Trademark oppositions are a type of administrative proceeding at the U.S. Patent & Trademark Office. Specifically, these are administrative legal proceedings in front of the Trademark Trial & Appeal Board (TTAB). Once you submit your trademark application to the U.S. Patent & Trademark Office (USPTO), it will be several months before your application is reviewed. Once your application is reviewed, you may receive an “office action” if the Examining Attorney assigned to your application sees issues with it. If you do not receive an office action, or if you file a response that overcomes the issues raised by one, your application will receive initial approval. Next, it will then be published for opposition by third parties.
Trademark Publication
Once a trademark application receives initial approval, the next step is called “publication.” Keep in mind that applications on the Supplemental Register are not published. However, most applications will be published for 30 days. Publication is just as it sounds: your trademark appears on a list with other trademarks. During this publication period, another party can file a trademark opposition against your application. Alternatively, they can ask for an extension of time to allow them to file an opposition later. If another party files a Notice of Opposition against your application, then a trademark opposition proceeding will be instituted with the TTAB.
Trademark Opposition Proceedings
Think of the trademark opposition as a mini-lawsuit. Instead of a traditional court, the trademark opposition goes through the TTAB. This process is mostly done virtually. Instead of physically going into a courtroom and conducting a trial, documents are submitted through the USPTO website. These documents may consist of witness testimony, business records, or other evidence gathered from the Internet. Eventually, the TTAB will issue an opinion, similar to those of other judges.
While there can be a lot of money at stake in a traditional lawsuit, that is not the case in trademark oppositions. In trademark oppositions, there are no awards of monetary damages or attorneys’ fees whatsoever. Instead, the only thing at stake in these proceedings is whether the Trademark Office will allow the trademark application to become a registration. Otherwise, the opposition moves forward like a lawsuit in many respects.
After a trademark opposition is filed, the TTAB will assign a proceeding number to it. They will also notify the parties of the schedule that the proceeding will follow. While the schedule contains dates and deadlines, the parties are able to amend these by mutual agreement. The TTAB must approve of such changes, though. Once the schedule is issued, the applicant has 40 days to file a response to the Notice of Opposition.
Filing or Answering a Notice of Opposition
If you have a trademark application and receive notice that it has been opposed, it is important to act quickly. If you do not file your response on time, a default judgment will be entered against you. This means that your application will go abandoned. As I said before, the trademark opposition is a lot like a lawsuit. Like other kinds of lawsuits, going through an opposition alone is not something that you really want to do. A trademark attorney can help guide you through the process. Perhaps more importantly, they can also advise you up front as to whether it will be worth the time and cost associated with defending your trademark application.
On the other hand, you might be thinking about filing a trademark opposition against another party. Is there a trademark application that you think is too similar to your trademark? Maybe you feel that the examining attorney made a mistake in approving the application. In that case, you can file an opposition to help protect your trademark rights. Allowing similar marks to be registered can reduce the strength of your trademark, which is something you want to avoid.
Have You Received Notice That You Are Facing a Trademark Opposition? Are You Interested In Opposing an Application?
If your application has been opposed, or if you need to file an opposition, one thing you typically do not have is a lot of time. You may not know what you can expect in terms of time or cost in filing or defending against an opposition. The trademark opposition process can be very difficult to go through without a background in trademark law. If you are interested in speaking to a professional trademark attorney about your opposition, please feel free to call me at (480) 360-3499, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
