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Grounds for Trademark Opposition

By John DiGiacomo

opposition grounds

Opposition is a legal procedure that allows third parties, who may be worried about confusion with their own trademarks, to question the validity of pending trademarks. There are two main grounds for opposing a pending trademark: absolute and relative.

Absolute Grounds for Opposition

When an opposing party, a business that is questioning the pending trademark, brings opposition for absolute grounds, they have three main categories to choose from.

  • Descriptiveness

The opposing party may claim that the pending trademark is misdescriptive. This usually refers to the geographic location that the product claims to describe but wrongfully lays claim to a different region. For example, Champagne is specific to the Champagne region in France. Sparkling wines that are not from this region are not allowed to name their products “Champagne” because it would be geographically deceptive, and therefore misdescriptive.

  • Genericness

Pending trademarks are not allowed to lay claim to words that are generic in nature. Marks can either be generic from the start, or they can become generic over time if they have been diluted down to describe general genres of goods. Many now use the term “videotape”, but it was once a trademarked term reserved only for use by the inventor. When a term is used outside of the specific nature of the mark’s product, then the generic term is invalid for registering purposes.

  • Bad faith & Fraud

If the opposing party can prove that the pending application was filed under any bad faith or fraudulent circumstances, then it is able to undermine the authenticity of the entire trademark.

Relative Grounds

Under relative grounds for trademark opposition, the opposing party claims that it has prior rights to the mark—that it used the mark first. During relative ground claims, the party opposing the application must prove that the pending trademark is invalid based on its own use of a similar or same mark.

  • Priority & likelihood of confusion

The opposing party may bring a claim of priority when there is proof that the existing mark is being confused with the pending mark. This requires the opposing party to be able to prove that their mark was previously established and that there is similarity between its mark and the pending mark.

  • Bad Faith

Pending trademarks must be registered under good faith. If the opposing party can prove that a bad faith effort has been made by the pending mark’s owner in regards to relative material (i.e. use dates, style of the mark, and products the mark is used for), then the third party can bring trademark opposition on bad faith grounds. That is, if the applicant is aware that their pending mark is similar to, or likely to be confused with an existing mark, a bad faith opposition is an option.

  • Business name, domain name, trade name and use

Similar to priority, a third party that already uses a mark similar to that of the pending trademark may have first claim to the mark, if the mark has already used via a business name, domain name, or trade name.

  • Well-known or famous mark

Only the original user can trademark already established marks. This requires the challenging party to prove that it is, in fact, the original user of the mark.

Trademark Opposition Attorneys

Trademark opposition gives third parties the right to challenge a pending mark’s rights to USPTO protection. If you think there is a mark that is wrongfully protected, contact one of our Trademark Opposition Attorneys at 855-473-8474.


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