Trademark Opposition

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Trademark Opposition

This page is about Trademark Opposition which occurs when a trademark is published for opposition and a Notice of Opposition is filed prior to a trademark registering.  For issues related to a Petition to Cancel which is filed after the trademark registers, please see our Trademark Cancellation page.  For general information you may also see our Trademark Trial and Appeal Board (TTAB) page, or if an action has been filed against you may also see our TTAB Answer page.

If you feel that a trademark application that has been approved by the trademark office may negatively affect you, you may file a Trademark Opposition.  Filing a Trademark Opposition will begin proceedings with the U.S. Trademark Trial and Appeal Board.  A TTAB case will is very similar to a traditional federal court case, except it is more streamlined and generally costs less money.

The filing of trademark oppositions is on the rise. The number of oppositions filed has increased every year since 2016.  The USPTO reviews hundreds of thousands of applications on a yearly basis, so it’s no surprise that some trademarks that perhaps shouldn’t be granted are approved. Whether you oppose a trademark application, or your trademark application has been opposed, failing to act decisively can result in a loss of your rights.  If you are involved in a trademark opposition, please contact us.

Trademark Opposition Process

Whenever a trademark application is filed with the USPTO, an examining attorney will review the trademark application and if approved the trademark is published for opposition.  The publication of approved trademarks occurs every two weeks, and this begins a 30 day trademark opposition period when individuals with a real interest in the matter can oppose the trademark application.

Publication on the Principal Register provides no rights to the applicant. It is only after the 30-day opposition period has expired that a trademark will be issued. Showing that a current registered trademark could be damaged is grounds for a third party to file an opposition.

Trademark Opposition Grounds

It’s not enough to simply think that a potential trademark would be unfair. There are specific reasons that are acceptable when filing a trademark opposition. While this list isn’t exhaustive, it includes some of the most common reasons behind opposed trademarks:

  • The proposed trademark is similar to an existing trademark and could result in a likelihood of consumer confusion. This is the most frequently cited reason for a trademark opposition.
  • A well-known trademark may be diluted if an application is approved.
  • Someone is attempting to trademark a surname.
  • An applied-for trademark is either generic or a merely a descriptive term.
  • A granted trademark would suggest a false connection, sponsorship or origin.

Who Can Oppose a Trademark Application?

The USPTO will only consider a Notice of Opposition from certain parties. You must have a real or legitimate interest in the outcome of a trademark registration. In essence, the approval of an application must have a direct effect on the opposer.

Someone trying to register a trademark confusingly similar to yours, or a descriptive term used in your marketing, both may create a situation where you can file a trademark opposition.

How Did This Happen?

The USPTO employs trademark attorneys to review all trademark applications prior to publication. While in theory this should prevent any confusingly similar trademarks from being approved, the fact remains that these lawyers are human and can make mistakes. With the number of U.S. trademark applications dramatically increasing, it’s no surprise that something can occasionally slip through the cracks.

This is exactly why the USPTO provides a trademark opposition period for the public to respond. This is another reminder that trademark protection isn’t the responsibility of the government. While there are laws to prevent trademark misuse, the onus of monitoring and responding to trademark violations falls upon the trademark owner.

The 30-Day Trademark Opposition Period

For multiple reasons we advise filing a trademark opposition at the earliest opportunity.  If there is some serious issue that prevents filing within the 30 day time frame, an extension of time is possible.  The extension request must be filed prior to the 30-day opposition period expiring.

Letter of Protest

If someone has filed a trademark application that has yet to be published for opposition, you may feel motivated to try to stop the trademark from even being published. The only option to try to prevent application from even being published is to file a letter of protest.  A letter of protest goes to the examining attorney who can consider your claim as part of the initial review of the application.  For borderline cases, this may lead the examining attorney to refuse the application by issuing an office action.

After filing a letter of protest, the examining attorney will not contact you and you cannot follow up further.  Your only option at this point is to simply monitor the application to see if it is approved for publication or if it receives an office action. The trademark attorneys at the USPTO are good at their jobs, and this means any inappropriate application will likely be identified and rejected.

Trademark Opposition Timeline

While you won’t set foot in a federal courtroom during a Trademark Trial and Appeal Board case, it is very similar to the trademark litigation process. There are specific deadlines that must be met and guidelines that must be followed. The following is the chronology of what you can expect from a trademark opposition.

  • Notice of Opposition filed: The first step in challenging a potential trademark registration is filing a Notice of Opposition within 30 days of publication.
  • Respondent’s answer filed: An answer must be filed within approximately 40 days of the Notice of Opposition. A failure to file an answer will result in the trademark application being abandoned.
  • Discovery: At the outset of the case, the attorneys for each side are required to conduct a discovery conference to discuss plans for discovery. This then starts the discovery period where each side can request information related to the case in the form of interrogatories, requests for admission, and document requests. Witness depositions and expert testimony also occur during this time.
  • Testimony period: Dissimilar to trademark litigation, the TTAB testimony period involves alternating periods where both sides will present their evidence.
    • The party opposing the trademark submits all evidence over a 30-day period.
    • Then the trademark applicant has 30 days to submit its own evidence.
    • Then the party opposing the trademark has a final 15 days to rebut.
  • Trial briefs: At the end of the case briefs are filed – again in an alternating fashion.
    • Opposer files its Trial Brief.
    • Applicant files its Trial Brief.
    • Opposer files a rebuttal brief.
  • Oral arguments: While not required, both sides can request oral arguments to supplement their written evidence.
  • TTAB decision: Once all evidence is submitted and any oral arguments have occurred, the TTAB will usually issue a decision within six months. The losing party has the right to appeal.

Trademark Opposition Attorneys

We are highly experienced trademark opposition lawyers which has allowed us to perfect techniques that win TTAB cases.  You can see the results we’ve achieved for our clients in the over 250 TTAB cases that we have handled.

Contact Us

If you have concerns about a trademark application or need assistance with a trademark opposition, please contact us for a free consultation.

 

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