When another person or business opposes your trademark application, you have an opportunity to respond.
That response is called a counterstatement.
It sets out the applicant’s position regarding the facts and allegations raised in the notice of opposition.
Rule 44 states that the counterstatement should set out which facts, if any, alleged in the opposition notice are admitted by the applicant.
In practice, the response should be prepared carefully with reference to:
The appropriate response depends on the individual case.
The counterstatement must generally be filed within two months from receipt of the copy of the opposition notice.
Do not confuse this with the four-month period available for filing the initial notice of opposition.
The Registrar ordinarily serves the counterstatement on the opponent. The opposition can then move to the evidence stage.
Under Rule 45, the opponent has two months from service of the counterstatement to submit evidence by affidavit or notify that it does not wish to submit evidence and intends to rely on the facts in the opposition notice.
The applicant then gets the opportunity to submit evidence under Rule 46.
Before filing a counterstatement, organise:
Only information relevant to the particular proceeding should be relied upon.
What form is used for a counterstatement?
Form TM-O.
How much time is available?
Generally two months from receipt of the opposition notice copy.
Can I ignore a trademark opposition?
Ignoring formal proceedings can affect the application. The applicable deadlines should be tracked carefully.
A trademark opposition can delay your registration but it does not automatically mean your application will be rejected. Here’s what happens after an opposition is filed, including the TM-O process, response deadlines, evidence, hearing and possible outcomes. What Is a Trademark Opposition? A trademark opposition is a legal proceeding through …
