Understanding the Trademark Opposition Process
Understanding the Trademark Opposition Process: What You Need to Know
When a trademark application is filed with the United States Patent and Trademark Office (USPTO), it doesn’t immediately grant the applicant exclusive rights. Instead, the process involves several steps, including an important phase known as the Trademark Opposition Period. This critical window provides an opportunity for third parties to challenge a trademark application before it becomes registered.
Below, we break down the trademark opposition process, who can oppose a trademark, and what the timeline typically looks like.
What Happens After a Trademark Is Filed?
Once a trademark application is submitted, a USPTO examining attorney reviews it for compliance with all applicable rules and laws. If the application passes this initial review, it is published in the Official Gazette, which is released every two weeks.
However, publication does not mean approval—it simply opens the door for public scrutiny. From the publication date, a 30-day opposition period begins. During this time, anyone with a legitimate interest in the trademark's outcome can file a Notice of Opposition to block the application.
Grounds for Filing a Trademark Opposition
Opposing a trademark is not as simple as disliking it. The USPTO requires specific legal grounds to justify an opposition. Here are some of the most common reasons:
Likelihood of Confusion: The proposed trademark is too similar to an existing mark, potentially confusing consumers.
Dilution: A famous mark could be weakened or diluted if the new application is granted.
Surname: The applicant is attempting to register a surname, which is generally not registrable.
Generic or Descriptive: The proposed mark merely describes a feature characteristic, ingredient, purpose, function or use for the product or service, or is too generic to warrant protection.
False Suggestion of Connection: The trademark falsely implies a connection with a person, institution, or organization.
Who Can Oppose a Trademark Application?
Not just anyone can file a trademark opposition. The USPTO only accepts Notices of Opposition from parties with a “real interest” in the matter. This usually means that the applicant’s trademark could directly harm the opposer—such as causing confusion with an existing trademark or undercutting a competitor’s brand.
The 30-Day Opposition Period
Timing is everything in trademark opposition. The 30-day window after publication is the only guaranteed time you have to file an opposition.
If you need more time to decide or prepare, you can request an extension. This request must be submitted before the 30-day window closes. If granted, an extension gives you additional time (up to 90 days total) to prepare and file your Notice of Opposition.
Can You Stop a Trademark Before It’s Published?
Yes—you can try to stop a trademark before it reaches publication by filing a Letter of Protest. This is submitted to the examining attorney during the application review stage. If the protest raises valid concerns, the examiner may issue an office action and potentially deny the application outright.
However, once filed, you cannot follow up on a Letter of Protest or expect a response. You’ll need to monitor the trademark's status and be ready to act during the opposition period if it proceeds to publication.
Trademark Opposition Timeline: Step-by-Step
The opposition process is handled by the Trademark Trial and Appeal Board (TTAB), an administrative body within the USPTO. While no one sets foot in a courtroom, the process shares similarities with courtroom litigation, including formal procedures and deadlines.
Prior to filing a trademark opposition, assess whether you will be likely to succeed. Thereafter, this is how the timeline typically plays out:
1. Notice of Opposition
Filed within 30 days of publication. This initiates the opposition proceeding.
2. Answer from Applicant
The applicant has 40 days to respond. Failure to answer usually results in abandonment of the application.
3. Discovery Phase
Both parties exchange evidence and conduct depositions. This phase includes:
Interrogatories (questions)
Requests for Admission
Document Requests (exchange of documents)
Expert Reports
4. Testimony Periods
This is when both parties submit their evidence:
Opposer's Testimony: 30 days
Applicant's Testimony: 30 days
Opposer’s Rebuttal: 15 days
5. Trial Briefs
Legal arguments are submitted in writing:
Opposer files a Trial Brief
Applicant responds with their Trial Brief
Opposer may file a Rebuttal Brief
6. Oral Arguments (Optional)
Either party can request oral arguments to clarify or reinforce points made in their briefs.
7. TTAB Decision
After reviewing the case, the TTAB typically issues a decision within six months. The losing party has the right to appeal. Note that the decision is limited to the issue of registrability. There are no mandates against the use of the trademark, nor monetary damages or awards of attorneys fees.
Final Thoughts
The trademark opposition process is a powerful tool for brand owners looking to protect their intellectual property. Whether you're defending your existing trademark or seeking to challenge a potentially infringing application, it's essential to act quickly and follow the correct legal procedures.
If you're considering filing an opposition—or if your trademark has been opposed—it’s highly recommended to consult with a trademark attorney to ensure your rights are protected throughout the process.