Before a new trademark application earns the right to be a registered trademark, it is subject to opposition from existing trademark owners. The United States Patent & Trademark Office (USPTO) publishes all approved trademark applications to the Trademark Official Gazette for opposition every two weeks. You can diligently monitor the Gazette, or you can subscribe to a monitoring service to see if an allowed application needs to be opposed due to similarity or potential for confusion with your registered mark(s).
The trademark opposition period starts thirty days from Gazette publication when anyone with a real interest in the proceeding can oppose the trademark application and attempt to stop the trademark from being registered.
When filing for trademark cancellation, you should consider the costs of filing, the right to oppose or object to your competitor’s use of your trademark, and steps to ensure you get the best results. You must file your response by the deadline or risk losing your trademark. Listed below are some important steps to follow.
Table of content
Grounds for Opposing a Mark
Aside from the more common likelihood-of-confusion oppositions, there are other reasons a party may bring an opposition, including:
- The mark can be used to identify your goods or services.
- The mark does not describe the goods or services it represents.
- The mark is “scandalous”.
- The mark is “disparaging”.
- The mark implies a false connection to you
- The mark is primarily a surname (last)
- The mark is functional for the goods or services it represents (i.e. Safety vests cannot be trademarked using the neon-yellow color.
- The applicant isn’t using the mark or has no bonafide intention to use it in commerce.
- The mark was abandoned.
- The mark can be either geographically descriptive or misdescriptive.
- The mark would weaken the “famous mark” of the opponent.
This is not a comprehensive list. However, the key point is that you, the Opposer, are affected by one or more of these grounds.
Who can Oppose a Trademark Application?
Any person with a legitimate or real interest in the trademark proceeding can oppose it. This means that an opposer must have a direct stake in the outcome. Furthermore, the belief must be rational and reflect a genuine interest in the issue. A party cannot file an opposition if it believes that registration would be unfair in general. It must prove that the opposition will be affected personally by it. The registration of a confusingly similar trademark is sufficient if the opposer claims it is the owner. However, you as the owner must show that your trademark is damaged if the Application is allowed to become a Registered Mark.
In the United States, costs of trademark opposition include attorney fees, expert witness fees, and USTP fees. You can find the current USPTO trademark fees in this fee schedule. Periodically, the USPTO announces new fees and revises its trademark registration fee schedule to ensure financial sustainability. The USPTO must set fees to meet ongoing operational expenses, including IT systems and infrastructure upgrades. In addition, the USPTO must maintain an operating reserve balance to avoid unplanned financial disruptions.
In addition to USPTO fees, there are attorney fees. Opposing a trademark in the United States can be expensive, as much as $500,000 in large cases when expert witnesses and lawyer fees are considered. That said, the cost can be quite low if the other side chooses not to respond. Thus, many factors can affect the cost of opposing a trademark, such as:
- Whether you are the defendant or the opponent
- Whether you hire an attorney.
- The complexity and number of issues being raised in opposition
- How much time and effort you are willing to invest in defending/pursuing the opposition
- The aggressiveness of the parties or their attorneys
- If the trademark opposition can quickly and amicably be settled between the parties
Some of the costs are due to procedures related to discovery and motions. The cost of trademark oppositions is also rising because oppositions often require expert evidence that can be costly to obtain.
The trademark opposition process that included multiple requirements for the initial stages of opposition. For example, the rules specify
- Discovery Conference setting the timing of the case
- Exchange of evidence.
- Exchange of expert opinions.
- Pretrial disclosures of the applicant and the opposer, as well as opposer rebuttals.
These additional requirements have greatly increased the initial expenses associated with opposition to a trademark. Electronic discovery is another requirement that can increase costs as parties must search electronic records in order to locate every instance where their trademark was used.
The Trial and Appeal Board often granted large extensions which delayed the completion of opposition cases. While these extensions were longer than usual, they also reduced total costs and made it more likely for the parties to reach a mutually beneficial agreement.
Costs To the Trademark Applicant
The owner of the opposed trademark application needs to respond by filing an answer to the notice and showing its willingness to defend it. The work includes preparing initial disclosures and reviewing discovery request responses, conducting depositions, and reviewing discovery requests. Pretrial disclosures include taking witness testimony, filing notices to rely on, authenticating and submitting documentation evidence, and writing a trial brief. While you can theoretically do all these things for free or at a minimal cost, most people will need to hire a trademark attorney to properly complete them. If the opposition is not resolved amicably between the parties within a reasonable time after the notice is filed, it’s a good idea to ask yourself how valuable your time is. The trademark applicant will likely spend at least 2-3 years dealing with the opposition. For small companies, this leads to an incentive to settle the case.
Cost to the Opposer of the Trademark Application
Some trademark applicants may give up when served with an opposition. This may result from various factors, including a lack of resources to fight against the opposition. For example, perhaps the trademark owner does not earn enough money from using the mark to justify paying the cost of opposition. Or perhaps the parties have agreed to drop the application as part of a trademark dispute settlement. In these circumstances, the benefits of trademark opposition can significantly outweigh the costs incurred.
If you are the opposer, meaning the person who is filing the opposition, and you decide to file the notice of opposition yourself, you might only need to pay a few hundred in government filing fees in order to oppose a trademark registration. This only happens if the opposing applicant fails to respond within the allowed time. A default judgment is issued if no response is received within the time limit and the trademark application is abandoned. Opposition closed. However, if the Trademark Applicant responds to your Opposition, then your costs will be similar to the costs of the Applicant as detailed above.
If you own a trademark and someone else is registering for a similar mark or one that is too close to your mark or causes harm, you can file a notice of opposition to the Board with the required fee within 30 days of publication or an extension granted by the Board.
First, you must file a Petition for Trademark Cancellation with the USPTO. You must explain the reasons for your opposition in the notice with a brief statement of why you as the opposer believe that registration of the opposed trademark would cause harm to you, as well as the grounds for opposition. The notice of opposition should be filed through the Electronic System for Trademark Trials and Appeals (ESTTA).
The applicant has 30 days from the date of filing of your opposition notice to reply with an answer. The Trademark Trial & Appeal Board will establish a trial calendar that includes the deadlines for each stage in the opposition proceeding.
Opposition proceedings can be compared to mini-trials. Trademark Trial and Appeal Board permit limited discovery and parties must respond within the timeframes. You (or your attorney), should ask for any information that will assist you in building your defense. Briefs and motions cannot refer to any information that is not in the record. Optional oral arguments may be requested by either side.
The decision will be made by the TTAB several months later. You can appeal the decision to the Federal Circuit, or to a District Court with jurisdiction.
As the opposition proceeding is like a quick/mini-trial, preparation and attentiveness are of the essence. The trademark opposition requires your full attention. You’ll need to take the lead in the case and work with an IP attorney to ensure the best possible outcome. Although it is not necessary to hire an attorney to help you prepare and file a Notice of Opposition, it is strongly recommended. It is possible for an opposing party to dismiss your opposition if your Notice of Opposition has not been properly written. Patent PC’s experienced TTAB lawyers can help you evaluate your case and file your Notice of Opposition.