What to Know (and Ask!) When Opposing Foreign Trademark Application
It’s a typical afternoon in the office. You’re taking a look at the watch notices your trademark watching service has recently forwarded for your review – when all of a sudden, you come across a third-party application filed outside the USA for a mark that looks an awful lot like one of your brands.
So, what do you do?
Time to get in touch with local counsel to figure out whether it’s advisable – or even possible – to challenge the registration of this application in their country.
Below, we list some of our favorite tricks for quickly and efficiently getting all the information needed to determine next steps and avoid surprises. (Pro-tip: Drop all your questions for counsel into a single email when you have a looming opposition deadline and time is of the essence!)
The very first step is to make sure counsel doesn’t have any conflicts helping you out – this is an important one!
Worried about deadlines? Confirm with counsel that the opposition deadline is the date listed on the watch notice (beware – they don’t always match!), and ask if extensions are available.
When asking about estimated costs, we like to know the “worst case scenario” – that is, the total fees and expenses when dealing with an applicant who aggressively contests the opposition. Knowing this information up front can help to avoid some unpleasant billing surprises!
Though you’ll want to understand your chances of succeeding in any opposition, it’s a good idea to get the whole story. Could this applicant turn around and challenge the registration of your brands in this or another country? Be sure to discuss the risks of opposing with counsel.
Immediately ask whether a Power of Attorney or other documentation will be required. If you decide to oppose at the last minute, you’ll already have the document in hand and can simply sign and return it to counsel. If you’re told legalized documents are needed, consider asking whether PDF copies will suffice to meet the deadline.
Finally, don’t forget to give counsel a head start – in addition to forwarding the watch notice you spotted, let them know about the relevant applications and registrations you own and any history you might have with the applicant.
Taking advantage of these tips and tricks will help you make the most informed decision possible going forward. And the sooner you can deal with a potential infringer, the better!