Grounds for Opposing a Trademark Application
Any party who believes it would be damaged by the registration of a pending mark can file an opposition. Common grounds include:
- Likelihood of confusion. The most common ground — the applicant's mark, if registered, would be likely to cause consumer confusion with the opposer's existing mark.
- Priority. The opposer used the mark, or a confusingly similar mark, in commerce before the applicant's filing date and has priority as a result.
- Descriptiveness or genericness. The applied-for mark is merely descriptive or generic and should not be registered.
- Fraud on the USPTO. The applicant made a material false statement in the application knowingly and with intent to deceive.
- Dilution. The applicant's mark is likely to dilute the distinctiveness of a famous mark.
How a TTAB Opposition Proceeding Works
TTAB proceedings follow structured rules similar to federal litigation. After the notice of opposition is filed and served, the parties engage in a discovery period, during which each side can request documents and take depositions. This is followed by testimony periods in which the parties submit their evidence in chief and have the opportunity to rebut each other's evidence. The proceeding concludes with briefing, after which the TTAB issues a written decision.
Many opposition proceedings settle before reaching a final decision. Negotiated outcomes through a consent agreement, a coexistence agreement, or a settlement that results in the applicant amending or abandoning the application are common and often commercially practical.
Filing an Opposition
If you have received a USPTO publication notice and believe a pending application conflicts with your mark, time is critical. The opposition window is 30 days from publication, though extensions of time can be requested. Early assessment of the strength of your position, the commercial importance of stopping the application, and the cost of the proceeding relative to the likely outcome is essential before committing to an opposition.
Defending an Opposition
If your trademark application has been opposed, receiving the notice of opposition starts the clock on a series of deadlines. Failing to respond defaults the proceeding in the opposer's favor. A careful review of the stated grounds, the strength of the opposer's position, and the range of possible responses, including settlement, should happen promptly.
How Five Dogs Law Approaches Trademark Oppositions
Jared's first priority is a clear-eyed assessment of the strength of your position and the realistic cost and outcome of the proceeding. Trademark oppositions can be expensive if they go the full distance, and the decision to fight or negotiate should be made strategically. Five Dogs handles the full proceeding from initial assessment through pleadings, discovery, testimony, and briefing, and will give you a plain-English read on where things stand at every stage.
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