What is a Trademark Opposition Proceeding?

A trademark opposition proceeding is an administrative proceeding, similar to a civil federal lawsuit, before the Trademark Trial and Appeal Board (TTAB) in which one party seeks to prevent another from registering a trademark.

To understand trademark opposition proceedings, you must first understand the trademark process as whole. You can read our summary of the process here. As explained in that summary, the last step before final registration is a 30-day opposition period. During this period, a third-party can file a Notice of Opposition with the TTAB.

Who Can File a Notice of Opposition?

“Any person who believes that he or she would be damaged by the registration of a mark on the Principal Register may oppose opposition with the Trademark Trial and Appeal Board, and paying the required fee within 30 days after the date of publication,” or within any granted extension. To learn more about the concept of standing, click here.

The person or business filing the Notice of Opposition is called the Opposer while the other party is generally referred to as the Applicant.

What is Contained in a Notice of Opposition?

The Notice of Opposition is similar to a Complaint in federal or state court. Specifically, it contains a caption of the parties involved followed by numbered paragraphs which state the factual background, the grounds for opposition, and the request for relief. The USPTO provides a sample Notice of Opposition here.

What is the Procedure in an Opposition Proceeding?

The procedures to litigation opposition and cancellation proceedings are substantially similar and are explained here.

What is the Outcome of an Opposition Proceeding?

If the opposer prevails, the applicant’s trademark applicant will be refused, resulting in the applicant being unable to obtain federal registration. If the applicant prevails, the applicant’s trademark will likely proceed to final registration.

There is always an opportunity for the parties to resolve their differences and settle the matter short of final disposition of the case. This is typically done through a “concurrent use” agreement that permits both parties to use their respective marks under a certain set of terms and conditions.

 

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