How to defend your trademark
A trademark opposition is essentially a battle to block the registration of a trademark. If your trademark application had been approved by the Trademark Office, a third party may file an opposition with the USPTO to block your trademark from being registered. Let’s talk about what it takes to defend a trademark opposition at the Trademark Trial and Appeal Board (TTAB) of the USPTO.
Why would someone oppose your trademark application?
One of the top reasons why a third party would file a trademark opposition against your application is because they believe your mark is too close to theirs. Likelihood of confusion is the most common ground for trademark oppositions. In such a case, the burden falls on the opposer to show:
- similarities between the respective marks, and
- first use of the mark in commerce, known as priority.
Oppositions may also be filed on other grounds, such as the mark is merely descriptive.
What is an extension of time to oppose?
A potential opposer may request an extension of time to oppose a trademark application. The amount of extended time requested will typically be 30 days or 90 days beyond the original 30-day publication window. Extension requests are routinely granted though a potential opposer must show good cause for a request beyond 30 days (e.g., needs additional time to investigate claim, confer with counsel, discuss settlement or seek counsel for representation).
An extension of time will not always lead to the filing an opposition. The potential opposer could go away on their own or seek settlement that would avoid the need for opposing the trademark application.
Who is the opposer or potential opponent?
If you have received notice of an extension of time to oppose, you will be notified of the identity of the potential opposer. This bit of information will allow you to search any registrations and pending applications filed by the potential opposer which might form their case for a likelihood of confusion claim.
TTAB trademark opposition vs. trademark lawsuit: What are the differences?
TTAB proceedings are a kinder, gentler form of litigation. There are no court hearings in TTAB actions, as nearly all matters are handled in writing. The Board does not have authority to impose any monetary sanctions.
Accordingly, TTAB proceedings generally cost significantly less than trademark lawsuits in federal court. Also, the issues in TTAB actions are limited to the registrability of a mark. Infringement is not litigated in TTAB proceedings, though certain underlying issues might serve as the basis for estoppel in a subsequent infringement action in federal court between the same parties.
How much does a TTAB trademark opposition defense cost?
The cost of defending a TTAB opposition will depend upon several factors, but the overwhelming factor will be how far the opposer is willing to go. If the opposer is determined to fight a protracted legal battle, then the cost of defending a trademark opposition can range from $30,000 to $150,000.
If both sides are willing to compromise to reach an early settlement that avoids discovery, then legal costs might be kept under $5,000. My firm offers flat rates for TTAB trademark oppositions and cancellations.
What are first steps in defending against a trademark opposition?
If an opposition filed, you will receive the complaint called a Notice of Opposition containing the identity of the opposer, their grounds for opposition and any details of their trademarks which they believe are in conflict with your mark. This will give you an opportunity to assess the likelihood of confusion claim and any potential defenses or counterclaims.
You will also receive a Notice of Institution with a scheduling order setting forth key deadlines, including conference, discovery, disclosure and trial schedule dates. The most immediate deadline for a defendant-applicant is the Time to Answer which is generally 40 days from the filing date of the opposition. The next deadline is for a mandatory discovery conference which is spaced about 1 month after the answer deadline.
What early settlement options might be available?
If the opposer is open to a settlement that would allow your mark to coexist, then it may be worthwhile to explore any potential compromises including:
- amendments to the identification of goods and services, including any exclusionary language
- limitations on usage of your mark, which may include agreements to use your mark only in certain conditions (e.g., with your house mark)
- agreements not to expand into certain product lines
- changes to your mark, which might require filing a new application if the alterations are material
Productive settlement discussions may also lead to a coexistence agreement (aka consent agreement) that either side may file with the USPTO to overcome any refusals based on likelihood of confusion.
Any counterclaims to consider against opposer?
If the opposer has any pending or registered marks similar to your mark, it may be worthwhile to consider a more aggressive defense by filing a counterclaim or a separate TTAB proceeding against the opposer’s marks. These strategic considerations should involve your trademark counsel. The decision to go on the offense may be complicated and filled with several additional issues that are not readily apparent.
What if the applicant (defendant) fails to file an answer to the opposition?
If the applicant fails to answer the notice of opposition, the trademark application will ultimately be abandoned. Initially, the TTAB will send a Notice of Default containing an order allowing the respondent 30 days to show cause why judgment by default should not be entered against the applicant. Failure to file a timely answer tolls all deadlines, including the discovery conference, until the issue of default is resolved.