A trademark opposition is a legal challenge to the right to register a particular trademark. A trademark opposition is instituted by filing a notice of opposition with the Trademark Trial and Appeal Board and paying the required fee. The notice of opposition must be filed within 30 days of the date that the trademark application is published for opposition unless a request for an extension of time to oppose is filed with the Board (which is usually instantaneously granted). There are generally between 75 and 100 trademark oppositions filed every week. Although that certainly sounds like a lot, it is only a small fraction of the number of trademark applications that are filed every year.
A trademark opposition must allege one or more grounds for challenging a particular trademark application. Most often, a trademark application is opposed by someone who owns prior rights in an identical or confusingly similar trademark. But, trademark applications can also be challenged on an number of other grounds. For instance, oppositions may be based on the opposer’s belief that the mark is merely descriptive, deceptively misdescriptive, generic, functional, or likely to dilute the distinctive quality of the opposer’s famous trademark. In addition to alleging a valid ground for opposition, the opposer needs to show that it has standing to oppose the application. In other words, the opposer must allege in the notice of opposition that it has a direct and personal stake in the outcome of the proceeding and that it could be harmed by the registration of the particular trademark.
Shortly after a notice of opposition is filed, the Board will institute the opposition proceeding, assign it a proceeding number, and notify both parties of the schedule the opposition will follow. This schedule informs the parties of many important dates and deadlines by which certain actions must be taken. However, the schedule can be quite easily amended through mutual agreement between the parties and approval by the Board.
Once the opposition schedule is issued, the owner of the application will have 40 days to either file an answer to the notice of opposition or a motion to dismiss the opposition. If no answer or motion is filed, a default judgment is entered against the owner of the application, the opposition is sustained in favor of the opposer, and the application goes abandoned. On the other hand, if an answer is filed, the opposition will simply go forward as set out in the schedule. In the event the owner of the application is eventually successful in defending the opposition, the application will be allowed to proceed through the registration process. Under no circumstances can the Board award any type of monetary damages, attorneys’ fees, or other financial compensation to either party.
Needless to say, pursuing or defending a trademark opposition can be extremely costly and time-consuming. It is not unusual for parties to spend tens of thousands of dollars and at least two years fighting an opposition all the way through trial. The good news is that the vast majority of oppositions are settled between the parties well before such time and money is spent.
Finally, because a trademark opposition is a serious and complex legal proceeding that requires specialized knowledge and skills to properly navigate, it is strongly recommended that a trademark attorney be retained for assistance. A trademark attorney can not only help with pursuing or defending an opposition, but can also enter into settlement negotiations with the other party in the hope of reaching an amicable resolution that is satisfactory to both parties.
