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Guide To Trademark Oppositions

"Hey, you can't do that!": A Guide to Trademark Oppositions

Joshua Julien Brouard

Joshua Julien Brouard

09 November 20233 min read

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    This blog post will delve into the intricate world of trademark oppositions in the United States. When safeguarding your intellectual property, understanding the opposition process is crucial. Whether you're a seasoned business owner or just starting out, knowing how to protect your brand is invaluable. 

    Let's explore the key aspects and legal considerations surrounding trademark oppositions.

    The opposition period

    Once a trademark application clears the examination phase, it faces a critical juncture. This is, publication in the Trademark Official Gazette. This triggers a 30-day opposition period during which anyone can oppose the application.

    The Trademark Trial and Appeal Board (TTAB) typically hears the case. They're a specialized body responsible for handling trademark disputes in the United States. This period is where the trademark opposition proceeding officially commences. And during this time, concerned parties can challenge the trademark's registration.

    Reasons for opposition

    Trademark opposition often stems from two primary reasons. First, an opposer may believe they have prior rights to the trademark and aim to prevent its registration. Second, an opposer may argue that the applicant's trademark resembles their own, causing confusion.

    The significance of evidence

    The crux of a trademark opposition often boils down to who can furnish compelling evidence of the earliest use of the trademark "in commerce." This evidence is pivotal in determining the outcome of the opposition.

    An example scenario:

    Consider a scenario involving Jane and Dick, both seeking to become trademark owners for similar marks. Jane recently started using her trademark, whereas Dick's history with his trademark dates back to 1972. Dick, with assistance from his daughter Sally, opposes Jane's application. He invokes "priority of use" and "consumer confusion" as legal claims.

    The opposition process unfolds in a structured manner. Dick initiates the process by filing a Notice of Opposition. He initiates the process by filing a Notice of Opposition, where he details his legal claims against Jane's trademark. Jane, in accordance with the office action instructions, has 30 days to respond with a counter statement to the opposition, defending her right to register her trademark.

    Both parties engage in the discovery process. They exchange documents and information relating to their trademark use. It's worth noting that most opposition cases are ultimately resolved through mutual settlements between the parties.          

    The path to mutual agreements 

    Many oppositions culminate with voluntary withdrawals of trademark applications or negotiated settlements. These settlements involve agreements that allow both parties to continue using their trademarks. That is, provided there's no real-world confusion. This collaborative approach can save time, resources, and legal headaches.

    Your trademark protection journey begins here

    Understanding the ins and outs of the trademark opposition procedure is essential to safeguarding your brand's identity. Whether you're looking to protect your business or creative endeavor, the process can be complex but manageable with the proper guidance.

    Now, it's time to take action. If you're facing a trademark opposition or considering one, seeking professional help is your best course of action. We recommend contacting a trademark attorney for expert assistance in navigating the trademark opposition process.

    Visit our website to explore our comprehensive trademark resources and to connect with experienced trademark attorneys. They can provide personalized guidance tailored to your unique situation and help you register your trademark online. 

    Your brand's legacy is worth protecting, and Trademarkia can help you make it a reality. Don't wait; take the first step in your trademark protection journey today with Trademarkia.


    How do you win a trademark opposition?

    To win a trademark opposition, gather substantial evidence to support your case. Demonstrate prior rights to the trademark and present convincing arguments. A skilled trademark attorney can be invaluable in this process.

    What are the grounds for trademark opposition?

    Grounds for opposition include:


    • Likelihood of confusion
    • Dilution of famous marks
    • Descriptiveness or genericness
    • Fraudulent intent
    • Eligibility issues


    The specific grounds depend on your jurisdiction's trademark laws.

    How do you know if someone opposes your trademark?

    You'll be formally notified by the trademark authority, typically through a Notice of Opposition, outlining the grounds. Regularly monitor your application's status to address opposition promptly.

    How long do I have to oppose a trademark?

    The opposition period varies by jurisdiction. In the US, it's usually 30 days from the date of publication in the Official Gazette. Check the specific timeframe in your jurisdiction.

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    Joshua J. Brouard brings a rich and varied background to his writing endeavors. With a bachelor of commerce degree and a major in law, he possesses an affinity for tackling business-related challenges. His first writing position at a startup proved instrumental in cultivating his robust business acumen, given his integral role in steering the company's expansion. Complementing this is his extensive track record of producing content across diverse domains for various digital marketing agencies.