We often receive inquiries from domestic and international companies on how to oppose a U.S. trademark application that is filed with the United States Patent and Trademark Office. There are several components to this question that require a brief explanation.
What is an Opposition? When a party files a trademark application in the United States, the application is reviewed by an Examining Attorney in the U.S. Patent and Trademark Office for procedural and substantive requirements necessary to register a trademark. As part of the review, the Examining attorney will search the records of the U.S. Patent and Trademark Office to determine if there are any confusingly similar preexisting registrations that may prevent the application from proceeding to registration. Assuming that the application is approved for registration, the trademark is then published in the Official Gazette giving any third-party the opportunity to oppose the trademark application.
What are the Grounds for an Opposition? In the United States, a party can base an opposition to a trademark application on many grounds, including likelihood of confusion with a preexisting trademark registration, mere descriptiveness of the trademark application, genericness, or in rare circumstances, bad-faith or fraud.
What is the Process of a Trademark Opposition? Trademark oppositions are inter-partes proceedings that are brought before the United States Trademark Trial and Appeal Board (TTAB), which is the administrative tribunal of the U.S. Patent and Trademark Office. Trademark Oppositions are a form of civil litigation in which the party bringing the trademark opposition is the opposer/plaintiff, and the party that has filed the trademark application is the applicant/defendant. The opposition may consist of the following legal phases of litigation:
- Notice of Opposition/Answer: A trademark opposition proceeding is instituted by the Opposer filing a Notice of Opposition. The Applicant then has 40 days to answer, move, or otherwise plead to the allegations raised in the opposition complaint.
- Discovery: The TTAB issues a discovery and trial schedule, setting forth relevant dates and deadlines for the proceeding. Included are the deadlines for each party to take discovery, which may include interrogatories, requests for production of documents, requests for admissions, and depositions.
- Trial: The trial phase of the Opposition will include the filing of a Notice of Reliance (which sets forth all documentary and/or testimonial evidence and affidavits that a party wishes to include in its case-in-chief), together with respective schedules for each party to submit its trial testimony and trial briefs.
How much does a Trademark Opposition cost? Each trademark opposition attorney and/or trademark law firm may set its own fees for representing a client in a case to oppose a trademark before the U.S. Trademark Trial and Appeal Board. Although most law firms bill hourly, there are a few, including our own, that offer flat-fees for certain phases of the litigation in combination with hourly fees, which gives the client the ability to effectively manage its legal budget and to encourage, where possible, an early resolution to the case in the form of a mutual trademark settlement agreement.
Additional commentary on filing a U.S. trademark opposition may be found in my earlier postings on this subject.