If you have received a Notice of Opposition against your application, it means that another person believes that your trademark should not be registered and has initiated opposition proceedings. Not all opposition proceedings result in the opposition being sustained and the trademark registration being denied. Nevertheless, this process deserves your special attention. This article outlines the key points to consider when receiving a Notice of Opposition.
Deadlines for Responding to a Notice of Opposition
If you have received a Notice of Opposition, your next procedural step is to file a response. Since the opposition process is complex and based not only on trademark law, but also on the Trademark Trial and Appeal Board Manual of Procedure (TBMP) and Federal Rules of Civil Procedure, it is advisable to involve a trademark attorney in this process.
The deadline for responding to oppositions is specified in the Notice of Institution and is typically 40 days.
Opposer and Opposerâs Entitlement to the Cause of Action
In the opposition process, there are Opposer and Applicant parties (also called Plaintiff and Defendant accordingly).
Unlike a letter of protest, which can be filed by any person, only a person who has a cause of action (formerly known as standing) can file an opposition with the Trademark Trial and Appeal Board (TTAB). It can be either an individual or a legal entity that believes it would suffer damages as a result of the registration of the mark. Cause of action may be indicated if, for example, the Opposer has a similar registered trademark and the registration of a similar trademark for related goods may cause damage to the Opposer.
Upon receiving a Notice of Opposition, pay attention to the Opposer and his entitlement to cause of action. If you believe that the Opposer does not have a cause of action, you can build your strategy on that basis.
The opposer will not have a cause of action if, for example, he is only a consumer of the product. For instance, in the case Rebecca Curtin v. United Trademark Holdings, Inc. (2022), United Trademark Holdings, Inc. filed a trademark application RAPUNZEL for âdolls; toy figuresâ. Opposer, an individual, a professor of law, and consumer of dolls, filed an opposition. Opposer âcontends that she and âother consumersâ will âalso likely face an increased cost of goods associated with Rapunzel merchandise, given the lack of competitionâ. TTAB decided that the opposer is not entitled to a statutory cause of action because her âreal interestâ is not commercial.
It is also recommended to investigate how often the Opposer files oppositions and what their strategy is in conducting oppositions, for example, how often they are willing to settle, etc.
Grounds for Trademark Opposition
The next point to analyze is the grounds for opposition and, accordingly, refusal to register a trademark. Opposition may be based on one or several grounds for refusal. Each ground for opposition must be analyzed and addressed separately in the response to the opposition.
One of the most common grounds for filing an opposition is similarity with a registered trademark or common law mark for related goods that cause confusion, mistake, or deception (so-called 2(d) trademark refusal). Please note that an opposition may not necessarily be based on a registered trademark. For example, if the Opposer used a similar trademark before you filed your trademark, they may claim common law rights.
Opposition can also be based on the ground that the trademark is a mere descriptive or deceptively misdescriptive term, does not function as a trademark, or on other grounds. Certain types of trademarks may have additional grounds for filing an opposition. For instance, if you file a trade dress, product design, or packaging, and it is not inherently distinctive and has not acquired distinctiveness, it may be a ground for opposition as well.
Some grounds cannot be used as grounds for filing an opposition. These grounds include unfair competition claims, such as false representation.
Different Grounds for Trademark Opposition May Require Different Approaches
If the basis for opposition is descriptiveness, then you can appeal that the trademark is not descriptive, but only suggestive.
If the basis for opposition is similarity to a registered trademark, you can appeal that the trademarks are not similar, that the goods or services are not similar, and, therefore, there is no confusion. However, it is important to remember that these are only two of 13 factors that may be considered if they are relevant to the case. These factors are also known as DuPont factors, which include, for example, trade channels used, thepurchasing conditions, the fame of the existing mark, etc.
Suppose the basis for opposition is similarity to a common law mark. In that case, it is worth investigating the priority date of the common law mark and whether it has been abandoned, for example, due to reasons that are not excusable, such as non-use.
In the opposition case Graham Bonnet v. James Richard Waldo (2025) regarding trademark ALCATRAZZ, Graham Bonnet, the Opposer, singer-songwriter, departed the band in June 2020 and declined to tour with it. Another group member, James Richard Waldo (the Applicant), filed the trademark application. However, the Opposer opposed the registration based on his alleged ownership of the identical common law mark. TTAB found that the Opposer ceased use of the alleged trademark when he left the band. Additionally, he did not show an intent to resume use of the alleged trademark within a reasonable time after he left the band. Thus, opposition was dismissed.
Requirements for Filing a Response to Notice of Opposition
The response to the Notice of Opposition must:
- Be filed within the established deadline (in some cases, there is an opportunity to get extended terms to file the answer);
- Meet the formal criteria established by the TTAB, in particular regarding font size, etc.;
- Be served upon the plaintiff attorney (or plaintiff if they are not represented by an attorney); and
- Substance of the response shall meet the formal requirements of the Defendantâs strategy in this case.
If the Applicant (who is essentially the Defendant) plans to challenge the validity of the Opposer’s trademark registration, they must do so not in the response, but in a counterclaim.
Next Steps After Filing the Response
Once a response has been filed, the opposition process goes through other stages, including a discovery conference, discovery, and briefs, the deadlines for which can be found in the Notice of Institution for the specific opposition process. Many opposition proceedings do not reach the final stages and are settled earlier, which saves time and money for both the Opposer and the Trademark Applicant.
Settlement depends on the specific case and the intentions of both parties and may involve various conditions, including restrictions on the list of goods and services in the trademark application.
A trademark opposition attorney will assist you in analyzing the Notice of Opposition, assessing the situation, and developing a strategy that is relevant to your case.
Consequences of Not Filing the Response
If the trademark application does not respond to the opposition promptly, the TTAB may issue a notice of default. If the applicant does not show cause why a default judgment should not be entered within 30 days after the notice, a default judgment may be entered against it.
Trademark attorney Mariya Ortynska provides guidance in the opposition process. If you need legal assistance in writing the response to the Notice of Opposition and building a strategy, contact Mariya via email m.ortynska@ortynskalaw.com or by phone: 9147035632.
Related Articles by Ortynska Law:
How to Reduce the Risk of Trademark Refusal Based on Likelihood of Confusion