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.

Understanding the TTAB Timeline

The TTAB opposition process follows a structured schedule governed by 37 C.F.R. Part 2. After the 40-day answer period, the parties enter a discovery phase—typically 150 days—during which each side can serve interrogatories, requests for production of documents, and take depositions. Discovery is followed by testimony periods and then final briefs. The entire proceeding from filing to final decision commonly takes one to three years, though parties may stipulate to extensions with TTAB approval.

Missing a deadline is not a minor procedural hiccup—it can result in default judgment against the applicant. Under 37 C.F.R. § 2.106, if an applicant fails to file a timely answer, the opposition may be sustained and the application refused. Applicants who discover they have missed a deadline should immediately file a motion to reopen with a showing of good cause.

Evidence That Matters at the TTAB

Evidence gathered during discovery is not automatically part of the record; each party must introduce it during its testimony period using notices of reliance or testimonial depositions. Common types of evidence introduced include:

• Specimens of use showing how the mark appears in commerce
• Sales figures and advertising expenditures demonstrating mark strength
• Survey evidence on consumer confusion, which is analyzed under the Du Pont factors from In re E.I. Du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973)
• Third-party registrations to show a mark is weak or merely descriptive
• Internet printouts, publications, and sworn declarations

Settlement and Consent Agreements

Not every opposition ends with a TTAB decision. The majority settle before a final ruling. Settlement options include a consent agreement—where both parties agree their marks can coexist—a coexistence agreement limiting the applicant’s geographic use or trade channels, or outright abandonment of the opposed application. Consent agreements are evaluated based on their specificity; vague agreements that do not limit overlap between the parties are routinely rejected by the USPTO.

If you are on the receiving end of an opposition, carefully evaluating whether settlement is worth pursuing is critical. A negotiated outcome may preserve your ability to register a modified version of the mark while avoiding the expense and uncertainty of full TTAB litigation.

Assessing the Opposing Party’s Standing

An opposer must have standing—a real interest in the proceeding and a reasonable belief of damage—to bring an opposition. Under Empresa Cubana del Tabaco v. General Cigar Co., 753 F.3d 1270 (Fed. Cir. 2014), standing is a threshold requirement that cannot be waived. The opposer carries the burden of proof on the grounds alleged, typically by a preponderance of the evidence. If the opposer fails to introduce sufficient evidence, the applicant can prevail without putting on any defense at all.

Understanding whether the opposing party has a legitimate basis—or whether they are using the proceeding as a harassment tactic—is one of the first assessments a trademark attorney should make. In cases where the opposition appears to lack merit, early motion practice challenging standing or moving for summary judgment can resolve the proceeding without full discovery.

Contact a Trademark Opposition Attorney

If you have received a notice of trademark opposition, do not wait. The 40-day answer deadline is firm. Contact the trademark opposition attorneys at Revision Legal at 855-473-8474 or complete the contact form on this page. We represent applicants at every stage of the TTAB process, from filing the answer through final briefing and beyond.

Responding Without an Attorney: The Risks

Some trademark applicants attempt to respond to a notice of opposition without legal counsel, particularly when the opposed application is for a small business or personal brand. While this is technically permissible, it carries significant risks. The TTAB’s procedural rules are intricate, and self-represented applicants who miss deadlines or fail to properly serve documents have lost opposition proceedings on procedural grounds alone—regardless of the underlying merits of their mark. The Federal Rules of Evidence apply to testimony and exhibits introduced at the TTAB, and procedural errors in introducing evidence can result in that evidence being excluded entirely.

Moreover, the cost of losing an opposition—having your trademark application refused—can be far greater than the cost of retaining counsel from the outset. If the mark is central to your brand identity, the investment in legal representation is almost always justified. At Revision Legal, we offer consultations to help applicants quickly assess whether and how to fight an opposition. Call 855-473-8474 today.