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.

The Statutory Basis for Trademark Oppositions

Trademark opposition proceedings are governed by Section 13 of the Lanham Act, 15 U.S.C. § 1063. That section provides that any person who believes he would be damaged by the registration of a mark may file a notice of opposition in the USPTO within 30 days after publication of the mark in the Official Gazette. The opposition must be filed in writing and must state the grounds for opposition. The filing fee is currently $600 per class of goods or services for electronic filings through ESTTA (the TTAB’s electronic filing system).

An extension of time to oppose is available upon a showing of good cause. A single 30-day extension is available as of right; additional extensions require good cause. Extensions can be filed by any interested party and are routinely granted to allow parties time to evaluate the application and attempt to negotiate before committing to formal opposition proceedings.

Common Grounds for Opposition

The Lanham Act does not enumerate a closed list of grounds for opposition. Through judicial interpretation, any legal defect in an application may be raised. In practice, the most common grounds include:

• Likelihood of confusion under Section 2(d) — the applied-for mark so resembles a registered mark that consumers are likely to be confused about the source of goods or services;
• Mere descriptiveness under Section 2(e)(1) — the applied-for mark merely describes a feature, quality, or characteristic of the goods or services;
• Dilution under Section 43(c) — the applied-for mark would dilute the distinctive quality of a famous mark;
• No bona fide intent to use — the applicant lacked a genuine, good-faith intention to use the mark in commerce at the time of filing an intent-to-use application;
• Fraud on the USPTO — the applicant made a material misrepresentation in the application with intent to deceive the USPTO.

The Trademark Trial and Appeal Board Manual of Procedure (TBMP) § 309.03(c) provides a non-exhaustive list of grounds that may be raised in an opposition. Experienced trademark counsel can assess which grounds are most viable based on the specific facts of each case.

The Discovery Phase: What to Expect

After the applicant files its Answer to the Notice of Opposition, the TTAB issues a scheduling order setting out the key deadlines for the proceeding. Discovery in TTAB proceedings closely mirrors discovery in federal civil litigation. Each side may serve interrogatories (up to 75 per party, compared to 25 in federal court), requests for production of documents, and requests for admission. Depositions may also be taken, typically on written questions rather than oral examination, though oral depositions are permitted.

One significant aspect of TTAB discovery is that parties frequently dispute discovery responses through motions to compel. The TTAB’s interlocutory attorneys rule on discovery motions, and parties that fail to participate in discovery in good faith may face sanctions including adverse inference rulings or default judgment.

Trial and Briefing

Unlike federal court, there is no live trial in a TTAB opposition proceeding. Instead, parties submit their evidence during designated testimony periods. The opposer goes first, submitting direct testimony through affidavits, declarations, or depositions. The applicant then submits its testimony. The opposer may submit rebuttal testimony. Parties also use Notices of Reliance to introduce documentary evidence such as patents, printed publications, and official records.

After the testimony periods close, each side files a main brief and may file a reply brief. Either party may request an oral argument before a panel of three TTAB judges, though the Board decides the case on the written record regardless. After briefing, the Board typically issues its decision within four to eight months.

Strategic Considerations for Applicants and Opposers

If you receive a Notice of Opposition, the single most important step is to respond within the 40-day deadline for filing an Answer. Failure to answer results in default, and the TTAB will sustain the opposition—blocking your registration without any merits review. Beyond that initial deadline, applicants facing opposition should evaluate whether to contest the proceeding on the merits, seek an extension to negotiate, or explore settlement through a coexistence or concurrent use agreement.

For opposers, the decision to file must be made carefully. The costs of TTAB litigation are substantial, and the B&B Hardware v. Hargis Industries, 575 U.S. 138 (2015) Supreme Court decision means a TTAB likelihood-of-confusion finding can have preclusive effect in subsequent federal court infringement litigation. That cuts both ways: a win at the TTAB may foreclose re-litigation; a loss may do the same.

Revision Legal’s trademark attorneys handle opposition proceedings for both applicants and opposers. Whether you need to defend your application or protect your brand from a confusingly similar mark, contact us through the forms on this page or call 855-473-8474.

Extensions of Time and the Monitoring Period

Before a formal opposition is filed, any interested party may request an extension of time to oppose. The first 30-day extension is available as of right upon filing and payment of the required fee. Subsequent extensions require good cause—typically, a sworn statement that the party is engaged in settlement negotiations with the applicant, conducting a trademark investigation, or evaluating whether grounds for opposition exist. Multiple extensions may be granted; the total extension period can reach up to 120 days beyond the initial 30-day window, for a maximum of 150 days from publication date.

Applicants should monitor the Trademark Official Gazette publication of their marks carefully and track the opposition window. TTABVUE, the TTAB’s publicly accessible docketing system, shows any extension requests that have been filed. If a competitor has requested an extension but has not yet filed a Notice of Opposition, the applicant can use that window to reach out and explore whether a settlement—through a concurrent use agreement or other arrangement—might resolve the matter before formal proceedings begin. Early settlement typically costs a fraction of full TTAB litigation and provides both parties with more control over the outcome.