In discussing how a trademark opposition works, it is helpful to go over the basics of what a trademark opposition is, and what to expect as the case proceeds.
A trademark opposition is when one party elects to oppose the existing trademark application of another party due to one of several grounds, such as the pending trademark application is confusingly similar to the complaining party’s existing trademark registration. The complainant in a trademark opposition is called the Opposer. The trademark application owner whose trademark application is being opposed is called the Applicant.
Trademark Oppositions are filed and heard before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office. Like other cases in civil courts throughout the country, a trademark opposition has several procedural and substantive phases to the case, including:
- Complaint and Answer
- Discovery (including interrogatories, request for production of documents, request for admissions, and depositions)
- Trial Testimony and Submissions (including Notice or Reliance)
In addition to the above, a trademark opposition can involve several motions of law that either trademark opposition attorney may file on behalf of his/her client, such as a motion to dismiss, motion to compel, or motion for summary judgment. What is the longest phase of a trademark opposition case that has the potential to be the most expensive? In most instances, the discovery phase is what takes the most time and the costs the most in terms of attorney’s fees.
In subsequent postings, I will discuss how you can possibly save money in trademark opposition proceedings through effective dispute resolution techniques.