TRADEMARK OPPOSITION

HAS YOUR TRADEMARK REGISTRATION APPLICATION BEEN OPPOSED?

An opposition is a process in the United States Patent & Trademark Office’s (USPTO) Trademark Trial and Appeal Board (TTAB) in which one party purposes to prevent registration of another party's trademark after it has been allowed by the USPTO and published for 30-days for opposition. Under the law, if any party believes that it will be damaged by the registration of a trademark, it can file an opposition in the TTAB and have the trademark allowance reexamined.

THE TRADEMARK OPPOSITION PROCESS

  1. File Notice of Opposition within 30-day Opposition Period (or extension of time)

  2. Trademark Applicant files Answer to Notice

  3. Discovery

  4. Trial Briefs

YOUR QUESTIONS…

  1. What happens if I don’t respond to a Notice of Opposition?

  2. Do I need an attorney to respond to a Notice of Opposition?

  3. How do I file a Notice of Opposition?

  4. How long do Trademark Oppositions last?

  5. May I settle the Opposition?

  6. Is a Trademark Opposition the same as a Trademark Cancelation?

OUR ANSWERS…

  1. You must file an answer to the Notice of Opposition within the time stated in the order you received from the TTAB to avoid withdrawal of your trademark application. In other words, if you don’t answer the Notice of Opposition, you will lose your trademark. It’s important that you use an attorney because for each numbered paragraph you see in the notice of opposition, you must indicate the number and then admit or deny the statement, or state that you are without enough information to admit or deny the statements made. It is possible that you may have certain defenses that should be stated as well. If the defenses are stated in your answer, they are lost and can’t be used later.

  2. Yes. Oppositions within the TTAB are quasi-litigation. There is a complaint, answers, motions, depositions, and a trial. Unless you are a trademark attorney (and even if you are), you’ll need a good trademark attorney to represent you.

  3. A Notice of Opposition must be filed within the TTAB, asserting all facts necessary to support each argument for withdrawal of the trademark application. It’s presented in the form of a civil lawsuit complaint.

  4. Trademark oppositions generally take 18-36 months to be resolved. A decision is generally rendered within 10 weeks of the submission of Trial Briefs.

  5. Yes. The parties are required to discuss settlement. Most trademark oppositions are eventually settled. But, some never settle.

  6. A Trademark Opposition occurs during the 30-day Opposition publication window that occurs after a trademark application has been allowed. Cancelations may be filed on issued trademarks only. For trademarks that have been registered in the USPTO, the grounds for challenging the trademark are limited. For example, a mark registered and in use for more than five years, will not be canceled for being descriptive of the goods are services associated with the trademark.