How to Oppose a Trademark Application
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Oppositions to federal trademark applications are filed when one party believes they will be damaged by the registration of another party’s mark. If granted, an opposition halts the mark’s registration.
Below, we break down everything you need to know about opposing a trademark application, from the grounds you need to oppose to what happens after you file.
This article will cover:
What Is Trademark Opposition?
A trademark notice of opposition requests the halting of another party’s United States Patent and Trademark Office (USPTO) registration. Opposition proceedings follow a formal process handled by the Trademark Trial and Appeal Board (TTAB).
Oppositions function similarly to regular lawsuits, involving evidence, arguments, and judges. And, just like regular court, opposition proceedings take time: the process can easily take upwards of two years to complete.
Who Can Oppose a Trademark Application?
Before opposing a trademark application, it’s important to ensure two requirements are met: standing and grounds.
- Standing asks whether you have a relevant interest in the matter and will be harmed by the trademark’s registration.
- Grounds refers to the reason the trademark’s registration should be stopped.
Understanding these concepts is essential to filing a successful notice of opposition or to countering an opposition you receive.
Do I have trademark opposition standing?
Standing in a trademark opposition matter can be relatively easy to establish: the opposer must be able to prove they will incur damage if the mark is registered. What constitutes damage is not defined, leaving its interpretation loose.
While most oppositions are brought by competitors, consumers can have standing to oppose trademarks, too.
What are grounds for trademark opposition?
There are many possible grounds to claim in a trademark opposition. These largely align with reasons the USPTO might find to issue office actions in response to an application. But the USPTO can’t—and doesn’t—catch everything.
Here are some of the most common opposition grounds:
- Likelihood of confusion
Likelihood of confusion exists when similar marks represent similar goods/services, such that consumer confusion is likely. If the USPTO publishes a mark that leads to a likelihood of confusion with another mark, this can be grounds to oppose.
Dilution happens to famous marks and famous marks alone. If the USPTO publishes a mark that is similar to a famous mark—even if the goods/services they promote are totally different—this may be dilution, and can be grounds for opposition.
- Lack of use
Trademarks must be used in commerce to be registered. If an applicant has falsely claimed use, this can be grounds for opposition.
- Merely descriptive
Descriptive marks are those that closely describe an element of the goods/services being sold. They can only be registered if they’ve acquired additional meaning through years of use, or if they’re put on the USPTO’s secondary Supplemental Register. If an opposer believes a descriptive mark hasn’t acquired secondary meaning, this can be grounds to oppose.
- Primarily a surname
Marks consisting primarily of a last name are not able to be registered. (Like descriptive marks, a surname might qualify for registration if it’s become distinctive in the market.) If such a mark is published, it can be opposed on these grounds.
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Trademark Opposition Period
The trademark opposition period lasts 30 days, beginning once a mark is published in the USPTO’s Official Gazette.
Note that published marks have been vetted by the USPTO and received preliminary approval. Since the USPTO didn’t find anything preventing the mark’s registration, it’s up to you to prove the potential for harm.
Can I request trademark opposition extensions?
Yes. You can request an initial extension of 30 or 90 days. Including the publication period and all possible extensions, the maximum time to file an opposition is 180 days.
- 30-Day Extension
Granted upon request. No fee required. An additional 60 days may be requested during this time period, accompanied by a $200 fee. This extension will be granted if “good cause” is shown, such as needing extra time to talk to a lawyer or negotiate with the applicant.
- 90-Day Extension
Granted if good cause is shown. Requires a $200 fee.
- Final 60-Day Extension
This final extension can be requested after 90 days have been granted. It brings stricter requirements, such as written consent from the applicant or the existence of “extraordinary circumstances.” A $400 fee is required.
What if I miss the opposition period?
If you miss a trademark’s opposition period and fail to file an extension, the mark will keep moving toward registration. If you still want to take action against the mark, you can file a petition for cancellation after the mark is registered.
Trademark Opposition Process
The trademark opposition process has many steps and can take years (yes, years) to complete. Remember, the TTAB moves through many of the same motions as regular civil litigation.
Different from civil court, however, TTAB proceedings are always handled virtually. The only in-person portion occurs at the very end of the process, if an oral hearing is requested.
Here’s a summary of what to expect throughout a trademark opposition proceeding:
The opposition process is initiated once a notice of opposition is filed with the TTAB. Filings are submitted through the Electronic System for Trademark Trial and Appeals (ESTTA).
Once an opposition is filed, the TTAB will schedule the upcoming actions. The first thing on the calendar will be the applicant’s response to the opposition, typically 40 days out.
The discovery period can last up to 180 days, usually beginning right after the applicant files their opposition response. Included in the discovery period are expert and witness testimonies.
Both parties will have time to present their evidence and rebut the other’s. This occurs through alternating periods of 30 days for testimony and 15 days for rebuttal.
Briefs are an opportunity for each side to discuss the facts of the case, present arguments, and counter the arguments of the other side. The opposer is required to submit a brief; the applicant can, but does not have to. If the applicant does submit a brief, the opposer will have an opportunity for a final rebuttal.
Either party can request an oral hearing for an extra $500 in fees. Most parties skip this optional step.
Following the case briefs or oral hearing, the TTAB panel—which includes a minimum of three judges—will issue a final decision. Copies of the decision will be provided to every party and posted publicly online.
How long does a trademark opposition take?
A standard trademark opposition proceeding can take 2 years or more to complete. This includes the time it takes for the panel to issue its final decision on the case. Note that many opposition proceedings end sooner because the parties reach an agreement outside of the TTAB. However, the process can also reach far beyond the 2-year mark.
In Anheuser-Busch, LLC v. Innvopak Systems Pty Ltd., for example, it took 5 years from the time of opposition filing for a decision to be issued by the TTAB. The case went through the entire opposition process (and then some), before it was decided that Innvopak Systems’ mark “Winebud” caused a likelihood of confusion with Anheuser-Busch’s trademark “Bud.”
Trademark Opposition FAQs
What happens when someone opposes your trademark?
When someone opposes your trademark, there are a couple different ways it could go. Because opposition proceedings are lengthy and costly, opposers may prefer to work with you or your lawyer directly to reach a solution. If you come to an agreement, you may be able to skip the demanding TTAB process.
If an agreement isn’t sought or reached, you will need to pay close attention to every requirement and deadline. Failing to comply can result in the abandonment of your trademark application.
How much does a trademark opposition cost?
The initial cost of a trademark opposition lies with the opposer, who pays $600 per trademark class to file a notice of opposition. If either party requests an oral hearing, they’ll pay $500 in fees for that.
But the majority of opposition costs come from legal fees. While you do not have to hire a lawyer to assist with an opposition (unless you reside outside of the U.S.), many do. Lawyer fees can easily tip into the thousands throughout an opposition case.
What is the ESTTA?
The ESTTA, or Electronic System for Trademark Trial and Appeals, is where all opposition-related documents are filed.
Do I need an attorney to help with a trademark opposition?
Whether you’re the applicant or the opposer, you are not required to have an attorney assist with a trademark opposition. (Note that those without a U.S. address are required to have an attorney.) However, oppositions follow many of the same rules as regular court. As in regular court, attorney-represented individuals tend to fair better than self-represented folks.