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Notice Of Opposition

What is an opposition?

Joshua Julien Brouard

Joshua Julien Brouard

03 November 20233 min read

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 notice of opposition

An opposition action is a legal proceeding employed to stop the registration of a trademark. When trademark owners anticipate potential harm from the registration of a particular mark, they have the option to initiate an opposition. To start an opposition, trademark owners must submit a Notice of Opposition.

In short, a Notice of Opposition is a formal letter notifying the trademark applicant that an opposition has been filed against their registration.

Understanding the trademark opposition period

When a trademark is published for opposition, meaning that it is on the Official Gazette ( a publicly accessible journal) it’s open for opposition.

The trademark opposition period is a critical phase in the trademark registration process. This period offers a window of opportunity for concerned parties to challenge the registration of a trademark.

That is:

If they believe it could negatively impact their rights or interests. 

It provides a mechanism for safeguarding against potential conflicts. And it ensures that trademarks granted by the relevant authorities align with legal requirements.

During this period, individuals and entities can file an opposition. 

This crucial step in the trademark registration process ensures that trademark rights are granted in a manner consistent with the principles of fairness, competition, and the protection of intellectual property.

The trademark opposition process: What department handles oppositions?

The Trademark Trial and Appeal Board (TTAB) serves as a quasi-judicial body, akin to a court, specializing in trademark matters. These are exclusively within the jurisdiction of the United States Patent and Trademark Office (USPTO). 

Its responsibilities encompass hearing and deciding appeals related to:

  • Application denials.
  • Adversary proceedings.
  • Oppositions to trademark registrations, including cases involving the trademark examining attorney.

How to respond to a notice of opposition

If you receive a Notice of Opposition, you must file a counter statement  with the TTAB. 

You should file your answer within the time stated in the notice. Typically, the notice allows 40 days to submit an answer.

What if I miss the deadline to respond to a Notice of Opposition?

After missing the deadline for responding to a Notice of Opposition:

You must file a motion asking the Trademark Trial and Appeal Board to accept a late-filed answer. 

In the motion, explain why your answer is late.

At that point, the TTAB will determine whether your reason is good enough to set aside the default judgment. 

Take Note: Failing to respond to the notice may result in a default judgment for the other party. That means that you could experience trademark cancellation, and the application might be abandoned.

What goes into an answer?

Your answer must contain an admission or denial for each numbered paragraph listed in the Complaint. 

And in the case that you don't have enough information to answer one of the paragraphs:

You may state you are "without enough information to admit or deny the statements made in the numbered paragraphs." 

Failing to deny any of the numbered paragraphs in the Complaint may be deemed as an admission. Sometimes, there are defenses available depending on the case and Complaint. If so, the appropriate defenses should be stated in the answer as well.

Do I need a trademark attorney?

It can be difficult to properly conduct your case without legal counsel.

Nonetheless, you can represent yourself in a TTAB proceeding. But it's highly recommended that you get the help of a trademark attorney to handle your trademark opposition proceeding. An opposition proceeding is like a court case. Familiarity with the Federal Rules of Civil Procedure is required.

This particular set of rules is normally practiced by attorneys. And, of course, as a result, trademark opposition attorneys are familiar with the rules. They're also very knowledgeable about the proceedings. 

Parties representing themselves will be expected to know and follow the Rules of Practice for the TTAB and the Federal Rules of Evidence. Additionally, hiring trademark attorneys sends a strong message to the opposing party. It shows them that your trademark is important to you and you are doing what it takes to defend it.


FAQs

How long do you have to respond to a trademark opposition?

You have between 30 to 60 days to reply to an opposition. However, this depends on the jurisdiction and local regulations.

What is a notice of opposition?

A Notice of Opposition is an objection filed by a third party opposing the registration of a specific trademark. It initiates a legal process.

What are the defenses to trademark opposition?

Defenses to trademark opposition can include:

 

  • Demonstrating no likelihood of confusion.
  • Challenging the opposer's trademark rights.
  • Asserting procedural issues such as improper filing.

What happens if someone opposes your trademark application?

When someone opposes your trademark application, it triggers a legal process. This involves responding to the opposition, exchanging information, holding a hearing or trial, and ultimately receiving a decision on your trademark application.

What are the grounds for filing trademark opposition?

Grounds for filing trademark opposition may encompass arguing likelihood of confusion, prior use, dilution, or claiming that the mark lacks inherent distinctiveness. These grounds serve as the basis for objecting to a trademark application.

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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.