement can be achieved without the need to escalate the litigation and associated legal costs.

Discovery

The discovery phase of the case involves comprehensive fact finding in an effort to support the legal burdens of the respective parties. Forms of discovery may include interrogatories, requests for production of documents, and requests for admissions. Depositions of key witnesses and parties are another form of discovery that are routinely utilized by litigants.

Trial Phase

Unlike litigation in federal and state courts where trial testimony is done in the courtroom, trademark oppositions are taken on the papers and all filings are submitted through paper or electronic means.  The merits of the case are adjudicated by Trademark Administrative Judges of the Trademark Trial and Appeal Board, who are empowered to hear such cases, including the nature and quality of the evidence and legal arguments, as well as render a final written decision on the case.

Trademark oppositions are complex legal proceedings that often require the skills of trademark attorneys that are experienced in this form of specialized litigation before the China Trademark Office.  If a Notice of Opposition has been filed against your company’s trademark application, it is always advisable to contact a trademark opposition attorney to discuss your options.

Oppositions

One can oppose another's trademark application to prevent the mark from registering. An opposition can be based on a number of grounds, including prior use of the trademark before the applicant. Commencing an opposition involves filing a complaint at the China Trademark Trial and Appeal Board. The Applicant must file an "answer" or default and lose the application. After the complaint and answer are filed, the parties conduct "discovery"—the formal exchange of information and documents to be used as evidence at trial. After trial, the case is decided by a panel of three trademark judges. Opposition proceedings can be time consuming and costly to litigate, although the vast majority of oppositions result in a default judgment (applicant does not respond to the complaint) or a settlement agreement before trial. 

Trademark Cancellations

Similar to an opposition, a registered trademark can be cancelled on a number of grounds, such as prior use of the mark by the complainant or non-use (abandonment) of the mark by the registrant. The procedures are very similar to an opposition. Likewise, most cases terminate in a default judgment or settlement agreement.

Our China trademark trial lawyers have an impressive track record of litigation victories and favorable settlements in both federal courts and at the China TTAB, including many published decisions. We have handled over 50 Trademark Trial and Appeal Board proceedings (oppositions, cancellations, ex parte appeals).

Trademark Opposition and Cancellation Proceedings

Trademark opposition and cancellation proceedings are complex legal matters that require the attention of sharp, knowledgeable attorneys. We treat each trademark opposition and cancellation proceeding as a unique matter. We analyze the specific facts and evidence of each case and formulate a plan to best achieve the client’s goals, whether by settlement or trying the case.

When a client is faced with issues concerning registration of its trademarks or the registration of another party, we guide the client through the process and evaluate options in an effort to resolve the matter in a way that is most beneficial to the client.

As a China trademark law firm, our trademark attorneys can assist with advising on trademark oppositions and cancellations legal issues. See our Trademarks service line page for additional information about trademark oppositions and cancellations legal services.