Trademark refusal and opposition agents of Mikhailyuk, Sorokolat and Partners successfully represent the trademark rights of clients in trademark refusals, oppositions and cancellation issues in Ukraine and other countries of Eastern Europe. Our professionals provide clients with the most reasonable strategy and its realization to overcome the issues of different complexity.
Core competences of the Trademark Refusal and Opposition Department are:
- analysis of the provisional and final refusals, as well as oppositions and cancellation petitions filed against client's trademark;
- preparing detailed analysis about possible opposition against registration of the opponent’s trademark including estimation of chances of success, information about necessary documents and requirements for their execution;
- filing oppositions on behalf of clients, representation of their interests during opposition pendency; strategy analysis; preparing arguments for oppositions; monitoring and controlling the trademark office's decision in respect of said opposition; negotiation with opponent, if required;
- consulting about possible initiation of the cancellation procedure against registered trademark, providing detailed analysis of the case and offering the strategy of further actions;
- initiation of the trademark cancelation including preparing and filing a cancellation petition along with the necessary supporting documents, taking part in hearings, preparing other relevant documents in the frames of trademark cancellation procedure, conducting negotiation with the adversary, monitoring the status of the disputed trademark, reporting to the client about each step of the cancellation procedure;
- drafting detailed report to the client, including comprehensive situation analysis as well as development of the reasonable strategy and advising client with the set of actions required to overcome a provisional refusals issued in respect of the international registration or trademark application filed under national procedure;
- provision of recommendations to the client in respect of the materials necessary for filing a response to the refusal, office action or opposition, provision of the drafts of corresponding documents, checking the documents as to the conformity with the stipulated requirements;
- preparation and filing of the response to the provisional refusal based on absolute and relative grounds as well as office actions, oppositions, etc., reporting the clients upon filing and keeping them informed as to the developments in respect of the case;
- reporting about issuance of the final refusal decision, providing detailed analysis of thereof, advising on further strategy and chances of its success;
- preparing the draft of the Letters of Consent, Declarations and Co-existence Agreements, consulting regarding requirements to their execution;
- preparing and sending a written request of the Letter of Consent, assignment of rights or voluntary withdrawal of the opposed trademark registration, conducting further negotiations with the owners of opposed trademarks in order to obtain letter of consent, assignment of rights or voluntary withdrawal of the opposed trademark registration;
- consulting clients in respect of protectability of the sign, possibility of its registration as a trademark and conformity with legislation and current practice of the corresponding trademark offices;
- consulting regarding usage of the trademarks in accordance with the current standards and legislation;
- evaluation of possibility and reasonability of obtainment of the Letter of Consent, filing oppositions, evaluation of chances to overcome refusals or to file oppositions;
- monitoring application status, workflow and deadlines in the internal and trademark office databases;
- consulting with trademark office experts in respect of reasonable strategy to overcome the refusal in case of challenging and complicated issues;
- providing consultations in respect of copyrights.
If you have any questions or require any assistance in respect of trademark refusal or opposition matters in Ukraine or any other countries where we operate please contact us, our professionals would be pleased to assist you.