Trademark Opposition

Trademark Opposition

A trademark opposition is a procedure that occurs infrequently but can have a profound effect on a trademark registration application.  Near the end of the registration process for a trademark application, the USPTO publishes the application for the public to view for 30 days.   If a member of the public believes that registration of the mark will be harmful to their interests, that member can oppose the registration.

When a third party decides to object to registration of the mark, they do so by filing a Notice of Opposition.  Often times, instead of a Notice of Opposition being filed first, the opposer will file a request for an extension of time beyond the 30-day opposition period.  The opposer then uses that extended time to investigate the mark further and decide whether to file an opposition.  If the opposer decides to continue, it will then file the Notice of Opposition.

The Trademark Trial and Appeal Board (or TTAB)– the arm of the USPTO that deals with Oppositions – will then issue an order explaining the opposition and laying out the schedule of deadlines.  The applicant (the mark owner) then has a period of time to respond to the Notice.  From there, the opposition proceeds and the TTAB determines whether the mark should or should not be registered.

An opposition is sometimes considered an attractive “alternative” to litigation. A trademark infringement lawsuit goes after allegedly infringing use of a mark, while an opposition seeks to prevent registration of the mark from the get-go. And while a trademark infringement suit can produce monetary damages or an injunction preventing the defendant from using their mark, a trademark opposition attempts to block the applicant from ever getting federal rights in the mark.

While it can be an effective tool, an opposition is not necessarily mutually exclusive of trademark litigation. Trademark maintenance and strategy can encompass many different aspects of monitoring and activity. An opposition can prevent registration of an infringing mark, but the TTAB does not issue an order for the applicant to cease using the mark. The TTAB’s decision only goes so far as to say registration is proper or improper. Therefore, the applicant can technically continue to use its mark, albeit without federal registration protection. An infringement lawsuit may be necessary to actually get the applicant to stop using the mark. Of course, other less severe options, such as cease-and-desist letters, may accomplish this goal more efficiently.

Below are some questions often asked about trademark oppositions:

How does the opposition process begin?
The Opposition process begins when the opposer files a Notice of Opposition, which lays out the grounds for the Opposition. When the opposer is also a mark owner, the grounds are usually priority and likelihood of confusion as defined under Section 2(d) of the Lanham Act. The Notice will also identify the marks at issue and the affected goods or services.
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How long does a trademark opposition generally take?
It depends. Often times, Oppositions do not proceed completely through because the parties settle the dispute on their own. Indeed, the TTAB encourages this, requiring the parties to conference and discuss what the issues are and how they might otherwise resolve the issues. An Opposition that isn’t settled, however, can last about a year.
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How much does an Opposition cost?
It depends. If the parties resolve their issues in settlement, significant fees can be saved and it may only cost one or two thousand dollars. However, if they are unable to do so and the Opposition continues, the fees incurred can reach five figures.
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How would an opposer find out about my trademark application?
This is a reasonable question, because every week, the USPTO publishes hundreds if not thousands of potentially registering trademark applications. Sifting through these can be very difficult – indeed , it is difficult just to download and view the publication in which the publications are made because of its size. Many companies thus use search services that watch publications to alert them when a potentially similar mark is published.
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Who might oppose my mark?
Because of the work required to watch published trademark applications for similar marks, often times it is only larger companies or those with a special concern for the strength of their marks that will oppose a mark. Many companies use Opposition as an early and cheap alternative to litigation. By opposing the registration of a mark, they can often strike a heavy blow against a company without having to endure the time and expense of full-blown litigation in court.
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I don’t think the opposer has a good claim – can’t I just ignore the Opposition?
No. Failing to respond to a Notice of Opposition can be fatal to your mark. If you do not participate in the Opposition, it will be decided against you and your mark will not be registered, thus ending your trademark application.
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Do I need a lawyer for a trademark opposition?
Opposition proceed under rules of trial and rules of evidence. Failure to abide by these rules can risk your case. A trademark opposition attorney can guide you through the rules and can provide strategy, as well as negotiating leverage when working with the opposing side to come to an agreement.
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