HI. I'm new to the board, thought I'd put in my two cents about this discussion.
First off, there is no reason to be soooo afraid of giving your pending trademark name, as all of that is public information. Have you checked the USPTO site? If gives ALL information, down to the address and fax number of the applicant. All we want to do is give you advice. Don't be so paranoid. We can't oppose your mark, unless your mark was similar to our mark. I'm sure we have not registered a mark like yours.
Secondly, here is some basic information regarding oppositions of trademarks. I've read alot about this, as I am currently in the process of trademarking my name. This information is from How to Register Your Trademark by Mark Warda.
There are companies that are hired to read the Gazette of the USPTO and inform businesses if someone attempts to register a mark similar to their own.
Someone opposing has two choices of action. One is, file a letter of protest with the Director of the Trademark Examining Operation, or he/she can file an opposition. If someone has filed an opposition against you, you should consult an attorney or do some serious research of the rules of practice in trademark cases, subsection 2.101 to 2.148 .
A letter of protest points out reasons why your mark should not be registered, such as another mark is confusingly similar or you are attempting to register a generic mark. This way, the person hopes to point out a serious enough problem with your app that it will be rejected by the USPTO.
An opposition is an action similar to a lawsuit between the parties that is brought before the Trademark Trial and Appeal Board. It is conducted just like a trial in the Federal District Court and is governed by Federal Rules of Civil Procedure.
A notice of oppostion (is this what you got?) may come from a large law firm, and include a threat of a lawsuit for infringement in Federal District Court. Sometimes this may be a serious threat and you may be advised to immediately cease using the mark. This is what the law firms want, but often the letter is a BLUFF.
Some companies dont want anyone to use any name which resembles their mark. However, they have no right to stop the use of a mark unless it LEGALLY infringes theirs.
Main issue to consider are whether the marks are indeed similar and confusing, whether the products are similar, whether the parties are dealing in the same channel of commerce, and whether or not there will be actual confusion. In 1996, there was a new factor, the Federal Trademark Dilution Act.
If there are enough dissimilarities you may want to HOLD OUT and FIGHT. If you are within your rights to register the mark, the other company that filed the opposition may not want to waste the money involved for litigation.
If you did get an opposition, the first step is to file an answer with the USPTO. It must be filed within 30 days or a default will be entered against you and your app canceled.
Anyways...the best way to respond to a threat is to send a letter (preferably through your attorney) saying that you recvd the letter, you don't wish to violate their rights, you are researching the law on the matter, and upon determining your legal status you will immediately do what is necessary to comply with the law. This will show that you have good faith, and will give you the opportunity to fight back if they are legally wrong or bluffing.
After your answer has been filed, you can file interrogatories on the other side, written questions that the opposing party must answer under oath. This will help you get info you need to decide if they have a good case.. this is so you can generate enough facts to show the opposers products are in a different field and that there will be no confusion between your products. It's also a good way to find out how serious a party is in fighting. If your questions require a lot of time to research years of records, they may decide its not worth the trouble. If they don't take the time to answer your questions or take further action on their oppostion, it may be considered abandoned. If they DO go throught the trouble to answer you, they are SERIOUS about the opposition and you can decide if you want to come to an agreement or give up the fight.
Hope this helps.
Dee Lovely
.
