When a U.S. trademark application is initially approved for registration on the Principal Register, after the USPTO determines that your trademark application complies with all applicable laws, the U.S. Patent & Trademark Office (USPTO) publishes the trademark for opposition.
Opposition is a procedure that allows any third parties who feel that they may be damaged by registration of your trademark to oppose the registration. Opposers must have a real interest in the outcome indicating that they will be directly damaged by registration of the trademark, and have a reasonable basis for that assertion.
Grounds for Filing a Trademark Opposition
Opposers initiate an opposition proceeding by filing a Notice of Opposition with the Trademark Trial and Appeal Board (TTAB) of the USPTO. The TTAB is made up of administrative judges with substantial trademark experience, and each opposition is heard by a panel of three of these judges.
The most frequent basis cited by Opposers in their Notice of Opposition is that the published trademark is too similar to a trademark held by the Opposer and will result in a likelihood of confusion among consumers. Other common grounds for oppositions include that the published trademark is:
- Generic or merely descriptive (“BANANA” for selling bananas)
- Deceptive or deceptively misdescriptive (“OCEANFRONT RESTAURANT” for a non-oceanfront restaurant)
- Geographically deceptive or geographically deceptively misdescriptive (e.g., “EDINBURGH KILTS” for a retail store selling clothes made in China)
- Directed to or contains a name, portrait or signature of a living individual without their consent
- Likely to cause dilution of a famous trademark (“GOOGLE” for hair care products)
- Primarily merely a surname (as long as it has not become recognized by the public as associated with a particular brand)
- Falsely suggesting a connection, sponsorship or origin (“MARGARITAVILLE” for restaurant services by Chi-Chi’s, Inc. with no connection to Jimmy Buffett)
Timeline and Process
Even though trademark oppositions are handled by the TTAB, the process is similar to trademark litigation in federal courts. Opposers have 30 days after publication of the trademark to initiate an opposition proceeding or to request an extension of time.
Extensions of 30 days are automatically granted, while extensions of 31 to 90 days require a showing of cause. Beyond 90 days, a further extension of 60 days may be obtained with the consent of the trademark Applicant.
The Applicant must file an Answer to the Notice of Opposition within 40 days. Failure to file an Answer by this deadline will result in the abandonment of Applicant’s trademark application.
Attorneys for each side are required to conduct a discovery conference to discuss plans for discovery.
A discovery period then commences during which each side can request information from the other side related to the case. This information is requested in the form of document requests and interrogatories. The discovery period is also when expert testimony and witness depositions occur.
An area of difference compared to litigation in federal courts is the testimony period, during which the Opposer and the Applicant alternate presenting evidence. The Opposer submits all their evidence within a period of 30 days, then the Applicant has 30 days to do the same. The Opposer then has 15 days to submit a rebuttal.
The parties then alternate in filing trial briefs. The Opposer files first, followed by the Applicant, and then the Opposer has the opportunity to file a rebuttal brief. Oral arguments are not required, but either the Opposer or the Applicant may request oral arguments if they want to supplement their written evidence.
After all evidence has been submitted and any oral arguments have been presented, the TTAB issues its decision; typically within six months. If the Opposer prevails, the trademark application is refused and it becomes abandoned.
If the Applicant prevails, the application will be allowed to register. The TTAB cannot provide injunctive relief or money damages, nor can it award attorneys’ fees or costs.
Costs
The fee charged by the TTAB to file a trademark opposition is $600 per class of goods and services covered by the contested trademark. Attorney fees depend on the complexity of the case and whether the case is pursued to the end but are typically between roughly $50,000 and $150,000.
Letters of Protest
If a third party becomes aware of a trademark application that they believe will cause them direct harm, but the trademark has not yet been published for opposition, it is possible to file a letter of protest in an attempt to prevent the trademark from getting to the publication stage.
Letters of protest are considered by the USPTO examining attorney and can lead to refusal of the application. However, once a letter of protest is filed, there is no communication between the examining attorney and submitter, and the submitter is not allowed to follow-up. The submitter is only able to monitor the progress of the trademark application via publicly available data from the USPTO website.
Metrolex IP Law Group is a full service Patent and Intellectual Property law firm with offices in Washington D.C. and Osaka, Japan. We focus on high-quality work product and rapid, efficient filing and prosecution across the world including the U.S., Japan, Europe and China.
