What Is a Trademark Opposition and How Can My Business Avoid One?

A trademark opposition is a type of litigation proceeding at the Trademark Trial and Appeal Board (TTAB) where a third party can object to your application before it is granted a registration. Essentially, when someone files an opposition against your application, they are telling the United States Patent and Trademark Office (USPTO) that they would be harmed if your trademark could be registered.

What does it mean for a trademark to be published for opposition?

The trademark application process is long and has many steps. After a trademark application is filed at the USPTO and is ultimately accepted by the Examiner, it is “published for opposition.” This is what I call the “speak now or forever hold your peace” part of the process. The publication period is a 30-day period where any third party with a legitimate interest in the mark (what we lawyers call standing) can object to your application on any one of a number of substantive grounds (the same ones an Examiner could raise) that your trademark application, if granted a registration, would harm their rights.

The party opposing initiates a type of lawsuit at the TTAB by filing a complaint setting forth their legal causes of action as to why you should not be entitled to have your trademark mature to registration. This is a serious proceeding and one you should take very seriously. It is a full litigation proceeding that takes place entirely before the TTAB, and any trademark applicant would be wise to have the benefit of experienced trademark counsel with significant TTAB experience to navigate such an important proceeding.

It is also important to note, that with all litigation, these proceedings can be very expensive (think way over six figures just in legal fees). While 97% of these proceedings end in a settlement of some kind before final decision, understanding and discussing your strategy with your trademark counsel and what you hope to gain from the opposition is very important to do at the outset.

What should I do if my application has been opposed?

If your trademark application has been opposed or if you have received a cease and desist letter during your notice of publication period, do not panic, but know that this is a serious matter. If you are represented by trademark counsel, make sure you involve your trademark counsel immediately so that she can discuss a legal strategy with you. If you are not represented by counsel, now is a good time to consider hiring competent trademark counsel, especially to handle the trademark opposition.

The Trademark Rules of Practice are very intricate, and you could severely compromise your legal rights if try to go it alone without an attorney in your corner. Your first order of business should be to hire a trademark attorney and do not delay in doing so!

How long do trademark oppositions last?

Most trademark oppositions (more than 97%) are settled before a final decision but depending on your case and whether the parties are interested in settling, the trademark opposition may be able to be disposed of in 3-6 months, but only if both parties agree to a settlement. For trademark oppositions that go to final decision, those take on average 3+ years to litigate!

Make sure your expectations are realistic and inline with what you want and that you can afford the legal fees. For instance, if you “want to win” make sure that is (1) legally realistic under the circumstances and (2) you have the hefty budget to accompany that. Often trademark owners don’t have their expectations and pocket books aligned. This is why discussing your goals and strategies at the beginning of the process should be the very first thing you and your attorney do after she is engaged.

Am I required to hire an attorney?

No, but it is certainly a best practice to be represented by trademark counsel any time you appear before the USPTO. Remember, even when you file an application, that is a legal proceeding and if you are not familiar with all the rules and what you are doing, you could be affecting your legal rights in the future. Especially, where any litigation is concerned, you should consider having trademark counsel represent you at the TTAB.

If you choose to go it alone, keep in mind that the TTAB will not assist you if you are not aware of the rules or how to proceed. If you fail to respond timely or otherwise make a mistake, it could mean you receive a default judgment or lose the proceeding and ultimately your trademark, so the stakes are high. However, there are no money damages awarded at the TTAB, so that is one positive.

If there anything I can do to avoid an opposition all together?

Yes, working with a highly qualified and competent trademark attorney to properly search your trademark before you apply is your best defense against most refusals of registrations and oppositions. A full availability search including all prior common law rights is your best defense against any potential obstacles to your mark and will help your trademark counsel to advise you on how to avoid any such obstacles. Although such a search has an added cost, it is money well spent to avoid costly litigation and years of delay in securing a valuable registration for your business.