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 three considerations when preparing and filing an Answer to a Notice of Opposition:
Step #1. Consider the 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.
Step #2. Review the Complaint. The Notice of Opposition must contain (1) a short and plain statement of the reason why opposer believes it would be damaged by the registration of the opposed mark (i.e., opposer’s standing to maintain the proceeding); and (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 opposition that negates the defendant’s right to registration, including likelihood of confusion, mere descriptiveness, or that the Applicant lacked a bona fide intention to use the mark at the time of fling.
Step #3. 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.
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.