It is important to consider your options prior to filing an Answer if your trademark application is opposed.

Trademark Opposition.   A trademark opposition is an inter-partes proceeding before the U.S. Trademark Trial and Appeal Board.  Any third-party may file a notice of opposition against a trademark on one or more several grounds.  These include that the applied for mark is:

  • likely to cause confusion with the Opposer’s preexisting registered mark or common law rights;
  • merely descriptive of the goods or services for which registration is sought;
  • primarily merely a surname;
  • geographically misdescriptive;
  • generic of the goods or services

In addition to the above grounds, the Opposer may claim that the Applicant:

  • lacked a bona fide intention to use the mark in commerce at the time it filed its trademark application;
  • committed fraud on the trademark office in the filing or maintenance of its trademark application

A trademark applicant usually has 40 days to answer a trademark opposition.   An Applicant can explore other options to settle the dispute prior to filing its Answer.  Some of those options are set forth below:

Narrow the identification of goods or services.   The jurisdiction of the U.S. Trademark Trial and Appeal Board is limited to issues of registration only.  In other words, the TTAB does not have the authority to order any applicant to cease using its trademark in commerce.  It can however, refuse the trademark registration.  In likelihood of confusion cases, Opposers often seek an agreement with the Applicant.  The Applicant can agree to delete certain goods from its identification of goods.   If the Applicant agrees to do so, it is possible that the Opposer will agree to withdraw the opposition.

Withdraw the Application.   If the Applicant agrees to withdraw the application,  there is nothing left to adjudicate before the TTAB.  This is due to the Board’s limited jurisdiction.  Note, however, that a judgment will issue in favor of the Opposer.   This means that the Applicant will not be able to seek to apply for that mark using the same or similar goods in the future.  If an Applicant is considering withdrawing its trademark application, it is preferable to seek a coexistence agreement.

Enter into a coexistence agreement.  A typical coexistence agreement will permit the Applicant to continuing using its mark in commerce subject to certain limitations.  These may include that the Applicant delete certain goods from its identification or stipulate not to apply for related goods under the same mark in the future.    Whether to agree to enter into a coexistence agreement with an Opposer should be considered on a case-by-case basis.  In general, it is not wise to enter into an Agreement if the terms include that the Opposer is able to continuously monitor your future marketplace uses.  Moreover, if the Agreement has any clause for breach of the Agreement, this is something where an Applicant should hesitate to sign.   The best coexistence agreements are those that are definitive, limited in time and scope, and do not leave open any possibility to breach the agreement in the future.

By considering the above-alternatives, an Applicant may still be able to achieve its business goals without having to get involved in a costly trademark opposition proceeding.  While every case is different and no outcome is certain, it is advisable to engage in discussions early in the process to avoid any unnecessary escalation in attorney’s fees and risks to your marketing plans.