In today’s competitive marketplace, protecting your brand’s identity is paramount. When you discover that another party has applied for a trademark that may infringe upon your rights, understanding how to file an opposition to a trademark application is critical. At TrademarkFactory, we specialize in assisting businesses with the trademark opposition process, working closely with experienced trademark attorneys to safeguard your intellectual property effectively.
What Is a Trademark Opposition?
A trademark opposition is a formal legal challenge filed by a third party against a pending trademark application. This opposition is filed before the U.S. Trademark Trial and Appeal Board (TTAB), an administrative body within the U.S. Patent and Trademark Office (USPTO).
The USPTO publishes certain trademark applications in the Official Gazette, a weekly publication that provides public notice and allows interested parties to monitor newly applied-for marks. Once a trademark application is published for opposition, third parties have a 30-day window—which can sometimes be extended—for the opportunity to file opposition to a trademark they believe conflicts with their existing rights.
Why Should You File a Trademark Opposition?
Filing a trademark opposition is a powerful tool for brand owners to prevent the registration of a mark that could cause confusion or dilute their brand. Here are several key reasons why you might consider filing opposition:
- Likelihood of confusion: If the applicant’s mark is confusingly similar to your existing registered or unregistered mark, it could mislead consumers.
- Mere descriptiveness or genericness: The mark may simply describe the goods or services or may be generic, which should not qualify for exclusive rights.
- Lack of bona fide intent: The applicant may not have had a genuine intent to use the mark in commerce at the time of filing.
- Wrongful ownership: The applicant may not be the rightful owner of the mark, such as a distributor filing without authorization.
The trademark opposition process allows you to assert your rights and protect your brand from potential infringement or dilution before the mark registers.
When Should You File a Trademark Opposition?
You should consider filing an opposition to trademark application if:
- The applied-for trademark is likely to cause confusion with your previously used or registered mark.
- The trademark is merely descriptive or generic.
- The applicant lacks a bona fide intent to use the mark in commerce.
- The applicant is not the rightful owner of the trademark.
- You otherwise have legitimate grounds to block the registration based on the Trademark Act.
Conducting a thorough assessment with legal counsel before filing is essential to avoid unnecessary legal costs and risks. TrademarkFactory’s trademark attorneys can help evaluate your case to determine if an opposition is advisable.
How to File an Opposition to a Trademark Application: Step-by-Step
1. Verify Publication in the Official Gazette
A trademark application must be published for opposition in the USPTO’s Official Gazette. This publication serves as the official public notice to all interested parties that the mark is moving toward registration and can be contested.
2. Prepare the Notice of Opposition
To file opposition to trademark, you must draft a Notice of Opposition—a formal pleading that outlines:
- Your standing or legal right to oppose the mark (e.g., prior use or registration).
- The legal grounds for opposition (e.g., likelihood of confusion, descriptiveness).
- Factual allegations supporting your claims.
The pleading should be concise but include enough detail to show a good faith belief in the truth of your allegations. Numbered paragraphs and clear statements are recommended to comply with TTAB rules.
3. Pay the Required Government Fees
Filing a Notice of Opposition with the USPTO requires paying a government fee of $600 per class of goods or services involved in the trademark application. Many applications cover multiple classes; for example, a five-class application requires a $3,000 filing fee (5 classes × $600 each).
These fees are non-refundable, even if you prevail in the opposition proceeding. In addition, legal fees for attorney representation should be anticipated.
4. File the Notice of Opposition via ESTTA
The USPTO’s Electronic System for Trademark Trials and Appeals (ESTTA) is the official platform to electronically file your Notice of Opposition. You will need a MyUSPTO.gov account to access the TTAB Center and submit your opposition along with the fee and supporting documents.
5. Applicant’s Response
Once your Notice of Opposition is filed, the TTAB sets a trial calendar and the trademark applicant has 30 days to file an answer.
The Trademark Opposition Process: What to Expect After Filing
The trademark opposition process is formal and follows a procedural schedule established by the TTAB. After the applicant’s answer, both parties exchange information and evidence during a discovery period. This discovery includes obtaining documents about:
- Use and marketing of the trademarks.
- Consumer impressions.
- Evidence of likelihood of confusion or other relevant factors.
Sample Trademark Opposition Trial Calendar
The trial calendar can be modified if the parties mutually agree or upon permission from the Board.
Important Considerations
- If you are not a U.S. citizen or represent a business outside the U.S., you must hire a U.S. attorney to represent you in TTAB proceedings.
- The Notice of Opposition is a formal legal complaint and must be properly drafted to avoid dismissal.
- Failure to file within the 30-day opposition period (or any granted extension) means the trademark will proceed toward registration.
Why Choose TrademarkFactory for Your Trademark Opposition?
Navigating the trademark opposition process can be complicated and costly without expert guidance. TrademarkFactory partners with skilled trademark attorneys who have extensive experience in:
- Assessing opposition viability.
- Preparing and filing precise Notices of Opposition.
- Managing discovery and trial procedures.
- Advising on alternative dispute resolution options.
Our goal is to help you file trademark opposition effectively and protect your brand’s identity against conflicting trademarks.
Summary
Filing a trademark opposition is a critical step to safeguard your intellectual property rights when a conflicting mark is published for opposition. The opposition must be filed within 30 days of publication, accompanied by the required government fee of $600 per class, and must comply with strict procedural rules.
Understanding how to file an opposition to a trademark application and navigating the trademark opposition process requires legal expertise, especially considering the financial and strategic implications. Whether you are a brand owner or legal representative, working with TrademarkFactory’s trademark attorneys ensures your opposition is properly managed from start to finish.Contact us for a free consultation today!