When is the right time to oppose a trademark application?
Before you can oppose a trademark application, the mark must first receive preliminary approval. A trademark application is “published for opposition” after it has undergone a favorable examination process. If and when a trademark application has been approved for publication, you can oppose the mark only during a specific time period. 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. Make sure to track the status of the trademark application and calendar the opposition period. It is possible that the trademark application might never reach the publication period. For example, the examining attorney may reject the application and maintain the refusal even after reviewing the applicant’s response. Sometimes the applicant may fail to respond to a rejection and instead allow the application to go abandoned.
How to Start Trademark Opposition Proceeding
During the publication period or any extensions thereof, a third party must file a Notice of Opposition with the Trademark Trial and Appeal Board (TTAB) in order to commence an opposition proceeding. The Notice of Opposition is essentially a complaint containing your grounds for why the mark should not be registered. 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?
Opposing a trademark application can be a significant undertaking so make sure to do your due diligence first. The following factors should be considered before opposing a trademark application:
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)]:
If you believe the pending mark is too similar to your trademark, make sure you have an earlier priority date before filing an opposition.
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 a trademark application?
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 a mark?
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.