What is an 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.