Notice of Opposition:  Summary

A notice of opposition is a complaint filed in a trademark opposition proceeding seeking denial of another party's trademark registration.  Trademark oppositions are heard before the U.S. Trademark Trial and Appeal Board.   Below are some helpful tips for both trademark opposers and trademark applicants who may be in involved in a trademark opposition proceeding.

        1.  Trademark Opposers

Any party who believes that it will be injured by the registration of a trademark can file a notice of opposition at the appropriate time for doing so.  The relevant time frame to file the complaint is within 30 days of publication of an application of the Official Gazette.   Potential opposers can elect to obtain an automatic 30 day extension of time to file an opposition.  In the alternative, a potential opposer can seek a 90 day extension of time on motion and for good cause shown.

The complaint must, at a minimum, set forth the Opposer's statutory right to bring a cause of action as well as the grounds for opposition.

  2.  Trademark Applicants

If a trademark applicant receives an opposition notice, it should discuss the notice with an experienced trademark opposition attorney.  The attorney will review the complaint to ensure that it meets all statutory grounds, as well as assess any alleged facts or statements of law that the Opposer is asserting as part of the Opposition.  The applicant will have the right to negotiate a potential settlement which could take many forms.  There is a also a mandatory discovery conference where the parties' counsel discuss the respective positions of the parties, and determine whether an amicable settlement can be achieved.

Updated: June 2021

U.S. Trademark Opposition: FAQ

A trademark opposition is a contested proceeding before the U.S. Trademark Trial and Appeal Board.   Any third-party may oppose the trademark application of another party.  An opposition may be filed only when the subject application is published in the Official Gazette of the U.S. Patent and Trademark Office.  The time to file an opposition is within 30 days of publication.  Extensions of time to file an opposition may be granted for an additional 30 days upon request, and up to 90 days for good cause shown.


Continue Reading Trademark Opposition Checklist for Opposers

Over 5,000 U.S. trademark oppositions are filed against trademark applications every year.  Often, the opposer is a competitor of the applicant or a company that believes that it would be damaged if the U.S. trademark application were to proceed to registration.

Here are considerations to take into account when determining whether to file a U.S. trademark opposition:
Continue Reading How to Oppose a U.S. Trademark Application

(This article has been updated for 2021).

How to answer a trademark opposition is an important first step in defending your trademark rights.

What is a notice of opposition?  Trademark opposition proceedings are contested matters before the U.S. Trademark Trial and Appeal Board (TTAB).  The complaint, known as a Notice of Opposition, is filed by the Opposer, who may allege several grounds for refusal of a trademark application.   Once the Notice of Opposition has been served upon the Defendant, the TTAB will issue an Order setting forth the relevant dates for each successive phase of the proceeding.  This includes the time to file an Answer, the initial conference, initial disclosures, discovery, and trial dates.  The failure to comply with the case management dates could irreversibly jeopardize a party’s rights.

Here are six steps to consider when preparing and filing an Answer to a Notice of Opposition:


Continue Reading How to Answer a Trademark Opposition

In a decision with wide-ranging implications to trademark owners everywhere, the U.S. Supreme Court has just ruled that in certain cases, brand owners may be precluded from bringing claims or defenses based on trademark infringement in U.S. District Court if the issue of likelihood of confusion was previously adjudicated in a trademark opposition proceeding before