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A Trademark Opposition

 

A trademark opposition is a legal challenge to the right to register a particular trademark.  There are thousands of trademark oppositions filed every year, which certainly sounds like a lot, but is actually quite small relative to the number of trademark applications filed annually.

A trademark opposition is initiated by electronically filing a notice of opposition with the Trademark Trial and Appeal Board (TTAB) through the ESTTA system and paying the required fee.  The notice of opposition must be filed within 30 days of the date that the trademark application is published for opposition, unless a request for an extension of time to oppose is filed with the TTAB (which is usually automatically granted).  If you unfortunately miss the opposition window, then you’ll need to wait until the trademark actually registers and then file a trademark cancellation against the registration.

What Must a Notice of Opposition Include?

The opposer (the party filing the trademark opposition) must properly allege the following two elements in the notice of opposition to defeat a motion to dismiss that the applicant (the owner of the opposed application) may file to try to get the opposition thrown out: (1) entitlement to a statutory cause of action, and (2) the legal grounds for opposition.

Entitlement to a Statutory Cause of Action

The opposer must plead an entitlement to bring a statutory cause of action (i.e. to file the notice of opposition).  Essentially, this means alleging facts sufficient to show that the opposer would suffer some kind of harm or damage if the applicant’s trademark were permitted to register.  In other words, the opposer must show that it has a direct and personal stake in the outcome of the trademark opposition and isn’t just a troublemaker.  I encourage you to read Section 309.03(b) of the Trademark Trial and Appeal Board Manual of Procedure (TBMP) to learn more about this important requirement.

Legal Grounds for Opposition

A notice of opposition must also allege one or more grounds for opposing a trademark application.  Very frequently, the opposer alleges ownership of prior rights in a trademark that’s identical or confusingly similar to the applicant’s trademark.  But, registration of a trademark can also be opposed on a number of other grounds.  For instance, 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 Notice of Opposition is Filed?

Shortly 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 officially 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.

In the event 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 a Serious Matter

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, 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.

How Much Does a Trademark Opposition Cost as the Opposer?

If you’re the opposer (meaning the one who’s filing the opposition) and you decide to prepare/file the notice of opposition on your own, it’s possible you may only spend a few hundred dollars in government filing fees to successfully oppose a trademark application.  But this only occurs when the owner of the opposed application fails to file an answer within the time allowed.  If no answer is filed, a default judgment is granted and the trademark application goes abandoned.  Opposition complete.

What frequently happens is that the owner of the opposed trademark application files an answer to the notice of opposition and demonstrates its willingness to defend the opposition.  This results in you having to do a lot more work to attempt to prove your case, including preparing initial disclosures, drafting discovery requests, conducting depositions, reviewing responses to discovery requests, filing motions and legal memorandums, preparing pretrial disclosures, taking witness testimony, filing notices of reliance, authenticating and submitting documentary evidence, and writing a trial brief.  Although all of these things can theoretically be done by yourself for free or at minimal cost, the fact is that most people are going to need the assistance of a trademark attorney to do them properly.  In addition, if the opposition isn’t amicably resolved between the parties soon after the notice of opposition is filed, you better ask yourself what your time is worth because you’ll spend at least 2-3 years of your life pursuing the opposition (and that’s the best case scenario).

How Much Does a Trademark Opposition Cost as the Defendant?

If you’re the defendant (meaning you’re the owner of the opposed trademark application) and you choose not to hire an attorney, the cost of a trademark opposition could conceivably be zero dollars.  Why?  Because, as the defendant, you’re only required to do four things throughout the entire opposition, none of which have any out-of-pocket monetary costs associated with them:

  • File an answer

  • Participate in the discovery conference

  • Prepare and serve initial disclosures

  • Respond to discovery requests

Now, if you only do those four things, the chances of successfully defending the opposition are exceedingly low.  Most likely, you’ll lose the opposition and your trademark application will go abandoned because you’ll have presented no arguments or evidence to bolster your case and to rebut the opposer’s arguments and evidence.  The TTAB will only hear one side of the story, and that side won’t be yours.

So, if you’re serious about defending a trademark opposition, you’re going to have to do much more than those four things.  In fact, you’re going to have to do most of the same things I earlier mentioned that the opposer will have to do.  Again, many of these things can theoretically be accomplished on your own at low or no cost, but without help from an attorney, the chances of you doing them in a manner that strictly complies with the TTAB’s rules and regulations is practically nil.  And that’s not because I think you’re unintelligent or incompetent.  Not at all.  It’s merely because the rules are numerous, complicated, and nuanced.

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