You’ve been selling GRINS brand candy bars. You think it’s about time to register GRINS as a trademark but, whoops, another company has already applied to register GRINS for candy.
Most of the time, your only choice is to completely rebrand but, sometimes, there’s a way forward.
I see getting a trademark registration like a game of chess. There are rules and pieces that can move certain ways. If the pieces are lined up the right way, I can move them to get what my client wants.
One of those tactics is called an “opposition.”
Here’s how the chess board has to look for an opposition to work:
You were using GRINS before the other company’s “priority date”.
You were also using GRINS before the other company’s “first use” of GRINS.
The other company’s application to register GRINS hasn’t been “published for opposition” yet or was published within the last 30 days.
If the application was published for opposition more than 30 days ago, you’ve lost the chance to oppose. If you still want to try for GRINS, you can wait until the trademark is registered and then try to cancel it.
We’ll cover cancellations in Part 2.