When is the right time to oppose a trademark application?

If and when a trademark application has received preliminary approval by the USPTO examining attorney, a date will be in the coming weeks for the mark to be published for opposition. The publication period is a 30-day window during which any member of the public may seek to oppose the mark.

A potential opposer may also request an extension of time to oppose. A 30-day extension is automatically granted with no questions asked. Up to 90 days of extension may be granted for cause.

Tracking status of a pending application

Timing is key, so it is important to track the status of the trademark application and calendar the opposition period. Keep in mind that the subject application might never reach the publication period if, for example, the examining attorney rejects the application and the applicant cannot overcome the rejection.

How to Start Trademark Opposition Proceeding

During the publication period or any extensions thereof, a third party must file a complaint, known as a Notice of Opposition, with the Trademark Trial and Appeal Board (TTAB) in order to commence an opposition proceeding. The TTAB will serve a copy of the Notice of Opposition on the respondent-applicant. The TTAB will also generate and email to the parties a trial schedule containing deadlines for the opposition proceeding.

Should you oppose a trademark application?

The following factors should be considered before opposing a trademark application:

Standing

An opposer must show both a real interest in the proceedings as well as a reasonable basis for its belief of damage. In other words, an opposer must consider and adequately state the potential damage caused by registration of the mark at issue, and have a reasonable basis for believing so.

Grounds for opposition

There may be several grounds for opposing a trademark application, but some of the more common ones include [see TBMP 309.03(c)]:

Costs of TTAB proceedings

A trademark opposition before the TTAB is essentially a mini-litigation. As in any adversarial legal action, costs will largely depend upon far the other side will go.

TTAB proceedings are generally milder than trademark infringement lawsuits in federal court because there are no court hearings requiring the in-person appearance of counsel and the scope of issues is limited to the registrability of the mark. Infringement is not an issue to be litigated in a trademark opposition or cancellation.

For a flat fee schedule, see my firm’s fixed rates for TTAB proceedings.

What if it’s too late to oppose?

If the 30-day publication period has passed, a party with standing and grounds may file a cancellation action after the mark is registered.

What if it’s too early to oppose?

If a trademark application that has not yet been published, a third party with information on why the mark should not be registered may file an informal letter of protest with the USPTO [see TMEP 1715]. The letter of protest must be electronically filed and provided with a mailing address to which the protest decision will be snail mailed.

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Chair at Innovation Capital Law Group
We love working with startups and small businesses. I help entrepreneurs protect their intellectual property so they can reach their business goals.
Vic Lin

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