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Thousands of trademark applications are filed each year with the United States Patent and Trademark Office (“USPTO”). Typically, after filing a trademark with the USPTO, most applicants can expect that their trademark application will be reviewed within 3-4 months of filing by an assigned Trademark Examiner. If the assigned Trademark Examiner sees any issues with the trademark application and applied for trademark, he or she will be responsible for informing the client by either mailing a written document, (i.e. an Office Action), or alternatively may even reach out to the applicant by phone or email to enter an Examiner Amendment. If all of the issues regarding the application are resolved, trademark applications that are eligible for the Principal Register will be published for opposition. It is important to note that trademarks that are to be issued on the Supplemental Register will not be published for opposition.
What is an Opposition?
What is an opposition? An opposition is a formal procedure that is overseen by the Trademark Trial and Appeal Board (TTAB) where any third party who may be damaged or affected by the registration of a pending trademark application is able to oppose the registration of the pending trademark application. Opposition can only occur after a trademark application is first examined by the Examiner and any issues or rejections regarding the applied for trademark have been overcome.
In terms of general terminology, the party that is opposed to the registration of the trademark and starts the opposition process is called the “opposer” or “opponent”. The party that is responding to the opposition may be called the “respondent,” and is the party who more recently applied for a trademark that is awaiting the final process for official registration after having been approved by the Examiner for publication.
Publication of a Trademark in the Official Gazette
Once a trademark application is approved by an Examiner, it is then eligible to be published for opposition in Official Gazette. The Official Gazette is the official journal of the USPTO, and is published on a weekly basis (e.g. usually on Tuesdays). The Official Gazette includes bibliographic information and a representative drawing for each trademark published on that issue date. The most recent issues are currently available online for anyone to view.
Many trademark holders that have one or more federally registered trademarks will hire attorneys or other companies to monitor the weekly publication of the Official Gazette for Trademarks so that they can be notified of any pending trademark applications that incorporate words or designs in their trademarks that are similar to the registered trademarks belonging to these owners. In this way, the trademark owners can stay informed relatively early on of any potential infringing use of their trademark and then determine how to proceed. By publishing the mark information in the Official Gazette, the Trademark Office is intentionally giving relevant third parties the chance to come forward and oppose the mark from moving forward to registration. It is a basic, inherent duty of all trademark owners to monitor and police the use of their own trademarks as well as to monitor and police any infringement of their trademarks.
Formal Timeline and Process
There are set time periods for both filing and responding to an opposition. The opposer is initially supposed to file his or her opposition documents (oftentimes called a complaint) within 30 days of publication of the trademark in the Official Gazette. It is also possible for an interested opposer to seek an extension of time in which the party may need to show good cause or obtain consent from the trademark holder before officially starting the opposition process. Generally, the opposer will request at least a 30 day extension, but may seek an additional 60 to 90 days as well.
Oppositions are formal proceedings similar to trials. There are many rules and requirements in place. Because oppositions can be so complicated, it is highly recommended that if you are interested in filing an opposition against a pending trademark application or have received notice of an opposition filed against your trademark application that you do not try to represent yourself. Rather, it is much better to hire a licensed attorney to represent you.
This is because there may be many legal implications and consequences to any statements that you provide to either the opposing party or to the TTAB regarding your trademark application. Also, there are many deadlines in place the attorney will be able to monitor and will understand how to comply with.
In terms of filing a response to an opposition, once an opposition is filed and the opposer has paid the necessary filing fee (i.e.$400 per class based on current USPTO fees), the respondent has 40 days to file an answer or reply with the respondent’s overall response, defenses, and counterclaims.
What Happens if you Ignore a Notice of Opposition?
It is very important to note that if you do receive a Notice of Opposition, if you do not respond by the noted deadline or file an extension of time that is granted, then you are at risk of having a default judgment entered against your trademark application simply because an answer or reply to the Notice of Opposition was not provided in time. If that happens, an entered default judgment will prevent your application from registering and you will also be prevented from receiving a registration for the same mark in the future. You cannot reapply and receive a registration after a default judgment has been entered for the same trademark, which is a very serious consequence. Ignoring an opposition notice has serious implications, and for that reason, it is best to discuss all possible outcomes with your attorney.
Discovery and Settlement Discussions
In terms of the opposition process, once the opponent has filed the initial complaint and the respondent has provided his or her answer or reply, various outcomes may occur. Some oppositions may be resolved by the parties within a few months and others may take a few years depending on how far into the opposition process the parties may go. The TTAB will provide a formal schedule with set deadlines for each party to hold a required discovery conference, collecting evidence known as the discovery process, and to schedule the dates for entering final arguments to the TTAB. During the time provided, it is possible for either side to file for various motions for rulings on various issues with the TTAB. Also, the parties’ representative attorneys/agents may be contacting one another to discuss settlement options, including possible terms of any proposed settlement to end the opposition.
Part of the underwriting principle behind the opposition process is to give the parties and their representative attorney/agents the time and ability to discuss each other’s grievances and defenses, and to come to an agreement without the TTAB making a final decision on the matter. Through this process of negotiation and discussion, there have been many instances where the party who initially filed an opposition may agree to allow the applied for trademark to proceed to registration, but in a narrower final form than the original trademark application. For example, if the applicant agrees to only use the trademark in a certain way and deletes a particular set of goods or services or deletes one or more classes from the trademark application, the opponent may agree to resolve the opposition to allow the trademark application to proceed to registration. Thus, the respondent may have a federal registration but for a more narrowly applied trademark.
Otherwise, if the parties are not able to come to a negotiation, then the opponent and respondent proceed with obtaining evidence based on the rules and regulations described in the Trademark Trial and Appeal Board Manual of Procedure, including serving requests for interrogatories, conducting depositions, and obtaining expert disclosures. Once the evidence has been collected, all of it may be collected, presented, and summarized in written form in written documents that are submitted to the TTAB.
It is important to keep in mind that some opponents will be fiercely opposed to any use of similar trademarks. Such parties may be willing to go through all of the procedural steps of the opposition to receive a final judgment by the TTAB, as well as to file an appeal or to move the case to federal court while the opposition is pending.
The threat that trademark applicants face if dragged into court is that in addition to being prevented from using a trademark or being required to transfer a trademark to another party, they may also be required by the court to pay monetary damages for any infringing use and possibly attorney’s fees or other types of fees. In contrast, the TTAB does not get involved in deciding or awarding monetary damages to one party, but rather solely decides the final outcome and conditions for a trademark application to be registered without awarding monetary damages to any side.
Very famous marks usually belong to trademark holders with established businesses and deeper pockets who will be extremely vigilant about protecting any use of a confusingly similar trademark, or even a remotely similar trademark in order to monopolize a market or industry or to avoid dilution of their trademark. Such trademark holders may be particularly litigious and strict with respect to their demands.
Thus, it is important to be aware as a trademark holder that oppositions and cancellations are possible tools to challenge your trademark. As always, it is best to do one’s due diligence and to consult with a qualified attorney and his or her associated professionals who are able to provide insight into any proceedings, such as oppositions, that may affect the registerability of one’s mark.
Disclaimer: This website is not intended to offer legal advice or to be a substitute for a consultation on a case by case basis with an attorney. The information provided above is meant for informational purposes only and may be subject to change.
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