The Trademark Trial and Appeal Board (TTAB) is a division of the U.S. Patent and Trademark Office (USPTO) that hears disputes over whether a trademark should be, or continue to be, registered. If a party believes they will be harmed by the registration of a trademark by a third party, they may challenge the third party’s trademark application by commencing a trademark opposition proceeding. The TTAB will preside over the trademark opposition proceeding and will determine whether the trademark is entitled to register.

Whether a business is adopting a new trademark that has been opposed, or it is looking to protect its rights by opposing a third-party application, it is important to understand:

1. Who can file a trademark opposition
2. What are the grounds for filing
3. When it can be filed
4. How to file
5. Why someone should consider filing

Who Can Commence a Trademark Opposition Proceeding?

Any individual or business who believes they may be harmed by the registration of a trademark by a third party can commence a trademark opposition proceeding. In most cases, the Opposer is someone who is using a similar or identical mark in relation to related goods and services. If the newly filed mark is likely to be confused with the Opposer’s mark, this may harm the Opposer’s business and the goodwill attached to its trademark or otherwise negatively impact the Opposer’s mark.

What are the Grounds for Commencing a Trademark Opposition Proceeding?

To commence a trademark opposition proceeding, a Notice of Opposition must be prepared and filed, which provides details on the alleged facts and legal grounds under which the registration should not be granted.

There are several grounds under which an opposition proceeding may be filed. One of the most common grounds for opposition is likelihood of confusion. If the opposed trademark is likely to be confused with an Opposer’s existing trademark that is already in use, they may allege that there is a likelihood of confusion. If the TTAB agrees that two trademarks are so similar that consumers are likely to confuse them, they may refuse registration of the opposed trademark. Another ground for opposing a trademark is an allegation that the mark is merely descriptive of the goods and services offered in relation to the mark. An Opposer could be harmed if a merely descriptive mark registers and prevents the Opposer from being able to use the descriptive language to describe its own goods or services.

When Can a Trademark Opposition Be Filed?

Trademark opposition proceedings may be initiated within a specific 30-day period during an application’s pendency. Each application will undergo a 30-day publication period during which any party that believes they will be harmed by the mark’s registration may oppose it.

If a party needs more time to commence the opposition, they must submit a request for an extension of time during the initial 30-day publication period to preserve their rights. There are a limited number of extensions available to potential opposers.

How Do You File a TTAB Opposition?

The first step in commencing a trademark opposition proceeding is to prepare a Notice of Opposition outlining the grounds for the opposition. It is important that the Notice of Opposition meets all requirements before the TTAB will formally initiate the proceeding.

Once prepared, the Notice of Opposition must be submitted to the TTAB electronically, along with payment of the required fees. Once filed and accepted by the TTAB, the owner of the application that has been opposed will have 40 days to submit their Answer. If they do not submit a response, the TTAB may issue a default judgement in the Opposer’s favor. If they do submit a response, the Opposition proceeding will move forward with discovery and trial phases. The timeline for a proceeding can be upwards of 1-3 years.

Why File a TTAB Opposition?

There are several reasons why one may choose to file a TTAB opposition. 

Opposing a trademark application can help to protect valuable trademark rights and prevent potential confusion with an existing mark. 

Trademark owners have a duty to police their marks for potential infringement and take action against infringers to protect their trademark rights. 

While TTAB opposition proceedings can become costly, they are generally less costly than litigation in court. If an Opposer is successful in a proceeding before the TTAB, it may help to avoid more costly litigation in court in the future.

Finally, a TTAB opposition proceeding may be useful as leverage when enforcing trademark rights. A party that is facing an opposition proceeding may be more likely to cease use of an infringing mark and abandon their application when their chances of success are unlikely.

TTAB opposition Proceedings may be a helpful tool to protect and enforce trademark rights in the United States. If you are trying to prevent consumer confusion, protect a brand, and preserve your market position, TTAB opposition proceedings may provide an avenue for effective trademark enforcement.

Why You Should Consult With a Trademark Lawyer

Before commencing a proceeding, it is extremely important to understand the strengths and weaknesses of the case and whether there are sufficient grounds for opposing a mark. Consulting with an experienced New York City Trademark Lawyer can help provide the information needed to make an informed decision on whether to commence and how best to proceed with a trademark opposition proceeding.