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.

Each year, thousands of companies seek to register their trademarks with the United States Patent and Trademark Office.  But there is an interesting fact that nationally-advertised trademark registration services do not publish: over 33% of trademark applications get refused by the U.S. Trademark Office.

That’s right: obtaining a trademark registration is more complicated than LegalZoom would like you to believe.

Even after the U.S. Patent and Trademark Office has preliminarily approved a trademark application, any company or individual who believes that it may be injured by the registration has the right to object to the trademark application. This is done by preparing and filing a Notice of Opposition with the U.S. Trademark Trial and Appeal Board.Continue Reading Receive a Notice Of Opposition? You’re not Alone.