A trademark opposition can be part of the registration application process. Typically, a successful application proceeds through the Trademark Office in a predictable manner: the application is filed, the applicant and examiner communicate and work on the application, and the application is approved and published in the Official Gazette. Generally, thirty days of publication go by without incident and the registration certificate then issues. However, sometimes, a member of the public decides to intervene by filing a trademark opposition.
When a third party decides to object to registration of the mark, they do so by filing a Notice of opposition. Often times, instead of a Notice of opposition being filed first, the opposer will file a request for an extension of time beyond the 30-day opposition period. The opposer uses then uses that extended time to investigate the mark further and decide whether to file an opposition. If the opposer decides to continue, it will then file the Notice of opposition.
The Trademark Trial and Appeal Board – the arm of the USPTO that deals with oppositions – will then issue an order explaining the opposition and laying out the schedule of deadlines. The applicant (mark owner) then has a period of time to respond to the Notice. From there, the opposition proceeds and the TTAB determines whether the mark should or should not be registered. Often times, oppositions do not proceed completely through because the parties settle the dispute on their own. Indeed, the TTAB encourages this, requiring the parties to conference and discuss what the issues are and how they might otherwise resolve the issues. An opposition that isn’t settled can last about a year, though, and they can be expensive. If the parties resolve their issues in settlement, significant fees can be saved. However, if they are unable to do so and the opposition continues, the fees incurred can reach five figures.
While it may be obvious that an opposer would use an opposition to prevent a mark from being registered, they may also do it as a strategic trademark play. A senior trademark owner can use an opposition proceeding to challenge a registration, as can a common-law trademark holder. The opposing party will attack the registration if it believes the registration will cause damage, usually on the theory that the applied-for-mark is confusingly similar to the challenger’s mark. Other bases for opposing the mark exist but are less common. The opposition is similar to litigation in court, but it occurs before the Trademark Trial and Appeal Board – the TTAB – and does so almost entirely by paper. An opposition involves pleadings, discovery, motion-work, trial periods, and post-trial work.
An opposition is sometimes considered an attractive “alternative” to litigation. A trademark infringement lawsuit goes after allegedly infringing use of a mark, while an opposition seeks to prevent registration of the mark from the get-go. And while a trademark infringement suit can produce monetary damages or an injunction preventing the defendant from using their mark, a trademark opposition attempts to block the applicant from ever getting federal rights in the mark.
While it can be an effective tool, an opposition is not necessarily mutually exclusive from trademark. Trademark maintenance and strategy can encompass many different aspects of monitoring and activity. An opposition can prevent registration of an infringing mark, but the TTAB does not issue an order for the applicant to cease using the mark. The TTAB’s decision only goes so far as to say registration is proper or improper. Therefore, the applicant can technically continue to use its mark, albeit without federal registration protection. An infringement lawsuit may be necessary to actually get the applicant to stop using the mark. Of course, other less severe options, such as cease-and-desist letters, may accomplish this goal more efficiently.