What Can An Advisory Opinion Do For You?

Last month, it was reported that prominent children’s store, Toys R Us, would be going after the trademark application filed by up-and-coming hair salon and boutique, Hair Are Us. On March 17, 2014, the popular hair extension business based out of Atlanta, Georgia –with additional locations in Miami, Florida and Los Angeles, California – filed for the trademark seen at the top of this article.

Due to the fact the contemplated trademark encompasses “Hair Are Us” and includes the phrase “Are Us” – words included as a substantial part of registered trademarks vigorously protected by Toys R Us’ parent company, Geoffrey LLC, such as “Babies R Us,” “Stickers R Us,” and even simply “R Us” – Toys R Us elected to oppose the application based on the grounds that the mark dilutes its family of marks and sounds confusingly similar thereto, thereby likely confusing consumers into believing that Hair Are Us is connected with other stores owned and operated by Geoffrey LLC.

Generally speaking, an opposition is a legal proceeding governed by the United States Patent and Trademark Office (USPTO) and allows a third party or an owner of a trademark to try and prevent registration of a pending application for a mark. This proceeding is triggered after the applied-for mark has been published in the Trademark Official Gazette (TMOG). Thereafter, the opposing party must file its opposition, or a request to extend its time to file an opposition, within thirty days of the date of publication. A trademark application may be opposed on absolute – i.e. the applied-for trademark is merely descriptive or generic – or relative grounds, such as the case here. The most common defenses to an opposition proceeding is that the mark was used prior to the opposing party’s trademark and/or that no likelihood of confusion exists between the marks, thus they should be permitted to co-habitat in the marketplace.

Roughly less than five percent of trademark applications are opposed each year. However, the fact that this is a low percentage should not deter start-up companies and other entities looking to establish their respective brands from conducting a thorough and extensive search of the USPTO before deciding on what their mark should be. Specifically, companies should seek guidance through the form of an advisory opinion detailing whether or not its proposed mark is available based on other applied-for and registered marks found within the USPTO, and the likelihood of registration of the mark in the event that it is.

A trademark not only serves as a company’s source identifier, but also as an outright statement to the purchasing public that what they are purchasing comes directly from or is endorsed by that company. As such, not only must trademarks be vigorously protected, but they also must be readily available at the outset so as to avoid the chances of a third party swooping in to enforce its rights and going after the company for unknowing infringement.

Trademark infringement lawsuits are costly and may extend for lengthy periods of time. Therefore, it is frugal to spend money now in order to save money later; as a result, advisory opinions should be one of, if not, the first expenses a start-up company makes.

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