A trademark application in the U.S. can be filed in two ways: (1) directly through the USPTO (United States Patent and Trademark Office) or (2) via the Madrid Protocol, by designating the U.S. in an international application.
In both cases, a USPTO examiner reviews the application. However, even if the application makes it through the examination phase, this does not guarantee that the trademark will register. After examination, the application is published in the Official Gazette, and at this stage any party with standing can oppose registration or file an extension of time to oppose. Every year, over 6,000 oppositions are filed in the U.S.
The opposition process in the U.S. has its unique characteristics and can be similar to litigating in court. It is complex, lengthy, and costly, so understanding its nuances can help applicants optimize expenses and increase their chances of successful registration.
If an applicant is aware that an opposition could be filed based on a trademark availability search, a trademark that was cited by the examiner during the application process, or a previous dispute with another trademark owner, it’s a good idea for the applicant to have a budget set aside for such a risk.
Who Participates in the Opposition Process?
The parties in an opposition proceeding are:
- The Plaintiff (the Opposer) – the individual or company filing the opposition.
- The Defendant – the trademark applicant.
The U.S. Counsel Rule requires that all applicants who are not U.S. residents must be represented by a licensed U.S. attorney. This means that a foreign applicant cannot represent themselves in opposition proceedings.
Oppositions are handled by the Trademark Trial and Appeal Board (TTAB), an administrative tribunal that decides only on trademark registration matters. If a dispute involves more than just registration—such as trademark infringement or unfair competition—it must be resolved through a court.
Timeframe for Filing an Opposition
In the U.S., an opposition must be filed within 30 days from the date the application is published in the Official Gazette. Although this deadline can be extended, its limited duration influences companies’ enforcement strategies:
- Trademark Monitoring – it is essential to track trademarks at the examination stage and after they have been published.
- Negotiations – some companies contact applicants of conflicting trademarks before their publication if they see an opportunity for coexistence. This can be achieved by narrowing the list of goods and services or signing a coexistence agreement
Opposition Procedure and Counterclaims
The opposition process in the U.S. resembles a court proceeding and begins with the filing of a Notice of Opposition, which includes:
- A short and plain statement of the reason(s) the opposer believes it would be damaged by the registration of the opposed mark; and
- A short and plain statement of one or more grounds for opposition.
After filing, the TTAB assigns a case number and sends both parties a Notice of Institution, which sets deadlines for further actions.
The trademark applicant usually has 40 days to file a response but may request an extension.
The applicant can also file a counterclaim, which may be:
- Compulsory Counterclaim – if the applicant wishes to challenge the opponent’s trademark that is being used in the opposition. If the applicant is aware of grounds for such a counterclaim at the time of responding to the opposition, they must file it together with their Answer. Otherwise, they may lose the right to challenge that registration in the future.
- Permissive Counterclaim – if the applicant wishes to challenge another trademark owned by the opponent that is not mentioned in the opposition.
Withdrawal of an Opposition and Its Consequences
As in other jurisdictions, an opposition can be withdrawn, but in the U.S. this has important legal consequences:
- If the opposition is withdrawn before the applicant files a response, it is considered withdrawn without prejudice, meaning the trademark can be challenged again on the same grounds in the future.
- If the opposition is withdrawn after the applicant has filed an Answer and:
- The applicant agrees to the withdrawal, it is considered withdrawn without prejudice (meaning it can be challenged again), or
- The applicant does not agree, the opposition is withdrawn with prejudice (meaning it cannot be challenged again on the same grounds in the future).
Discovery Process and Possibility of Settlement
If the opposition is not withdrawn, the case moves into the Discovery phase, which includes the following procedures:
- Discovery Conference – parties discuss case procedure and the possibility of settlement.
- Initial Disclosures – exchange of relevant information about the parties and the claims.
- Interrogatories – written requests to the opposing party for case-related information.
- Requests for Documents – demands for evidence supporting the opposing parties’ claims and defenses.
The process includes additional stages, such as motion practice, a hearing (which may be written or oral), and a decision. However, many companies tend to settle before reaching the hearing stage to reduce costs and improve the chance of trademark registration. This is often achieved by narrowing the list of goods and services or signing a coexistence agreement.
Conclusion
The opposition process in the U.S. can be complex, lengthy, and expensive. However, understanding its key aspects can help applicants manage costs effectively and increase their chances of securing trademark registration.
If you have any questions about filing an opposition, you can reach Ortynska Law at [email protected] or by phone at 9147035632.