Trademark Oppositions

How Can You Oppose a Trademark Registration?

A notice of opposition must assert grounds for opposing a trademark application. Often, the opposer alleges ownership of prior rights in a trademark that’s identical or confusingly similar to the applicant’s trademark. Trademark oppositions may be based on the opposer’s belief that the applicant’s trademark is deceptive, merely descriptive, deceptively misdescriptive, generic, primarily geographically descriptive, functional, primarily a surname, or otherwise not entitled to registration on the Principal Register. Section 309.03(c)(1) of the TBMP provides a non-exhaustive list of available grounds for opposition.

What Happens After the Opposition is Filed?

After the opposer files the notice of opposition, the TTAB will commence the opposition proceeding by sending out the Notice of Institution to both parties (generally via email). The Notice of Institution identifies the opposition number, provides some general information about the trademark opposition process, and includes the schedule the trademark opposition will follow. This schedule informs the parties of the many important dates and deadlines by which certain actions must be taken. However, the schedule can be easily amended through mutual agreement between the parties and approval by the TTAB. In fact, this commonly occurs throughout the proceeding, especially if the parties are actively attempting to amicably resolve or settle the opposition.

What Does the Applicant Have to Do?

Once the opposition is instituted, the applicant will have 40 days in which to either (1) answer the trademark opposition, or (2) file a motion to dismiss if there are grounds for doing so. If the applicant files an answer, then the opposition will simply go forward as set out in the schedule (with the next step being the discovery conference). If instead the applicant files a motion to dismiss, the opposition is put on hold (suspended) until the TTAB makes a ruling on the motion. If the applicant fails to do either, then the TTAB will issue a Notice of Default. If the applicant doesn’t respond to the Notice of Default within 30 days, then a default judgment is entered against the applicant, the opposition is sustained in favor of the opposer, and the applicant’s trademark application goes abandoned.

If the applicant files an answer and is ultimately successful in defending the opposition (which could take 2-3 years or more), the applicant’s trademark will continue to move though the registration process. On the other hand, if the TTAB rules in favor of the opposer, the only thing that happens is that the trademark application goes abandoned. Under no circumstances can the TTAB award any type of monetary damages, attorneys’ fees, or other financial compensation to either party.

A Trademark Opposition is Serious

If your trademark application has been opposed, or if you’re thinking about filing a trademark opposition, the best thing you can do is seek the assistance of an experienced and knowledgeable trademark attorney. In fact, if you’re a “foreign-domiciled” individual or entity, such as in China, you’re actually required to hire a U.S.-licensed attorney to represent you in a trademark opposition (regardless of whether you’re the opposer or the applicant). A trademark attorney will carefully review the entire situation and perform any necessary research into the matter. Your trademark attorney will then be able to properly advise you as to what course of action would be in your best interest. As you can imagine, sometimes the significant aggravation and cost of a trademark opposition is just too high to justify.

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