At some point during your trademark application process, you may encounter a common trademark enforcement mechanism within the U.S. Patent and Trademark Office (USPTO) system known as a Trademark Opposition. In this article, we consider what is it, how does it work, and what to do if you find yourself on the receiving end of a trademark opposition.
Approximately 3-4 months after your trademark application is filed with the USPTO, it is assigned to an Examining Attorney (Examiner) who is responsible for reviewing the application and determining whether, based on a number of factors and considerations, the mark should be permitted registration.
If the Examining Attorney determines after his or her review that the mark meets all the criteria for registration, and does not conflict with any prior registered marks or pending applications, the Examiner will approve the application for publication in the Trademark Official Gazette, the official weekly publication of the USPTO (application and publication information is also readily available to the public on the USPTO website).
The mark is published in the Official Gazette for a 30-day period, during which time any interested party may institute a trademark opposition proceeding against the trademark applicant, or file a request for an extension of time to oppose. Trademark oppositions are a form of litigation held under the auspices of the Trademark Trial and Appeal Board (TTAB). Once a trademark opposition has been filed, the Examining Attorney is no longer involved with the application, and the proceeding must run its course (unless or until the parties reach a settlement) before the TTAB.
A trademark opposition usually begins when the owner of a registered trademark or pending application, files a Notice of Opposition against the trademark applicant alleging likelihood of confusion among potential consumers in the marketplace and/or dilution of their brand name if the mark is allowed registration. The Opposer must file the Notice of Opposition and pay the applicable opposition filing fees to institute the proceeding before the TTAB.
The Notice of Opposition is then served on the trademark applicant, who has 30 days within which to file an Answer, or request an extension of time. If the applicant fails to respond in a timely manner, the applicant will default and the case will be dismissed in favor of the Opposer. This will be the end of the applicant’s trademark process, so it’s very important to respond to a Notice of Opposition as soon as possible.
Trademark oppositions proceed like any other form of litigation. Once a Notice of Opposition is filed, the TTAB will issue a trial calendar and set dates for the Answer, discovery period and other relevant events. Each party has an opportunity to gather evidence and information, file briefs and assert arguments in support of its position, if the case gets that far. Unlike most trials, however, the TTAB process is entirely virtual, with everything decided on paper rather than in-person hearings and oral arguments.
Trademark opposition proceedings can take years to reach a final decision before the TTAB. More often than not, the parties reach a settlement during the course of the opposition and then agree to dismiss the proceeding. In any case, it can be a long and potentially costly endeavor for both parties. Large companies often use trademark oppositions to stop smaller trademark applicants who generally cannot bear the costs of protracted litigation and end up defaulting once served with the Notice of Opposition. In these circumstances, it can be a very quick and effective tool.
If you receive a Notice of Opposition, or would like to file one against a potentially infringing trademark applicant, you should consider the services of an experienced trademark attorney to assist you with the process. Contact us at (800) 769-7790 or via email for a complimentary consultation with one of our trademark attorneys.