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:

1.   Jurisdiction.   The Trademark Trial and Appeal Board (“TTAB”) is the adjudicative body of the U.S. Patent and Trademark Office that is responsible for, among other things, trademark opposition and trademark cancellation disputes.  The TTAB’s jurisdiction is limited to registration rights only; it cannot enjoin a party’s use of a trademark, nor can it award attorney’s fees.   Nonetheless, it has proven to be the preferred jurisdiction for trademark registration disputes in the United States.

2.  How to Commence.   A trademark opposition is commenced by filing a Notice of Opposition.  The Notice must set forth a brief explanation of the Opposer’s standing as well as the grounds for the notice of opposition.   The Applicant then has 40 days to file an answer to the Notice, or to otherwise seek an extension or file other pleadings, such as a motion to dismiss.

3.  Grounds.   There are several grounds on which a party may bring an opposition.  These include that the applicant’s mark is:

  • likely to cause confusion with the Opposer’s prior trademark registration or common law rights
  • merely descriptive of the goods or services for which the mark is being applied
  • generic of the goods or services
  • not entitled to registration due to fraud
  • primarily merely a surname
  • geographically misdescriptive
  • applicant lacked a bona-fide intention to use the mark (in the case applications based on intent to use)

A full list of the available grounds for filing a Notice of Opposition, including opposition to an International rights application based on Section 66a of the Trademark Act, may be found here.

4.  Procedure.   U.S. trademark opposition proceedings before the TTAB are governed by relevant U.S. statutes; the Code of Federal Regulations (“CFR”); the Federal Rules of Civil Procedure (“FRCP”); and Federal Rules of Evidence (“FRE”).    A complete explanation of TTAB rules and processes may be found in the Trademark Board Manual of Procedure (“TBMP”).

5.  Process.   A trademark opposition is a civil litigation heard before the TTAB.  Like other civil matters, trademark oppositions follow three, distinct phases:  pleadings, discovery, and trial.   The discovery phase is often the longest and well as most costly.  Discovery may include written interrogatories, requests for production of documents, admissions, depositions, and various motion practice.

6.  Settlement Alternatives.  Prior to filing a U.S. trademark opposition, it is advisable to assess the full merits of your company’s potential case and what steps can be taken to achieve your brand protection goals without the need for a full trial on the merits.  Settlement discussions with the applicant are encouraged and often undertaken with varying degrees of success.  This can can occur either before filing the notice of opposition, or at any time during the trademark opposition proceeding.

Note:  The author represents global corporations in U.S. trademark oppositions and is a member of the INTA Panel of Trademark Mediators.