What is a Trademark Opposition?

A trademark opposition is a litigation proceeding before the Trademark Trial and Appeal Board (TTAB), in which a third party may object to the United States Patent and Trademark Office’s decision to register your trademark.

During the trademark application process the examining attorney will review your application to determine whether they believe it is entitled to and eligible for registration. If the examining attorney believes that your mark is entitled to and eligible for registration, they will approve the application for publication. Your trademark will then publish in the Trademark Official Gazette for an extendable period of 30 days so that any person who believes that he or she may be damaged by the registration of your trademark may oppose.

An opposition proceeding is commenced during the extendable publication period by the filing of a notice of opposition with the TTAB.

What Should I Do if My Trademark Application is Opposed?

From the date of filing of the notice of opposition, you as the defendant, have 40 days to file a formal answer with the TTAB. When filing an answer, it is important to review the notice of opposition carefully and make an honest assessment as to whether the opposer has valid claims. In submitting your answer, you must not only address the claims presented by the opposer you must also follow the procedural rules set forth by the TTAB.

What if I don’t file an Answer?

If you fail to file an answer before the deadline the TTAB will issue a notice of default giving you the opportunity to show why a default judgement should not be entered against you. A default judgement is a judgement in favor of the opposer on the sole basis that you failed to submit an answer by the deadline. If a default judgement is entered against you, your application will be abandoned.

 

Do I Need an Attorney to Represent me in a Trademark Opposition?

A non-U.S. resident must be represented by a U.S. attorney however there is no requirement that a US resident is represented by an attorney. Trademark opposition proceedings involve discovery and trial briefs and may also include motions and oral argument. Defending a trademark opposition on your own could result in mistakes that could lead to loss of rights. Therefore, if your trademark application has been opposed, engaging the help of an experienced trademark litigation attorney is a smart move. A trademark litigation attorney can help you make an honest assessment of the opposer’s claims and advise on options for resolving the dispute.

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