(This article has been updated for 2022).
How to answer a trademark opposition is an important first step in defending your trademark rights. This guide brings everything you need to know about answering a trademark opposition.
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
How to Answer a US Trademark Opposition? Six Steps to Consider
Review the Opposer’s Complaint
The Notice of Opposition must contain:
(1) a short and plain statement of the reason why the opposer believes it would be damaged by the registration of the opposed mark (i.e., opposer’s standing to maintain the proceeding)
(2) the grounds for the opposition.
Standing generally requires that the Opposer have a real interest in the outcome of the proceeding and that the allegations of damages have a reasonable basis in fact.
An Opposer may raise any available statutory ground for the opposition that negates the defendant’s right to registration, including the likelihood of confusion, mere descriptiveness, or that the Applicant lacked a bona fide intention to use the mark at the time of filing.
Analyze the Opposer’s Claims
The party that files a notice of opposition is called the Opposer.
The party that filed the application that is being opposed is known as the Applicant.
If you are the Applicant, it is important to understand the basis for the Opposers’ claims.
a. Likelihood of confusion. For example, if the Opposer is claiming a likelihood of confusion with one of its existing trademark registrations, consider the following:
- is your trademark similar in sight, sound, or meaning to the Opposer’s trademark?
- are all of the goods and services in the Opposer’s registration being currently used in commerce? (one way to determine this is to conduct a search of the Opposer’s website and commercial activities);
- are the Opposer’s goods and services in the same class as those in your trademark application? If not, are the goods or services considered related to your own?
b. Mere descriptiveness. If the Opposer is claiming that your trademark is merely descriptive and should be refused registration, here are some factors to consider:
- does your trademark describe an ingredient, function, or feature of your goods? For example, the trademark BED AND BREAKFAST REGISTRY has been found to be merely descriptive of lodging reservation services.
- can your trademark be considered to have more than one meaning such that it is not merely descriptive of your applied for goods and services?
- does your trademark contain a logo design or other words that are not descriptive of your goods or services?
c. Lack of bona fide intent. If the Opposer is claiming that you did not have a bona fide intent to use your mark in commerce at the time of filing, verify that:
- you have evidence of business plans going back to your time of filing related to efforts to develop or market goods to be offered for sale under the mark;
- if you did not have a written business plan, that you have other evidence that demonstrated your objective intent to use your trademark in commerce as of the filing date (for example, emails to third-party website developers, manufacturers, or marketing agencies).
Review the U.S. Trademark Board Rules
Trademark opposition guidelines may be found in the Trademark Board Manual of Procedure. The Manual sets forth the various statutes, rules, and case precedent applicable to trademark oppositions. This includes all requirements and deadlines that must be adhered to in an inter partes proceedings before the Board. Practitioners should refer to it often, as it provides a solid foundation to ensuring that the case stays on track.
Draft the Answer
The requirements for a properly drafted Answer may be found in TBMP Section 311. While there is no standard format for an Answer, it is generally best to answer each numbered paragraph of the complaint by providing a short statement either admitting or denying the alleged facts. If you cannot do so, then state that you have insufficient facts to either admit or deny the claims. The Answer is not the place to respond to the merits of the Notice of Opposition. In conjunction with the Answer, a list of possible affirmative defenses and potential counterclaims should also be considered.
Consider affirmative defenses
An answer to a trademark opposition may include affirmative defenses.Examples of affirmative defenses are Opposer’s unclean hands or fraud in bringing the opposition. Such defenses include that the Applicant should be entitled to registration subject to certain restrictions to its identification of goods or services.
Consider any possible counterclaims
A counterclaim is where the Defendant/Applicant seeks to attack the pleaded registrations of the Opposer. The most common grounds are a petition to cancel one or more of the Opposer’s pleaded registrations based on abandonment. This can include abandonment of use of some of the goods contained in the Opposer’s registration, or all of the goods. To establish a prima facie case of abandonment, the complaining party must allege at least three years of consecutive non-use of the mark with an intention not to resume use.
As a defendant in a trademark opposition proceeding, it is important to have a well-crafted answer, affirmative defenses, and counterclaims, where appropriate.
Depending on the facts of the case and relative strengths of the parties’ positions, doing so could provide needed leverage at the discovery conference and later settlement discussions.
If you need advice on how to answer a U.S. trademark opposition, don’t hesitate to contact us now and we’ll get back to you soon!