How to Handle Trademark Opposition Proceedings (The Right Way!)

Navigating trademark opposition proceedings can be daunting for business owners and entrepreneurs.

Understanding (1) when and why these oppositions occur, (2) the grounds for filing, and (3) the associated timelines are crucial for protecting your brand.

That's why we've put together this guide.

It provides a comprehensive overview of trademark opposition, from the initial notice of opposition to filing and defending against claims.

Whether you're seeking to oppose a trademark or need to defend your own, this article will offer practical advice and highlight how Trademarkia can assist you.

When do trademark oppositions occur?

Trademark oppositions occur during the trademark application process after the United States Patent and Trademark Office (USPTO) has reviewed and approved an application but before the trademark is officially registered.

Once an application is approved, it's published in the Official Gazette.

This is a weekly publication by the USPTO which opens a 30-day window during which any third party who believes the trademark registration may damage them can file a notice of opposition.

Oppositions typically arise when the opposing party, or opposer, believes that the new trademark infringes on their existing trademark rights.

Interested in learning more about trademarks? Read our complete article “What Is a Trademark?”

What is a notice of opposition?

A notice of opposition is a legal document filed with the USPTO to contest the registration of a trademark.

This document initiates the trademark opposition process and must be filed during the 30-day opposition period following the publication of the trademark application in the Official Gazette.

What are the grounds for filing an opposition?

The most common grounds for opposition include:

• Likelihood of confusion with an existing mark,
• Descriptiveness or generic nature of the trademark,
• Lack of intent to use the mark in commerce,
• And potential dilution of a famous trademark​.

The opposition process is designed to provide a legal means to resolve these disputes before the trademark is granted full protection, thereby helping to prevent potential market confusion and protect established trademark rights.

What is "extension of time to oppose?"

Per the Trademark Act, an extension of time to oppose is a formal request made to the USPTO to extend the 30-day opposition period that follows the publication of a trademark registration application in the Official Gazette.

This extension allows third parties to decide whether to file a notice of opposition against a trademark application.

There are several types of extensions:

• 30-day automatic extension: This extension can be requested without providing any reason and is granted automatically by the USPTO.
• 60-day extension: This extension extends the opposition period by an additional 60 days and requires payment of a fee and a showing of good cause.
• 90-day extension: A cumulative total of up to 90 days can be requested, with the first 30 days granted automatically and the subsequent 60 days requiring good cause and a fee​.

Who can oppose a trademark application?

Any person or entity that believes a trademark registration would damage them can file an opposition to a trademark application.

The key requirement is that the opposer must have a "real interest" in the outcome of the trademark registration.

This generally means that the opposer must demonstrate that they have a legitimate stake in the matter and that the trademark registration could harm their business or trademark rights.

Trademark opposition timeline

The trademark opposition process is a structured procedure overseen by the Trademark Trial and Appeal Board (TTAB). Here's a step-by-step timeline of the opposition process:

1. Publication for opposition:

Duration: 30 days

Once the USPTO approves a trademark application, it's published in the Official Gazette. This opens a 30-day window for any party to file a notice of opposition or request an extension of time to oppose.

2. Notice of opposition:

Filing deadline: Within the 30-day opposition period or any granted extension.

The opposer files a notice of opposition detailing the grounds for opposition and the basis of their interest in the case.

3. Applicant's answer:

Deadline: 40 days from the date of service of the notice of opposition.

The applicant must respond to the notice of opposition with an answer addressing each allegation. Failure to respond can result in a default judgment against the applicant.

4. Discovery conference:

Timing: Within 30 days after the answer is filed.

Both parties meet to discuss the scope of the case and plan for the discovery phase.

5. Discovery period:

Duration: Typically six months.

Both parties gather evidence to support their claims and defenses. This may include interrogatories, document requests, and depositions. Each party can object to improper discovery requests.

6. Pretrial disclosures:

Deadline: Varies based on the TTAB schedule.

Both parties must disclose the evidence and witnesses they plan to present during the trial.

7. Testimony periods:

• Opposer's testimony period: 30 days.
• Applicant's testimony period: 30 days following the opposer's period.
• Rebuttal period: 15 days for the opposer to submit rebuttal evidence.

During these periods, each party presents their evidence through written declarations, notices of reliance, and any documentary exhibits.

8. Trial briefs:

Filing order: The opposer files first, followed by the applicant, and then the opposer's rebuttal brief.

Each party submits written arguments summarizing their case and the evidence presented.

9. Oral arguments (optional):

Timing: Scheduled upon request.

Both parties can request to present their arguments orally before the TTAB.

10. TTAB decision:

Timing: Typically, within six months after the final briefs or oral arguments.

The TTAB issues a written decision based on the evidence and arguments presented. The decision can be appealed to the United States Court of Appeals for the Federal Circuit or a district court.

Understanding the detailed steps and adhering to the timelines in the opposition process is crucial for both opposers and applicants to protect their trademark rights effectively.​

Along with assisting clients to file their trademark online, our trademark attorneys are also well-versed in trademark opposition. 

Start our simple online process today and get started. 

How do you file a trademark opposition?

Filing a trademark opposition isn't difficult; just follow these simple steps:

• Monitor publication: Check the USPTO's Official Gazette for published trademarks.
• Request extension (optional): File for an extension of time to oppose if needed.
• Prepare notice of opposition: Include the opposer's details, grounds for opposition, and the statement of interest.
• File notice: Submit the notice of opposition through the Trademark Electronic Application System (TEAS) and pay the required fee.
• Serve applicant: Provide a copy of the notice to the trademark applicant.
• Await answer: The applicant has 40 days to respond.

Let us handle it for you! Trust in the legal experts—our trademark attorneys ensure your opposition is filed efficiently and successfully.

Book a free 15-minute consultation today.

Costs of filing a trademark opposition

Filing a trademark opposition involves several costs, starting with a USPTO fee.

Additionally, you'll have to pay attorney fees (these will vary).

Other potential expenses include discovery and expert witness fees, which can significantly add to the overall cost​.

How Trademarkia can help you file your trademark opposition

Trademarkia offers comprehensive support for filing oppositions, ensuring your case is handled with expertise and precision.

Our services begin with a thorough review of the trademark application in question and identifying the grounds for opposition, such as:

• Likelihood of confusion,
• Descriptiveness,
• Or dilution.

We assist in preparing and filing the opposition through the USPTO's TEAS, ensuring all legal requirements and deadlines are met.

An experienced trademark attorney provides strategic guidance throughout the opposition process, from initial consultation and evidence gathering to representing you in discovery and trial phases before the Trademark Trial and Appeal Board (TTAB).

We also offer advice on settlement options, potentially resolving disputes without needing a full trial.

Trademarkia helps you protect your brand efficiently and effectively by leveraging our expertise.

How do you answer an opposition?

To answer an opposition, start by thoroughly reviewing the notice of opposition to understand the specific claims made against your trademark application.

Draft a detailed response that addresses each allegation, providing explanations and evidence to counter the claims.

Include any defenses you have, such as prior use or the distinctiveness of your mark.

And:

Ensure your answer is filed within the 40-day period using the USPTO's Trademark Electronic Application System.

Once your answer is filed, prepare for the discovery phase, where both parties exchange relevant information and evidence.

This may involve:

• Responding to interrogatories,
• Document requests,
• And participating in depositions.

Throughout this process, gather and present strong evidence to support your case. Additionally, consider negotiating a settlement outside of the opposition proceedings to resolve the dispute.

If the case proceeds to trial, submit your testimony and evidence and file trial briefs to present your arguments.

5 Early settlement options

While you may be wondering “how to win a trademark opposition” often there are settlement options that benefit both parties. 

Early settlement options in opposition cases can save both parties time, money, and resources compared to proceeding through a full opposition trial.

Here are some standard early settlement options:

1. Coexistence agreement

Both parties agree to use their respective trademarks without causing confusion in the marketplace.

This agreement typically outlines specific terms, such as:

• Geographic areas of use,
• Market segments,
• Or distinct branding elements to minimize confusion.

It allows both parties to continue using their trademarks under mutually agreed conditions, avoiding the need for a trial.

2. Amendment of the application

The applicant may agree to amend their trademark application to address the concerns of the opposer.

This could involve:

1. Altering the goods or services listed in the application,
2. Changing the trademark design,
3. Or limiting the geographic scope of the trademark.

3. Withdrawal of the application 

The applicant may also choose to withdraw their trademark application entirely.

This option might be considered if the applicant sees limited value in pursuing the trademark further or anticipates a low likelihood of success in the opposition.

4. Licensing agreement

The opposer and applicant may enter into a licensing agreement in which the applicant agrees to pay a fee or royalty to the opposer for using the trademark.

5. Negotiated settlement

Both parties may negotiate a settlement that resolves the opposition. This could involve financial compensation, rebranding efforts, or other mutually agreed terms.

Early settlement can be a pragmatic solution in trademark opposition cases. It offers a quicker, less adversarial resolution that protects the interests of both parties.

TM opposition vs. TM infringement proceedings

Trademark opposition proceedings are an administrative process before the TTAB in which a party challenges the registration of a trademark before it's registered, typically on grounds like the likelihood of confusion or descriptiveness. They don't involve monetary damages.

Trademark infringement proceedings are legal actions filed in federal court where a trademark owner seeks to stop the unauthorized use of their trademark and can claim monetary damages and injunctive relief.

Trademark infringement focuses on actual use in commerce and consumer confusion.

So:

Opposition is preventive and administrative, while infringement is a reactive legal remedy seeking to stop and penalize unauthorized use.

Simplify trademark opposition: Expert guidance every step of the way.

Navigating trademark opposition proceedings can be complex and challenging, but understanding the process, from filing a notice of opposition to exploring early settlement options, is crucial for protecting your trademark rights.

Trademarkia offers comprehensive support throughout this process, helping you effectively file or defend against opposition.

Our trademark opposition attorneys ensure that your interests are safeguarded, allowing you to focus on growing your business with confidence.