Individuals often assume that their trademark is fully protected once their trademark application has passed an examiner’s inspection, but the process is more complex than that. Procedural forms called oppositions can be filed by third parties to challenge a pending trademark application. When a pending application receives notice of opposition, it roughly translates to someone challenging the applicant’s rights to the pending mark. There are two distinct grounds for others to challenge a mark, but there are also effective and relevant defenses for each type of opposition.If you have been notified of an opposition against your pending mark: breathe! This does not mean your mark has been invalidated or that it won’t get the protection you think it deserves. Instead, the opposition opens up a small trial before the Trademark Trial and Appeal Board (TTAB) between you and another party to discuss the validity of the pending mark. Like any other hearing, it allows for both sides to introduce evidence and discuss why a certain party should or shouldn’t win.

The First Step

When you are notified of opposition, the United States Patent and Trademark Office (USPTO) will also send you a timeline of required dates to meet. You have 40 days from the first notice to file a response. At this point, it’s a good idea for the pending mark’s owner to take time to respond with their best evidence as to why the pending mark should be allowed. This becomes a battle to bolster a mark in areas that the third party is challenging.

Scope of Challenging

The TTAB can only decide whether a mark can be granted protection; it is different than trademark infringement. Because of this, the TTAB does not look into the actual use of the mark by either party unless it is a factor for likelihood of confusion. This limits what information is truly relevant to the TTAB to determine the outcome of the opposition.

Opposing Party

When responding to the notice of opposition, understanding who is opposing the application is a very high priority. If an opposing party has legal representation from a trademark attorney and an invested interest in the outcome of the opposition, there is little chance that an applicant will be able to fight the opposition on anything but the merits: the owner of the pending mark must defend his or her mark based on the grounds for the opposition and come up with a response that bolsters their right to the mark.

Trademark Opposition Attorneys

The rules and procedures used by the TTAB during opposition are similar to that of a regular infringement suit utilizing the Federal Rules of Civil Procedure and any relative laws like the Lanham Act (15 U.S.C. § 1051). Because of this, it’s wise for owners to obtain legal counsel for this type of proceedings. If you have been notified of trademark opposition, contact one of our Trademark Opposition Attorneys at 855-473-8474.