Each year, companies spend millions of dollars to protect their valuable brand names from competitors.  While a majority of such enforcement efforts take place online and in federal courts, one of the most effective tools for trademark enforcement resides within the confines of the U.S. Patent and Trademark Office: the trademark opposition.

Trademark Opposition Basics

A trademark opposition is a proceeding in which a party seeks to prevent another party from registering a trademark that is pending before the USPTO.  Every year more than 16,000 requests for an extension of time to file a trademark opposition are submitted to the Trademark Office and over 5,000 trademark opposition proceedings are commenced.  The procedures for trademark opposition cases may be found in the Trademark Board Manual of Procedure, a voluminous work that contains rules, regulations, and processes that must be strictly followed by all litigants and attorneys involved in a trademark opposition proceeding.

1.  The Notice of Opposition.  A trademark opposition proceeding is instituted by filing a complaint with the U.S. Trademark Trial and Appeal Board, the trademark adjudicative body of the United States Patent and Trademark Office.  The complaint, known as a Notice of Opposition, sets forth the grounds for the opposition, which a minimum, should include (a) the name of the opposer; (2) a description of the nature of its trademark rights; and (3) how it will be damaged should the application that is being opposed be granted.

2.   The Answer.  After the notice of opposition (i.e., complaint) is filed, the applicant has 40 days in which to answer, move, or otherwise plead to the allegations contained in the notice.  In addition to answering the allegations of the complaint, the applicant can also invoke affirmative defenses as to why the notice of opposition should be defeated.

3.  Mandatory Discovery Conference.  In an effort to narrow the issues and promote the possibility of early resolution of the dispute, the Trademark Trial and Appeal Board requires the parties to have a mandatory discovery conference prior to the commencement of discovery.  The conference, which may take place by phone, should include a brief discussion of the parties claims and defenses, as well as potential settlement proposals.  Should the parties believe that a settlement proposal is promising, they may jointly agree to seek a suspension of the case for a brief period (usually 60 days) to determine whether a final settlement can be achieved without the need to escalate the litigation and associated legal costs.

4.  Discovery.  The discovery phase of the case involves comprehensive fact finding in an effort to support the legal burdens of the respective parties. Forms of discovery may include interrogatories, requests for production of documents, and requests for admissions. Depositions of key witnesses and parties are another form of discovery that are routinely utilized by litigants.

5.   Trial Phase.  Unlike litigation in federal and state courts where trial testimony is done in the courtroom, trademark oppositions are taken on the papers and all filings are submitted through paper or electronic means.  The merits of the case are adjudicated by Trademark Administrative Judges of the Trademark Trial and Appeal Board, who are empowered to hear such cases, including the nature and quality of the evidence and legal arguments, as well as render a final written decision on the case.

Trademark oppositions are complex legal proceedings that often require the skills of trademark attorneys that are experienced in this form of specialized litigation before the United States Patent and Trademark Office.  If a Notice of Opposition has been filed against your company’s trademark application, it is always advisable to contact a trademark opposition attorney to discuss your options.